The Court of Appeal of Tanzania has issued a landmark ruling in the case of Lakairo Industries Group Co. Limited & 2 Others vs Kenafrica Industries Limited & 2 others (Civil Appeal No. 593 of 2022) confirming that trade marks registered through the African Regional Intellectual Property Organization (ARIPO) under the Banjul Protocol are not enforceable in Tanzania. Although the United Republic of Tanzania acceded to the Banjul Protocol in 1999, it has never ratified nor incorporated the protocol into its domestic legislation. As a result, ARIPO registrations designating Tanzania have no legal effect within the country.

Why are ARIPO trade marks unenforceable in Tanzania?

Tanzania follows a dualist legal system, meaning international treaties only become effective after being ratified or domesticated by enacting the provisions into national law. Although the United Republic of Tanzania (mainland Tanzania) is listed as a member of the Banjul Protocol, the Trade and Service Marks Act (Cap. 326) does not have provision for and does not recognize ARIPO filings. Therefore, trade mark rights in the United Republic of Tanzania arise solely through local registration with the Business Registrations and Licensing Agency (BRELA) for Mainland Tanzania or the Zanzibar IP Office for Zanzibar.

Impact of the court’s decision

• Existing ARIPO Registrations: Any ARIPO trade marks previously designating Tanzania are now unenforceable. Rights holders cannot rely on these registrations for infringement actions or anti-counterfeiting measures.
• Future Filings: ARIPO has suspended Tanzania from its list of designated states for new trade mark applications and until the Banjul Protocol has been domesticated into national law brand owners cannot designate Tanzania in ARIPO filings. Once the issue of domestication has been resolved, it will be possible for later designations to extend protection to Tanzania.
• Portfolio Review: Companies should therefore urgently audit their trade mark portfolios and identify marks that require direct national filing in Tanzania to maintain protection.

Practical steps for trade mark owners

1. File National Applications: Submit applications directly to BRELA for Mainland Tanzania or Zanzibar Industrial Property Office for Zanzibar.
2. Monitor Compliance: Ensure trade marks are renewed and maintained under national  laws.
3. Update IP Strategy: Consider the territorial nature of IP rights, as regional or international registrations do not automatically extend protection to Tanzania.
4. Anti-Counterfeiting Measures: Enforcement actions must be based on nationally registered marks; ARIPO registrations cannot support litigation or customs recordals.