Intellectual Property Litigation Update - Protection Of A Well-known Trademark Under Tanzanian Law

• Published date: 04 May 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: East African Law Chambers
• Author: Mr Thomas M. Sipemba

Dentons EALC East African Law Chambers recently successfully represented JCDecaux SA in its trademark infringement suit at the Commercial Division of the High Court of Tanzania against a local company, JP Decaux Tanzania Limited for infringement of its trademark JCDecaux. The decision in this matter is crucial in Tanzania as it firmly restates the principle that protection obtained by registration of a trademark in Tanzania overrides the protection offered by registration of a company under the Companies Act.

JCDecaux SA is a global outdoor advertising business that entered the Tanzanian market in June 2015 after its South African subsidiary, JCDecaux South Africa Holding Proprietary Limited acquired Continental Media Holdings Limited, the ultimate owner of Continental Outdoor Tanzania Limited. Following the acquisition, Continental Outdoor Tanzania Limited changed its name to JCDecaux Tanzania Limited. The JCDecaux trademark was registered in Tanzania in October 2015.

The defendant, JP Decaux Tanzania Limited (JP Decaux Tanzania) is a Tanzanian registered entity that was incorporated in August 2014 and whose main business activity is outdoor advertising.

The main complaint by JCDecaux was that the words JP Decaux infringe the trademark JCDecaux because the two words are confusingly similar with JCDecaux's registered trademark. . JP Decaux Tanzania had also registered or caused the registration of www.jpdecaux.com and jpdecaux.co.tz as domain names. JCDecaux had filed complaints before the online ADR Centre of the Czech Arbitration Court (CAC) and WIPO and successfully won the same against the registered owners of the domain names www.jpdecaux.com and jpdecaux.co.tz. In its defence, JP Decaux Tanzania denied infringing the trademark and argued that the use of its company name was protected under the Companies Act of Tanzania by virtue of company incorporation in August 2014 which was earlier than the registration of the JCDecaux trademark which was registered...