Tanzania – fresh anti-counterfeiting measures

The long awaited Merchandise Marks Act Regulations have been published in the Tanzanian Government Gazette of 20 June 2008. The Regulations and earlier amendments to the Merchandise Marks Act of 1963 (“the Act”) serve to amend the Merchandise Marks Act of 1963.  The Regulations have come up with practical strategies and rules to tackle trade in counterfeit goods and pirated copies. The notable features of the Regulations are as follows:

1.  the Regulations define counterfeit goods as goods available as a result of counterfeiting and piracy. Piracy involves the unauthorised copying of any intellectual property right (Copyright protection) in the course of trade. Counterfeiting involves the unauthorised application of an intellectual property right (Trade Mark protection) to any goods in the course of trade, giving rise to a substantial or identical copy, or colourable imitation of the protected goods, resulting in deception or confusion;

2.  the establishment of a task force known as the Interdepartmental Task Force which is responsible to oversee the implementation of the Act and the Regulations;

3.  the vesting of powers in the Chief Inspector, which include detaining or seizing any goods which are reasonably suspected to be counterfeit and to institute proceedings against any suspect upon receiving a complaint in terms of the Regulations;

4.  the establishment of zones and creation of ranked officers to fulfill responsibilities at border posts in order to combat counterfeiting and provide for seizure, detention, storage and disposal of counterfeit goods and pirated goods;

5.  provisions dealing with costs associated with the destruction of infringing goods and payment of fines. Fines are to be determined by the Chief Inspector but shall not exceed five million Shillings (34000.00 ZAR) for any single case. The Chief Inspector may report an offender to the Director of Public Prosecutions for criminal prosecution;

6.  provisions to obtain ex-parte search orders (Anton Pillar orders), from any District Court by the Chief Inspector or any intellectual property right holder, authorising the entering and searching of any premises where suspected counterfeit goods or pirated copies are being stored;

7.  provisions for application in order to obtain freezing orders (Mareva injunctions) from court to enable the Applicant to have the Respondent’s assets frozen pending the finalisation of the case;

8.  the Regulations attempt to simplify proceedings by setting out and providing for forms for proceedings either before the Chief Inspector or Customs officials.

The amendments to the Act and Regulations widen Tanzania’s anti-counterfeiting law by branding dealers in counterfeit goods as criminals.  The changes in Tanzania’s anti-counterfeiting/anti-piracy legislation are to be welcomed and serve as a mechanism in favour of proprietors in the war against counterfeit goods and pirated goods.

Marilyn Krige
Partner
marilyn@adamsadams.co.za

Muhammad Moolla
Professional Assistant
muhammad-m@adamsadams.co.za