First Recognition Of A Well-Known Trademark

• Published date: 21 April 2022
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Advertising, Marketing & Branding
• Law Firm: Inventa
• Author: Mr Miguel Bibe

For the first time, on 4 February, 2021, the High Court of Tanzania (Commercial Division) has issued a decision concerning the protection of well-known trademarks, against infringing company names registered by third parties in the country in a case involving JC Decaux SA and JC Decaux Tanzania Limited (plaintiff) and a local company, JP Decaux Tanzania Limited (defendant).

JC Decaux SA and JC Decaux Tanzania Limited are subsidiaries of the JC Decaux Group, a family-owned business with an outstanding international reputation, established in France by Jean Claude Decaux in 1964, operating in outdoor and/or home advertising business in more than 4,000 cities in over 80 countries worldwide including Tanzania.

JC Decaux SA, the first plaintiff, a South African company, entered the Tanzania market in 2015, by acquiring a Tanzanian advertising company, and, in 2016 changed the name of the Tanzanian company to JC Decaux Tanzania Limited, which was the second plaintiff. Subsequently, it applied and registered the trademark JC Decaux in numerous classes in the country.

By that time, the defendant JP Decaux Tanzania Limited had already registered its company in 2014, its main business activity being outdoor advertising.

The main complaint by JC Decaux was that the words JP Decaux infringe the well-known trademark JCDecaux once the designation is confusingly similar to JC Decaux's registered trademark, with only a difference of a letter in the defendant's company name, namely, the letter "C", and considering that the name JC Decaux has been globally using since 1964 and registered as a trademark in 135 countries at least.

However, this was not the first dispute between the parties, as, in July 2015, the plaintiff, JC Decaux, was succeeded in a domain name complaint with the online ADR Centre of Czech Arbitration Court against the defendant's registration of the domain name JPDecaux.com, on the grounds that the domain name is similar to the plaintiff's trademark JC Decaux.

Further, in October 2015, the plaintiff succeeded in another domain name complaint with the World Intellectual Property Organization (WIPO), against the domain name registration of jpdecaux.co.tz, which, despite not being filed by the defendant, the domain name JPDecaux.tz, was featured on the defendant's website.

On the other hand, in its defence, JP Decaux Tanzania denied the infringement of the trademark and argued that the use of its company name was protected under the Companies Act of Tanzania...