JP Decaux Tanzania Limited vs JCDECAUX SA & Another (Civil Appeal No. 254 of 2021) [2024] TZCA 838 (30 August 2024)

IN THE COURT OF APPEAL OF TANZANIA AT PAR ES SALAAM (CORAM: LILA. J.A. MWANDAMBO. J.A., And MGONYA. 3.A/) CIVIL APPEAL NO. 254 OF 2021 JP DECAUX TANZANIA LIMITED ..... . ........................................APPELLANT VERSUS JCDECAUX S A ............................................ .......................1 st RESPONDENT JCDECAUS TANZANIA LIMITED ........................................ 2 nd RESPONDENT (Appeal from the Judgment and Decree of the High Court of Tanzania, Commercial Division at Dar es Salaam) (Phillip, J.) dated the 4th day of February, 2021 in Commercial Case No. 155 of 2018 JUDGMENT OF THE COURT 30th April & 30th August, 2024 LILA. JA: The main issue for determination by the High Court of Tanzania, (Commercial Division) (the trial court) was whether, by the appellant incorporating a company in that name, it had infringed the respondents' trade mark JCDECAUX. The issue arose from the respondents' claim in the amended plaint that the appellant registered and carried out business similar to those carried out by the 2n d respondent thereby infringing the trade and service mark of the respondents which allegation was seriously disputed by the appellant. At the end, the High Court decided in favour of

the respondents and consequently granted some of the reliefs sought in the amended plaint. Aggrieved, the appellant preferred the instant appeal. The background of the matter as discerned from the amended plaint is this; the first respondent company is a family-owned company incorporated in France by Jean Cloude Decaux way back in 1964 and is listed in the Primer Marche of the Euronext Paris Stock Exchange and is part of the Euronext 100 index. The first respondent is involved in Out of Home advertising spaces and operates in 4,033 cities in more than eighty (80) countries, twenty (20) among them being in Africa. That, in Tanzania it operates through the 2n d respondent. The 1s t respondent boasts itself as being a number one player of Out of Home advertising and has globally been using the name "JCDECAUX". The 2n d respondent earlier operated as Continental Outdoor Media Tanzania Limited until 1/6/2016 when it changed its name to the present one following the 1s t respondent acquiring with a South African partner Continental Outdoor Media Holdings Proprietary Limited, a limited liability company incorporated in South Africa. Without losing sight, we wish to note right here that the above facts mean that before 1/6/2016 there was no respondents' company which operated in the name of the 2n d respondent in Tanzania.

While existence of the 2n d respondent in Tanzania started on 1/6/2016, the essence of the controversy between the parties as well explained in paragraphs 10 to 18 of the amended plaint, takes us back to on or around August, 2014 (paragraph 10 of the amended plaint). It was then, it appears, that the respondents became aware that the appellant had registered a company in the name of JP DECAUX TANZANIA LIMITED followed by causing a domain name jpdecaux.com on or about September, 2014 and a website www.ipdecaux.com which displayed contents identical to those services offered by the 1s t respondent, which actions allegedly caused confusion as it was similar with its trade mark "JCDECAUX". Such a practice commonly known as typo squatting, prompted the 1s t respondent to seek a solution from the On-line ADR Centre of the Czech Arbitration Court (CAC) and later to WIPO Arbitration and Mediation Centre both of which ruled in its favour prohibiting the appellant from using the names that are confusingly similar to JCDECAUX. That notwithstanding, the 1s t respondent alleged that the appellant continued using the name JP Decaux, hence an infringement. It claimed that the appellant's conduct created a likelihood of confusions out of which the appellant benefitted commercially thereby causing the appellant to suffer loss and damages hence the suit before the trial court. 3

In the suit, the respondent prayed for declaratory orders for a permanent injunction restraining the appellant, its agents, representatives, servants, assignees and or other persons acting under its instructions from trading, advertising, marketing and or in any other way dealing in the name of JP DECAUX or any other name closely resembling the respondents' name or any other names including the word JP DECAUX resembling the trade mark JCDECAUX registered in favour of the first respondent. The respondent further sought for orders restraining the appellant from holding itself out as an associated or affiliated company of the appellant or of the JCDECAUX group. Save for the claim of infringement, a substantial part of these crucial facts were not disputed by the appellant in its defence as reflected under paragraph 5 of the written statement of defence to the amended plaint, which for ease of reference later on, we hereunder quote, in part: - "5. That the contents o f paragraph 10 o f the amended plaint are partly admitted to the extent that the defendant was incorporated on 7th August, 2014; the defendant registered a domain under the name jpdecaux.com, then; and that the defendant registered a website www. iodecaux.com, then. The rest o f the

contents o f the said paragraph 10 o f the plaint are denied and the plaintiff is put to strict proof." Otherwise, as averred above, the rest of the respondents' claims were strongly denied by the appellant, in particular, infringement of the appellants' trade and service mark advancing three reasons: one, that, she was duly incorporated and registered in Tanzania by the Registrar of Companies (the Registrar) on 7th August, 2014 under the Companies Act prior to the Registration of the respondents'trade mark in Tanzania. Two, the changes of the 2n d respondent's name into the current name was effected in June, 2016. And, three, that the 1s t respondent's trade mark (JCDECAUX) was registered after the appellant was duly incorporated by the Business Registration and Licencing Agency (BRELA) upon complying with all legal requirements and therefore, her name was protected under the Companies Act, hence, both the respondents and the appellant are protected. In the circumstances, it contended that, the allegation of infringement being committed is misplaced and the body vested with authority to allow them to use or otherwise the name of JP DECAUX Tanzania Limited is the Registrar of Companies. Upon the parties' pleadings, the trial court framed two issues for determination of the suit: - 5

1. Whether the defendant's name "JP Decaux Tanzania Limited" and words "JP decaux" infringe the plaintiffs' Trade Mark "JCDecaux"
2. To what reliefs are the parties entitled to. Two witnesses testified in the trial, one for each side. Janine Deetlefs, a Sales Manager of the 2n d respondent, testified as PW1 and Mr. Elia Richard Moshi, Chief Executive Officer of the appellant, testified as DW1. Both had their respective witness statements lodged in court in compliance with Rule 48(1) and (2) of the High Court (Commercial Division) Procedure Rules GN No. 250 of 2012 as amended by the High Court (Commercial Division) Procedure (Amendment) Rules, GN No. 107 of 2019. By and large, the substances of the averments in the two witnesses' statements and evidence in court are as above summarized and, at large, constituted of the contents of their respective sides' averments in the pleadings save for some few additions and information mostly unveiled during cross-examinations to which we shall refer in extenso where necessary in the course of this judgment. Briefly, in court, PW1 was forthcoming that the respondents registered the trade mark in Tanzania because they wanted to get legal protection and she did not know if, before the registration, it enjoyed any protection. Such evidence being significant in the determination of this

appeal, we think we should recite what PW1 is recorded, at page 48 of the record of appeal, to have replied during cross-examination: - "I registered the trade mark in Tanzania because we wanted iegai protection. Before registration o f the trade mark in Tanzania it was not protected i.e. before 3(Jh Marchr 2016. Yes, before 30/6/2016 anybody could register the same trade mark because it was not protected. Before May 2016, anybody could use the name JC Decaux because we had not changed the name..." Explaining on the cause of action, she said: - .. We are complaining because the defendant are (sic) using the family name, which has been registered in many countries in the world as a trade mark. The defendant cut and paste o f the plaintiff's name. The name JC Decaux is known worldwide. Why should somebody use the name in Tanzania for doing the same business; so that he can confuse the public." She was, during re-examination, very clear, too, that the respondents (then plaintiffs) started using the trade mark in Tanzania since 2016 and that she was aware that JP Decaux is registered as a company.

For his part, DW1 besides tendering a Certificate of Incorporation of JP Decaux Tanzania Ltd as exhibit Dl, he admitted that when they do outdoor advertisements they use the name JPdecaux Tanzania and that JP Decaux is registered in Tanzania as a company name not as a trade mark and that they could not lodge an objection to the Registrar when the name JCDecaux was registered as a trade mark because they noted that the names were different as they were differentiated by the letter "P". He added that he was aware of the business carried out by JC Decaux and although he did not know the meaning of the word "Decaux" but he said the similarity of the names happened by coincidence and that even an ordinary person can differentiate the plaintiff's trade mark and the appellant's name making the names similar but not confusing. After hearing the parties and considering the exhibits placed before it, the trial court determined the first issue in favour of the respondents. It held that, the similarity of the first respondent's trade mark (JCDecaux) to the appellant's company name (JP Decaux) is obvious as they are only differentiated by only letters "C" and "P" hence confusing. To arrive at such conclusion, the learned trial Judge referred to the evidence by PW1 who produced various email correspondences between PW1 and one of his clients (Exhibit P10). 8

The trial court went on to find that it was an established fact that the appellant's Company was incorporated in Tanzania prior to the Registration of the first respondent's trade mark in Tanzania though the same was registered in other countries as exhibited by the appellant's 28 certificates of trade mark registration of the trade mark "JCDECAUX" in different countries. It also made a finding that, the respondent proved that the trade mark JCDECAUX has been in use in several countries hence world-wide known prior to its registration in Tanzania. The trial Judge further observed that, although the first respondent's protection of trade mark does not extend to Tanzania, because trade mark protection is territorial, it is not correct for a person to register a trade mark or business/company name confusingly similar to a widely used trade mark with well-established goodwill in its business while aware of the existence of the same simply because that trade mark is not registered in his or her country. Concluding, she held that the appellant's act was done by design for the purpose of obtaining some advantage over the goodwill established by the first respondent in outdoor advertisement business. The trial court finally adjudged that, the appellant's use of the name "JP DECAUX TANZANIA LIMITED" infringed the 1s t respondent's trade

mark namely JCDecaux. It accordingly granted the reliefs sought by the respondents permanently restraining the appellant, its agents, representatives, servants, assignees and or other persons acting under her instructions from trading, marketing advertising, and or dealing in the name of JPDECAUX or any other name closely resembling the first respondent's trade mark "JCDECAUX". The appellant was ordered to destroy all printed matters and or labels on or for outdoor advertising materials, the use of which would lead to the infringement of the first respondent's trade mark "JC DECAUX". The above was not all. As a consequence of the infringement, the trial court ordered the appellant to pay the respondent a sum of TZS 3,000,000.00 and TZS 20,000,000.00 as punitive and general damages, respectively, due to the respondent's loss of goodwill. The appellant was aggrieved. She preferred the present appeal armed with the following grounds; "1. The Hon, Judge erred in law and fact by holding that the appellant's name JP Decaux Tanzania Limited which is a company's name incorporated by the registrar o f companies or in short JPdecaux infringes the first appellant's well known trade mark JC Decaux while the appellant's company was incorporated in Tanzania prior to the 10

registration o f the 1st respondent's trade mark in Tanzania, 2. That-f the Hon. Judge erred in law and fact by awarding the sum o f tsh. 3,000,000/= being punitive damages and tsh. 20,000,000/= as genera! damages to the respondents whiie the appellant's company was incorporated in Tanzania prior to the registration o f the 1st respondent's trade mark in Tanzania." Mr. Imam Daffa, on the one hand, and Mr. Gratian B. Mali and Mr. Revocatus T. Mathew, learned counsel, on the other hand, appeared before us for hearing of the appeal representing, respectively, the appellant and the respondents. Both sides adopted the submissions they had earlier on lodged in court consistent with rules 106(1) and (7) of the Tanzania Court of Appeal Rules, 2009 (the Rules) to form part of their respective arguments in support and opposition to the appeal without more. The submissions are lucid enough and we commend the learned brains for the research they did and are, certainly, of great assistance to the Court, the substance of which shall be referred in the course of this judgment whenever we find them relevant. i i

We wish, as our starting point, to put it clear that the infringement conflict in this case is not in respect of a party using another's trade or service mark without consent but about a party registering and continuing to use a name of its company resembling another's trade and service mark. That fact stems out clearly in paragraph 5 of the amended plaint which, to quote partly, is to this effect: - "That the Plaintiff's claim against the Defendant Is that the Defendant has infringed and continues to infringe Plaintiff's well-known mark "JCDECAUX" by using its name "JP DECAUX TANZANIA LIMITED" whereof the Plaintiff prays for declaratory orders for a permanent injunction..." Elaborating such infringement in the amended plaint, the respondents claimed before the trial court that they are proprietors of the trade mark JCDecaux, a worldwide known Out of Home advertisement trade mark with well-established goodwill and by the appellant registering a company in the name JP Decaux Tanzania Limited, she had infringed exclusive right to the use of the trade mark JCDecaux as is confusingly similar or identical to its trade mark. As earlier on noted, there is no dispute that the respondent registered the trade mark JCDecaux in Tanzania in accordance with The Trade and Service Marks Act, Cap 326 R.E. 2010 (the TSMA) while the appellant registered its company in the 12

name JP Decaux Tanzania Limited in accordance with the Companies Act, but did not register JP Decaux as its trade mark. In addition, it was not disputed that the appellant company was registered on 7th August, 2014. It further appears from the pleadings of the parties and evidence in court that it was not seriously disputed that the degree of similarity of the appellant's company name and the respondents' trade and service mark and service rendered were similar such that the ordinary consumer would make the necessary link between them. They were likely to cause a confusion. The issue here is whether that resulted in what is termed as an infringement to entitle the respondents any relief. We start with the first ground of appeal in which the appellant faults the trial court's holding that the appellant's name JP Decaux Tanzania Limited which is a company name incorporated in Tanzania or in short JPdecaux before the respondents' registration of the trade mark infringes the first appellant's well known trade mark JCDecaux. It should be noted that, registration of a company name does not give an automatic exclusive right to the use of a trade mark. The appellant's submission that it acquired a right to use the name of JPDECAUX when it incorporated the company is a misconception because the rights of protection conferred by 13

the Companies Act is not the same protection granted by the TSMA. The appellant should be aware that the two protections are distinct. When the appellant registered the company and a Certificate of Incorporation issued by the Registrar, it actually registered a company name. It did not mean that it registered the company name as a trade mark. On this, we entirely agree with the respondent's submission. The provisions of sections 28 and 31 of the TSMA are instructive. They provide as follows: - "28. - (1) When an application for registration o f a trade or service mark has been accepted, and either - (a) the application has not been opposed and the time for notice o f opposition has expired; or (b) the application has been opposed and the opposition has been decided in favour o f the applicant, the Registrar shall, unless the application has been accepted in error, register the trade or service mark, and the trade or service mark, when registered, shall be registered as o f the date on which the application for registration was received, and that date shall be deemed, for purposes o f this Act, to be the date o f registration ..." 31. Subject to the provisions o f this Act and any limitations or conditions entered in the register, 14

the registration o f a trade or service mark shaii, if valid, give or be deemed to have given to the registered proprietor the exclusive right to the use o f a trade or service mark in relation to any goods including sale importation and offer for sale or Importation." From the above provisions, it is clear that the exclusive right to the use of a trade or service mark belongs to the first person to file an application for registration and ultimately registration of that trademark. Acquisition of the right to exclusive use of a trade or service mark in Tanzania is by registration of the trade and service mark. Section 14(1) of the TSMA is clear on that position as it provides that: - "The exclusive right to the use o f a trade or service mark as defined in section 32 shall be acquired by registration in accordance with the provisions o f this Act." To avoid infringement, the provisions of section 20(1)(2)(3) of the TSMA prohibits registration of similar and/or identical trade or service marks in these words: - "20. - (1) subject to the provisions o f subsection (2) trade or service mark cannot be validly registered in respect o f any goods or services if it is identical with a trade or service mark belonging to a 15

different proprietor and already on the register in respect o f the same goods or sen/ices or closely related goods or services or that so nearly resembles that a trade or service mark as to be likely to deceive or cause confusion. (2) In case o f honest concurrent use, or o f other special circumstances, trade or service marks that are identical or nearly resemble each other in respect o f the same goods or service or closely related goods or services may be registered in the name o f more than one proprietor, subject to any conditions and limitations, if any, which it is considered necessary to impose. (3) Mere separate applications are made by different persons to be registered as proprietors respectively o f trade or service marks that are Identical or nearly resemble each other in respect o f the same goods or services or closely related goods, or services, the Registrar may refuse to register any o f them until their rights have been settled by agreement in a manner approved by him, or on appeal, by the court." In the suit under our consideration, the respondent complained of what, on the face of it, appeared to be a concurrent use of the disputed mark. In terms of the provisions of section 32(l)(a) of the TSMA, registration of a company bearing the name of a trade or service mark of 16

another amounts to infringement of the other's exclusive right to the use of it. We now have to answer the issue whether the complaint is well founded in our consideration of ground one (1) of appeal. The appellant first attacks as clearly erroneous the trial court's finding to the effect that the appellant's company name JP Decaux Tanzania limited infringes the 1s t respondent's well known trade mark JCDecaux. The essence of that finding is that the appellant registered its company name similar to the widely used trade mark of the 1s t respondent's trade mark while aware of its existence. According to the trial judge, non- registration of a widely known trade mark in a particular nation, in this case Tanzania, is immaterial in the circumstances. We are alive to the fact that section 2 of the TSMA takes cognizance of the Paris Convention of 20th March, 1983 for the Protection of Industrial Property and any of its revisions (the Paris Convention) to which Tanzania is a party. Hie countries to which the Convention applies constitute a Union for the protection of industrial property (see Article 1(1) of the Paris Convention). Under Article 2 of it, it is clear that its purpose is to extend enjoyment of protection of industrial property to nationals or country member to the Union in all the other countries of the Union but it does not touch on the judicial and administrative laws of each of the member

countries. The protection envisaged here is against infringement to the proprietorship of a registered trade or service mark. As to how protection is acquired is a matter for each country to determine. In that respect, that Article provides: "(1) Nationals o f any country o f the Union, as regards the protection of industrial property, enjoy in all the other countries o f the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the later, and the same legal remedy against any infringement o f their rights, provided that the conditions and formalities imposed upon nationals are complied with. (2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals o f countries o f the Union for the enjoyment o f any industrial property rights. (3) The provisions o f the taws o f each of the countries o f the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation o f an 18

address for service or the appointment o f an agent, which may be required by the laws on industrial property are expressly reserved. (Emphasis added)" Read together, the provisions of sections 14, 22(1) and 31 of the TSMA, which are in line with the above Article, gives priority protection rights to any person who was first to apply for protection of any trade or service mark in a country covered by the convention by applying to be registered. By implication, this means that a claim for infringement is available to a party who was first to apply and register its trade or service mark, hence first to acquire protection. Further, in a claim for infringement, the plaintiff should prove that it had already acquired protection before the person complained of came into existence or before infringement, when the latter legally came into existence. As opposed to giving priority or broader protection to well-known marks and highly distinctive mark to which the respondents relied on and upheld by the learned trial judge, our law is founded on granting exclusivity to the use of a trade or service mark. This is through applying and registration of the trade and service mark under the TSMA, that is to say, registration under our local law mostly referred to as procedure-centred approach or procedural strictness which insists in geographical or national registration systems requirement for registering non-traditional mark. To put it clear, 19

in other jurisdictions, a provision identical or similar to our section 31 of the TSMA is couched in such a way as to leave no any ambiguity as regards early registration and local registration. For instance, the judgment in Intel Corporation v CPM United Kingdom Ltd, Case C- 252/07 of the Court of Appeal (England and Wales) (Civil Division) discussing the First Council Directive 89/104/EEC of 21 December 1988 on infringement, cited these provisions: - "Article 4 o f the Directive, entitled 'Further grounds for refusal or invalidity concerning conflicts with earlier rights ' provides: -

1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: - (a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; (b) if because o f its identity with, or similarity to, the earlier trade mark and the identity or similarity o f the goods or services covered by the trade marks, there exists a likelihood o f confusion on 20

the part o f the public, which includes the likelihood o f association with the earlier trade mark. 2. "Earlier trade marks" within the meaning o f paragraph 1 means: (a) trade marks of the following kinds with a date o f application for registration which is earlier than the date o f application for registration of the trade mark, taking account, where appropriate, o f the priorities claimed in respect o f those trade marks; (ii) trade marks registered in the Member State... 4. Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that: (a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning o fparagraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the 21

Member State concerned and where the use o f the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute o f the earlier trade mark; 5. Article 5(2) o f the Directive, entitled 'Rights conferred by a trade mark ' provides: "Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to,, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use o f that sign without due cause takes unfair advantage of, oris detrimental to, the distinctive character or the repute o f the trade mark. "(Emphasis added) Further, the court said in the judgment that the Directive was transposed in the United Kingdom or Great Britain and Northern Ireland by the Trade Marks Act, 1994 thus: "7. Under section 5(3)(a) o f the Trade Marks Act, '[a ] trade mark which ...is identical with 22

or similar to an earlier trade mark ... shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case o f a Community trade mark [or international trade mark (EC)] in the European Community) and the use o f the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute o f the earlier trade mark ' 8. Section 47(2)(a) o f the Trade Marks Act provides that [tjhe registration o f a trade mark may be declared invalid on the ground ... that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain." By using the words "earlier trade mark" and "later mark" \ x \ the law, it makes it clearer that, in infringement actions, reference is made to the trade and service mark first to be registered being infringed by the one who registers later which expressions lack in our statute (the TSMA). We hold the view that it would be better if such phrases are incorporated in our law (the TSMA). 23

With the above analysis, we shall now start deliberating on the appeal by looking at whether the appellant's use of the complained of trade mark amounted to an infringement. Unfortunately, infringement is not defined by the TSMA, but its import may be deduced from the provisions of section 32 of the TSMA. Closely examined, under that provision, the main claim in an infringement action is likelihood of confusion which exists when an appreciable number of ordinary purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question, (see an article titled: Own Your Mark: Trademark Law and the Likelihood of Confusion, by Timothy R. Koch, a law School Student Scholarship, Seton Hall University, Repository @ Seton Hall 5-1-2014.). The prohibition to infringement is intended to; one, protect consumers from being misled as to enterprises from which the goods or services emanate, two, prevent an impairment of the value of the enterprise which owns the trademark and three, achieve these ends in a manner consistent with the objectives of free competition. The danger is, as rightly alleged in the plaint, that infringing users can get a free ride on the owner of the mark's goodwill and reputation by inducing the consumer to believe that the goods originate from the same source. An action for infringement is therefore aimed to protect trademarks and therefore protect the public from deceit, to foster fair competition and to

secure to the business community the advantages of reputation and goodwill by preventing their diversion from those who have created them to those who have not. In the light of the above, in order to bring an infringement action, the plaintiff must prove that he owns the mark; the mark was used in commerce and its use is likely to cause consumer confusion. Whether the complained trade and service mark was earlier owned by the respondents so as to claim infringement is an issue we now proceed to consider. As earlier on demonstrated, under our legal regime, the right to an exclusive use of a trade or service mark is dependent upon registration (see section 31 of TSMA). The more so, in terms of section 32(l)(a)(i) of TSMA, infringement of a trademark occurs when there is interference with another person's already registered trade mark which is likely to confuse the ordinary customers as to the source of the goods or services. In our case, the issue is whether registration of a company in a name closely resembling the name of another's trade and service mark may cause an infringement. The answer is availed by the provisions of the said section 32(l)(a)(i) of the TSMA which provide, in part, that: - "32. - (1) The exclusive right referred to in section 31 shall be deemed to be infringed by any person who, not being the proprietor o f a trade mark or 25

its registered user using by way o f the permitted use\ uses a sign either - (a) Identical with or so nearly resembling it as to be likely to deceive or cause confusion, in the course o f trade or business, in relation to any goods in respect o f which it is registered or in relation to any closely related goods and in such manner as to render the use o f the sign likely to be either- (i) As being used as a trade mark or business or company name; or... (Emphasis added) The cited provisions, make it clear that, there may be infringement where a company is registered in the name of another person's trade or service mark. The immediate question that begs for an answer is under what circumstances. In the instant case it was not disputed that the degree of similarity of the appellant's company name and the respondent's trade and service mark were such that the ordinary consumer would make the necessary link between them. They are likely to cause a confusion as was rightly held by the learned trial Judge. The issue would then be who infringed the other's exclusive right to the use of the name. Notwithstanding the fact that the word "earlier trademark" is not reflected in our law as such, it is obvious that, one cannot infringe a non 26

registered trade mark. Following that, it can therefore be inferred that, infringement occurs to an already existing registered trade or service mark. This finds support from sections 20 and 35 of the TSMA which, respectively, bar registration of similar trade or service mark and gives a right of action to an aggrieved party. Having laid the above legal foundation, we now revert to the issues involved in the instant appeal. From the narrated background and with particular reference to the undisputed facts, it is clear that, as of 7/8/2014 when the appellant company was registered, the respondents had not yet registered the trademark JCDECAUX as a trade mark or as a company. The respondents are very clear on this fact in their pleadings at paragraph 9 of the plaint to which they are legally bound where they categorically stated that: - " That sometime in or around June 2015, JCDecaux South Africa Holdings Proprietary limited acquired with a South African partner, Continental Outdoor Media Holdings Proprietary Limited, a limited liability company incorporated in South Africa, being the ultimate owner o f former Continental Outdoor Media Tanzania Limited. The acquisition necessitated changing the brand from Continental Outdoor Media to "JCDECAUX" which is the brand o f the 1stplaintiff. The name o f the locally acquired 27

company thus changed from continental Outdoor Media Tanzania Limited to JCDECAUX TANZANIA LIMITED in line with the 1st plaintiff's global strategy. The Certificate o f Change o f Name was issued by the Registrar of Companies on 1st June, 2016 ...." From these pleadings, it is crystal clear that, the respondent acquired the complained name in Tanzania on 1s t June, 2016, long after the appellant company was registered. In terms of section 31 of the TSMA, the respondents had not therefore acquired any exclusive right to the use of the trade or service mark at the time the appellant company was registered. It was open, therefore, for anyone to register either a trademark or company in such name. Being first to register the company in that name, the appellant cannot be held responsible for infringing the respondents' trademark. If anything and without hesitation, it was the appellant, under our current legal regime, who could maintain an action for infringement against the respondents. To prevent abuse of the right to exclusive use of a trade or service mark and to ensure that such right is enjoyed by registered trade and service mark only, the provisions of section 30 of the TSMA, in very clear terms, prohibit institution of proceedings to prevent or recover damages for infringement of unregistered trade or service mark. 28

There was an argument that, the respondents command worldwide proprietorship of the trademark "JCDECAUX. A number of documentary exhibits were tendered to prove that it is a well-known trade mark hence requiring protection from infringement so as to avoid tarnishing or diluting its distinctive character, a practice termed as parasitizing" the well-known trademark. While we acknowledge that such facts were not disputed, yet the respondents were under obligation to abide to the local law's requirement. As repeatedly stated above, early registration of a trade or service mark is paramount for one to successfully maintain a suit on infringement. In view of the above exposition of the law, we are inclined to agree with the appellant that the learned trial Judge made an error to hold the appellant liable for infringement and making such consequential orders. This finding renders the need to resolve the second ground of appeal a nugatory exercise as the complained orders cannot stand in the absence of the appellant's liability being established. In the final analysis, we allow the appellant's appeal, quash the decree of the High Court, set aside the orders for paying both punitive and general damages as well as waive the restraint order against the

appellant and its associates. The appellant shall have costs of the case here and before the High Court. DATED at DAR ES SALAAM this 29th day of August, 2024. S. A. LILA JUSTICE OF APPEAL L. J. S. MWANDAMBO JUSTICE OF APPEAL L. E. MGONYA JUSTICE OF APPEAL The Judgment is delivered this 30th day of August, 2024 in the presence of Ms. Halima Semanda, learned counsel for the Appellant also holding brief for Gratian B. Mali, learned counsel for the respondent is hereby certified as a true copy of the original. 30