A registered user is a concept that allows businesses or individuals to legally utilise a trademark that they have not originally registered. This system fosters collaboration and allows for the controlled expansion of a brand's presence. Tanzanian trademark laws recognise and regulate the relationship between the trademark owner and registered users to ensure a fair and transparent arrangement.
In this legal update, we provide a guide to the concept of registered user by exploring the legal framework provided by the Trade and Service Marks Act No. 12 of 1986 (as amended) (the Trademarks Act) and the Trade and Service Mark Regulations, G.N. No. 40 2000 (as amended) (the Trademarks Regulations).
Registered User
The term “registered user” is defined under sections 2 and 42 of the Trademarks Act as a person, other than the proprietor (Registered Proprietor) of a registered trade or service mark (the Mark(s)), who may be recorded as a registered user in respect of all or any of the goods or services in respect of which it is registered (Registered User). Section 42 of the Trademarks Act goes on to state that the use of a Mark by a Registered User in relation to goods or services with which he is connected in the course of trade or business and in respect of which for the time being the Mark remains registered, shall be the permitted use of the Mark.
To become a Registered User in Tanzania, the respective Mark must first be registered in Tanzania Mainland. An application must then be jointly submitted to the Registrar of Trademarks (the Registrar) by a person/entity seeking registration as a user and the Registered Proprietor pursuant to regulation 76 of the Trademarks Regulations. The application is made through a prescribed form and payment of prescribed fees of TZS 60,000 (approximately USD 25). According to section 43 of the Trademarks Act, an application shall be accompanied with the following information:
- whether the proposed Registered User is wholly controlled by the Registered Proprietor and that there is no other contractual relationship between them, or a copy of the licence contract (licence) between them; and
- details about the Mark, names and addresses of both parties, goods or services involved, usage restrictions, and the permitted use duration.
Upon meeting the above requirements, the Registrar will assess whether permitting the proposed Registered User to use the Mark would be in the public interest, considering all circumstances. If satisfied, the Registrar will register the proposed user as a Registered User for the specified goods or services, subject to any appropriate conditions or restrictions. Once registered as a user, the entry in the register of Marks (the Register) will include the date of registration, the Registered User's trade/business address, and an optional address for service. The Registered Proprietor, the Registered User and any other registered user whose name is entered in the Register in respect to the same Mark will then be notified of the registration in writing. Regulation 77 of the Trademarks Regulations provides that registration of a Registered User shall be inserted in the Trade and Service Marks Journal and be made available to the public.
It is important to note that a Registered User must be from the country in which the Mark has been registered. Therefore, if the Mark is registered in Tanzania Mainland, the Registered User must be from Tanzania Mainland. The concept of trademark registration applies independently to both Tanzania Mainland and Zanzibar, and Registered Users must align with the specific region of registration.
Rights of a Registered User
Right to use the Mark for the entire term of registration
Unless the licence specifies otherwise, the Registered User has the right to use the Mark in Tanzania Mainland for the entire duration of its registration, including any renewals. This right applies to all the goods or services covered by the Mark. However, this usage is subject to any conditions or limitations recorded in the Register.
Right to initiate legal proceedings against unauthorised use/infringement of the Mark
Subject to any agreement subsisting with the Registered Proprietor, the Registered User of a Mark shall have the right to request the Registered Proprietor to initiate legal proceedings in order to prevent infringement of the Mark. Where such request is made by the Registered User and the Registered Proprietor refuses or neglects to initiate such proceedings within two (2) months of receiving the request, the Registered User shall have the right to initiate legal proceedings in his own name as if he were the Registered Proprietor against unauthorised use or infringement of the Mark, joining the Registered Proprietor as a defendant to the legal proceedings.
Variation and Cancellation
Section 46 of the Trademarks Act allows for variation/amendment of a registration with respect to a Registered User upon making a joint application in a prescribed written form to the Registrar accompanied by grounds or reasons upon which the application is made. In amending the previous registration, the Registrar shall take into account the facts, procedure, regulations and all other requirements considered in the previous registration.
Furthermore, registration of a Registered User may be cancelled by the Registrar upon an application in a prescribed written form by the Registered Proprietor, the Registered User or any other registered user of the Mark. In some instances, the Registrar may cancel a registration upon an application in a prescribed written form made by any person based on any of the following grounds:
- where there is use of the Mark by the Registered User in a way other than its permitted use or in a way that causes or is likely to cause deception or confusion;
- where the Registered User misrepresents or fails to disclose material information during the application for registration or where there is a material change of circumstances since the date of registration; or
- where the registration ought not to have been affected based on the rights vested on the applicant by virtue of a contract whose performance relates to the interest of the applicant.
Please note that section 47 of the Trademarks Act prohibits the Registered User from assigning and sub-licencing the licence to a third party.
Conclusion
Understanding the role of Registered Users from a Tanzanian law perspective is crucial for effective intellectual property management especially for businesses and individuals navigating complexities of Mark usage in Tanzania. By understanding the legal framework governing Registered Users, stakeholders can establish and navigate these relationships with clarity.
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Read the original publication at Clyde & Co.
