What you need to know about Passing Off
The Protection of Trade Marks in Tanzania – What you need to know about the remedy of Passing Off
What is passing off?
This is a common law tort designed to protect a person from use of its well-known and unregistered images, name, slogan, trademarks and other intellectual properties.
What are the remedies of passing off?
- Sue for damages for loss of reputation or for loss of profit
- Seek an account for the lost profit
- An order for the delivery or an order for the destruction of the infringing products or articles (apply for the infringing goods be destroyed)
- An injunctive relief to prevent further actions amounting to passing off
To succeed in a passing off claim, the Claimant will need to show the following
- Goodwill/Reputation- claimant must prove that s/he owns a reputation in the mark or name and that the public associates with his or her specific products or services.
- Misrepresentation-claimant must show that the defendant has caused confusion and deceived/misled the customers into believing that their goods or services belong to the defendants.
- Damage- claimant must prove that misrepresentation has caused damage or is likely to damage his goodwill or is likely to cause actual or foreseeable financial and reputational loss.
Applicability of passing off in Tanzania
- Unlike trademark infringement which is provided for by the Trade and Service Marks Act, 1986 [No. 12 of 1986], passing off has no direct statute. However, the same has found itself into Tanzania’s Intellectual Properties’ Jurisprudence through case laws. Notably, the High Court has exclusive jurisdiction on trade and service marks matters.
- Additionally, it is worth noting that the Merchandise Marks Act, 1963 as amended from time to time regulates matters related to forgery and deceptive application of the trade marks. The law criminalizes acts of counterfeiting and its enforcement is done by the Fair Competition Commission.
Our Views on Passing Off
- Given the legal implications of infringing one’s trademarks rights or that of passing off, we strongly advice that, one should avoid doing so even if your mark, symbol, slogan, trademark or image is not exactly but sufficiently similar.
- If you believe that your trade mark, slogan, image, name is being used by another person to mislead the public into thinking that the other person is you or otherwise associated with you, we strongly advice that you take action against such a move.
Should you require our services on any of the above, kindly contact us.
This publication has been prepared for information purposes only, and it does not constitute professional advice. You should not act upon the information contained in this publication without obtaining specific professional advice. No representation or warranty (express or implied) is given as to the accuracy or completeness of the information contained in this publication, and, to the extent permitted by law, Afrilex Associates, its members, employees and agents do not accept or assume any liability, responsibility or duty of care for any consequences of you or anyone else acting, or refraining to act, in reliance on the information contained in this publication or for any decision based on it.