Trade mark protection is founded on the principle of territoriality, where marks are only protected in the country or countries in which they are registered. However, an exception to this general rule is the protection of well-known trade marks, where marks that are recognised globally receive protection in a country despite not being registered there.
This exception was recently in the spotlight in Tanzania in two conflicting court cases.
Earlier this year, Tiffany & Co. (the opponent) attempted to rely on its “TIFFANY” trade mark being well-known globally in order to protect their brand in Tanzania, in the absence of a local trade mark registration. The luxury jewellery company unsuccessfully opposed applications by Wilmer Resources Pte Limited (the applicant) to register “TIFFANY” in classes 03 and 05.
However, back in 2021 another famous company, JC Decaux SA together with its wholly owned subsidiary JC Decaux Tanzania Limited (the plaintiffs), were successful in protecting the “JC DECAUX” trade mark on the basis of it being well-known. The plaintiffs claimed that a local Tanzanian company, JP Decaux Tanzania Limited (the defendant), was infringing its brand as a result of the use of “JP DECAUX”.
With both Tiffany & Co and JC Decaux basing their arguments on the protection of well-known trade marks, why were differing decisions reached in the two cases?
Tiffany & Co claimed that it was the sole and lawful proprietor of the “TIFFANY” trade mark, as a result of the length of time it had used the mark, the number of registrations held in various classes in over 160 countries and the considerable time, money and effort spent promoting the trade mark globally. It further claimed that the applicant ought to have known how well-known the “TIFFANY” mark was, as the mark was famous in Singapore (which was the hometown of the applicant) and therefore the application was filed in bad faith. It also provided evidence of the company’s unique connection to Tanzania as a result of its discovery of the Tanzanite gemstone in 1968, which is valued and known worldwide, including in Tanzania. Finally, it provided various judicial and administrative decisions ruled in its favour to show that it was considered the owner of the famous mark in several countries.
Similarly, JC Decaux argued it had been using the “JC DECAUX” trade mark globally since 1964 and had trade mark registrations in at least 135 countries. It also brought evidence of complaints it had lodged against the defendant at the online ADR centre of the Czech Arbitration Court (CAC) and at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre, which were decided in its favour. It also tendered evidence of failed attempts at demanding that the defendant stops using the “JP DECAUX” mark to highlight the defendant’s bad faith in continuing to use the disputed mark.
In both cases, the courts concluded that “TIFFANY” and “JC DECAUX” respectively were well-known globally. Following this, each court turned to the question of whether the fact that a trade mark is considered well-known internationally has the legal implication of the mark acquiring automatic protection in Tanzania.
The court in the JC Decaux case stated that the defendant admitted to being aware of the plaintiff’s trade mark and business and that it appears that it intentionally decided to register a company with a name that is confusingly similar for a similar business. In addition, the defendant brought no evidence to show why it chose the “JP DECAUX” name, while JC Decaux is the family name of the founder of the “JC DECAUX” brand. The court confirmed that the complaints lodged at CAC and WIPO show that “JC DECAUX” is known worldwide as the number one outdoor advertising company.
The defendant argued that its company name, JP Decaux Tanzania Limited, was incorporated in Tanzania prior to the registration of the plaintiff’s trade mark and therefore it had earlier rights. However, the court stated that the plaintiff’s global trade mark rights were stronger than a local company name registration.
The court confirmed that the registration of a trade mark in a certain country confers protection in respect of that country only. However, it is not legally correct for a person to register a trade mark or company name that is confusingly similar to a widely used or known trade mark with well-established goodwill, just because it is not registered in that country. The court concluded that the defendant’s choice to use “JP DECAUX” in relation to the same business, must have been done “by design” and as such the defendant’s use of the name “JP Decaux Tanzania Limited” infringed the plaintiff’s well-known “JC DECAUX” trade mark.
The court in the Tiffany case adopted a different approach. They confirmed that only marks that have a widespread reputation or recognition in several market outlets worldwide should receive broader protection than ordinary marks. The court continued to state that although globally recognised trade marks enjoy broader protection than ordinary marks, each state has jurisdiction within its own territory. One cannot exercise jurisdiction within the territory of another state. As such, well-known marks are marks well-known in Tanzania, not only internationally, and trade mark registrations in other jurisdictions are not sole proof that the mark is well-known in Tanzania.
The court ultimately decided that, although the “TIFFANY” mark is well-known outside of Tanzania, the mark is not well-known in Tanzania, specifically in relation to goods in classes 03 and 05. In particular, the court stated as follows:
“[T]he question of famousness of a trademark is not a matter of law alone rather is to take into consideration the use and supply of trademark, the period, method and mode of business activities, the extent of trading and other conditions.”
The court stated that even if the mark was considered well-known in Tanzania, there was no evidence of registration or prior application of the disputed mark, or extensive use of the mark in respect of the relevant goods in Tanzania. Tiffany & Co’s failure to provide evidence of a reputation in Tanzania, typically by means of a market survey that demonstrates public repute, ultimately swayed the court to find against it.
In each case, a broad approach was used to determine whether the marks in dispute were well-known globally. However, the decision of whether these globally recognised marks would receive protection in Tanzania was approached differently. In particular it is important to note that it is not enough for brands to be well-known globally. The approach used by the court in the Tiffany case exemplifies the need for the mark to be well-known at a local level, not only internationally. Further, even if the mark was to be well-known in Tanzania, there must be evidence of a trade mark registration or prior application or at least extensive use of the mark in relation to the relevant goods, for the well-known mark to receive extraordinary protection.
