A trademark can be defined as a word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. An example of a trademark is Nike’s “Just do it” logo on their products.
Trademarks can be transferred from one owner to another. These transfers could be temporary or permanent. They can be temporary when transferred through licensing or permanent when transferred through assignment.
Trademark Assignment in Tanzania is a process in which the owner of the trademark transfers the ownership of the mark. In other words, it is transferring of proprietary rights in the property of the proprietor.
Trademark assignment in Tanzania can be done in various ways: Complete assignment of trademarks, whereby the owner of the trademark transfers all the rights with respect to the trademark, including the transfer of the rights such as right to further transfer, earn royalties, etc., to another entity. For example, A, owner of “xyz”, sells his brand to another through an agreement to B. After this, A does not retain any rights with respect to “xyz”.
The second way for Trademark assignment in Tanzania is through partial assignment of trademarks, whereby the transfer of ownership is restricted to specific product or service only.
The third way for trademark assignment in Tanzania is through assignment with goodwill. This means an assignment where the owner transfers the rights and value of the trademark as associated with the product it sells. There is also assignment without goodwill. This is whereby the owner restricts the assignee to use trademark for the products he uses it for.
In Tanzania, the Trademark Act defines assignment to mean the transfer of the parties concerned.
Section 40 of the Trademark Act provides that a pending trade or service mark or registered trade or service mark shall be, and shall be deemed always to have been assignable and transmissible in respect either of all the goods or services in respect of which it is applied for, registered, or was registered, as the case may be, or of some, but not all of those goods or services.
An assignment or transmission as aforesaid shall, however, be invalid if the assignment or transmission is likely to deceive or cause confusion, particularly in regard to the nature, origin, manufacturing process, characteristics or suitability for their purpose, of the goods or services in relation to which the trade or service mark is intended to be used or is being used.
A person entitled by assignment or transmission to a registered trade or service mark shall make application to the Registrar in the prescribed manner to register his title.
Section 31 provides for unregistered trademarks whereby, no person shall be entitled to institute any proceedings to prevent or to recover damages for, the infringement of an unregistered trade or service mark.
For Trademark assignment I n Tanzania the following is required: assignment document (simple copy is sufficient) or a confirmatory deed of assignment, signed by both the assignor and the assignee; power of attorney; and payment of official fee. If the application is based on a priority claim, evidence of assignment of a priority claim is required. On receipt of application, the Trademark Office will cause the particulars of the assignment or transmission to be entered in the register and where the application is in respect of a pending trade or service mark, the particulars of the assignment or transmission will be provisionally recorded and, upon registration of the trade or service mark, will be entered in the register. Trademark Assignments in Tanzania and transmission of pending trade or service marks or of registered trade or service marks have no effect against third parties until their particulars are entered in the register.
An assignment or transmission will, however, be invalid if the assignment or transmission is likely to deceive or cause confusion, particularly in regard to the nature, origin, manufacturing process, characteristics or suitability for their purpose, of the goods or services in relation to which the trade or service mark is intended to be used or is being used.