CHEMI COTEX

IN THE HIGH COURT OF THE UNITED REPUBLIC OF TANZANIA (DAR ES SALAAAM SUB REGISTRY) AT DAR ES SALAAM CIVIL APPEAL NO. 1665 OF 2024 (Appeal from the Ruling ofthe Deputy Registrar of Trade and Service Marks) CHEMI & COTEX INDUSTRIES LIMITED APPELLANT VERSUS TANGA PHARMACEUTICAL & PLASTIC LIMITED RESPONDENT JUDGMENT ON APPEAL S.M. MAGHIMBI. J: The appeal beforehand was lodged under the provisions of Section 48 of the Trade and Service Marks Act, Cap 326 R E 2002 ("the TSMA") and Regulation 96 of the Trade and Service Marks Regulations 2000 ("the Regulations"). The appellant was aggrieved by the decision of the Registrar of Trade and Service Marks ("the Registrar") dated 28^ November, 2023 which dismissed her application for removal or expungement of a mark "Family" from the Register of Trade Marks on ground that the Trademark "Family" is generic and descriptive in class 3 of Nice of Classification. The appellant has tabled three grounds of appeal as hereunder: 1. The Deputy Registrar committed a distinct and material error of evaluation and principle: in first finding the word "Family" as being descriptive under class 3 of the Nice Classification of Goods and Services and simultaneously refusing the application to disclaim or expunge the same from the register of marks as submitted by the Appellant. 2. The Deputy Registrar of Trademark committed a distinct and material error of evaluation and principle in failing to recognize that the Appellant seeks for rectification of the register of trade and service marks disclaiming the word "Family" for being common and descriptive. 3. The Deputy Registrar of Trademark erred in law in failing to properly evaluate the Appellants evidence. By doing so, the Deputy Registrar reached a wrong decision. On those grounds of appeal, the appellant's prayers were as follows: a) The appeal be allowed with costs; b) The decision of the Deputy Registrar of Trademark be quashed and set aside; c) The register of marks be rectified by disclaiming the word "Family" in respect of the mark for being common and descriptive; d) In the alternative prayer (c) to remove or expunge the trademark register under TZ/T/2/28084 from the register of marks for being common and descriptive; and e) Any other relief to the Appellant that this Honourable Court may deem fit, When the appeal was called for hearing on the 03'^^ day of May, 2024 following a delay in procurement of records from the Registrar, the parties agreed and the court ordered that disposal of the appeal be by way of written submissions. The appellants submissions were jointly drawn and filed by Mr. Caspar Nyika and Mr. Burure Ng'ocho, learned Advocates while the respondent's submissions were drawn and filed by Mr. Paschal Kamala, learned Counsel. Brief background of the dispute at hand is based on a refusal by the Registrar to remove from the register the respondent's existing trademark designed as "Family Care". The application for expunging followed a complaint lodged by the respondent at the Chief Inspector of the who is mandated to enforce the Merchandise Marks Act, R.E 2002 as amended ("the MMA"), who is the Director General of the Fair Competition Commission (FCC) on the appellant's usage of her trade mark "Family Care". A series of correspondence from FCC were directed to the Registrar Inquiring the details of the legal existence, ownership and coexistence of Trademarks "Family Care" and 'Bodyline Family Care". In a letter dated 30^^ September, 2020, the Chief Inspector wrote to the Registrar seeking clarification having encountered a challenge with regard to applicability of registered trademarks namely Bodyline owned by the appellant and Family Care owned by the respondent herein. The clarifications sought were on the extent of application of the said trademarks in the same class of products by the appellant combining his trademark "Bodyline" along with the appellant's "Family Care" and come up with the name "Bodyline Family Care" and whether the same amounts to an infringement of the respondent's trademark. In her reply through a letter dated 08th October 2021, the Register clarified that in their Register they only have a name "Family Care" registered with Trademark No. 28084 owned by the respondent. They denied to have no registered trademark named "Bodyline Family Care" allegedly owned by the appellant. Following the reply, the Chief Inspector, vide a letter dated 10^ December, 2021 wrote to the Register requesting her to handle the matter, in deciding which company between the parties herein is the rightful owner of the trademark, on the ground that it is the registrar who is the licensing authority of the trademarks. The remedy requested therein include deregistration of a trademark wrongly registered by the Registrar or any other measure as deemed appropriate. Vide a letter dated 15^^ December, 2021, the Registrar wrote a letter to the Chief Inspector confirming that in their Register they do not have a trademark in the name "Bodyline Family Care", they however have a trademark styled as "Bodyline". On 21st December, 2021 through Form No. TM/SM 23 (Application to the Registrar for the rectification of the Register or removal of a mark from the Register), the Applicant filed an application for rectification of the register by removing a Trademark No. 28084 owned by the respondent. In the statement of the Case, the appellant adduced the following grounds for removal: 1. The word "Family' and "Care" registered are common words and descriptive words commonly used in describing the use and application of cosmetics, medicines, soaps, essential oils etc, thus affording them an exclusive ownership to an individual or a sole corporate body denies the public freedom of using such words to describe their products. 2. The offending mark was filed in bad faith and/or with fraudulent intentions, 3. The use of the offending mark offends Section 18 of the Trade and Service Marks Act (hereinafter to be referred as the Act) in that the proprietor did not disclaim any right to the exclusive use of the offending mark "Family Care", and He justified his application as an aggrieved person as required by Section 36 of the Act. The Applicant prayed that the offending Trademark registered in the name of the Respondent be rectified to disclaim the words "Family Care" or in the alternative the same be removed/expunged from the Register. The applicant also prayed for cost. In her ruling, the Registrar framed the following issues for determination: 1. Whether the word "Family" is descriptive in class 3 of nice classification and not distinctive. 2. Whether the Trademark "Family Care" is subjected to disclaimer or for removal/expungement from the Register. 3. What relief (s) are the parties entitled to. In the end, the Registrar dismissed the application on the ground that the trademark was registered in compliance with the law and it did not infringe Class 3 of NITA. Aggrieved by the said decision, the appellant has lodged the current appeal on the aforementioned grounds. Having gone through the records of appeal including the decision of the Registrar and the parties' submissions, much as the appellant has argued the grounds in two groups, I find that there is only one Issue for determination in this appeal. The issue is whether the word "Family" is descriptive under class 3 of the Nice Classification of Goods and Services and is common and descriptive deserving to be disclaimed subjecting the Register to be rectified by expunging the mark from the Register. Determination of the issue will include re- evaluation of evidence, this being the first appellate court. In their submission to support the appeal, the appellants submitted that the term descriptive trademark is defined under the Black's Law Dictionary 8th Edition 2004 at page 4658 to mean a trademark that is a meaningful word in common usage or that merely describes or suggests a product. They appreciated that the definition was correctly defined by the Deputy Registrar at page 13 of the decision where she defined the term descriptive to mean those term that serve in goods on service to designate the kind, quality, value, place of origin, time of production or any other characteristic of goods for which the sign or the term is intended to be used or is being used. They then pointed out that at page 15 of the decision, the Deputy Registrar's found the word "Family" to be descriptive in character under goods falling in class 3 of the Nice classification. They further pointed that the finding is in consonance with the Appellant evidence on record that the impugned mark "family care" has already been disclaimed partly whereas the word "care" Is considered a descriptive word. They also argued that the word "Family" is also commonly used and descriptive because there is no other word which can be used to describe a group of people related to birth, marriage, or adoption who live together apart from the word "family" that can be used to describe products of the manufacturers of cosmetics and related products under class 3 of the Nice Classification. The appellant's Counsels submitted further that it is also on the record that the word family has been used in relation to goods in class 3 both in Tanzania and within ARIPO members for instance; with ARIPO members, there is a mark registered as "Family Detergent" owned by Viva Products Limited, a mark "Mukwano Family" owned by Mukwano Industries (U) Ltd also in Tanzania there is a mark registered as "Family" owned by G and B Soap Industries and also a mark registered as "Flora Family Jelly" owned by Flora Family Jelly. They then argued that based on the evidence, it is clear that the word "Family" is an ordinary word, a word which can be used to describe a group of people related to birth, marriage, or adoption who live together and that this word is associated with the business of trademark as it can be used to describe the features or characteristics of a product offered by the company dealing with products under class 3 to signify the intended consumer of the product. Their conclusion was that the word family is nothing but a descriptive word and qualify to be disclaimed under class 3. To support their submissions, the Counsels cited the case of Marico limited vs Agro Tech Foods Ltd FAO (OS) No. 352/2010; whereby the court confirmed the position taken in the case of Cadiia Healthcare ltd vs Gujarat cooperative milk marketing federation (2001 (41) PIC 336), at page 04 of the judgment and held that; 'It Is important to be borne in mind that use of a descriptive expression as a trademark by a trader, irrespective of the said trademark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes ofdescribing the characteristic features of their products. I have no hesitation in stating, aibeit without prejudice to the rights and interests of the piaintiff in the present suit, that by adopting such a pureiy descriptive and laudatory expression 'Sugar Free' as its trademark, the piaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the widespread use of such trademark by fellow competitors. Simply because the plaintiff claims to be using the expression 'Sugar Free'as a trademark much prior to the launch ofthe defendant's productPro Blotic Frozen Dessert In the market does not give this Court a good ground for imposing a blanket injunction on the defendant from using the expression 'Sugar Free', especially when the defendant Intends to use this expression only In its descriptive sense and not as a trademark, and even otherwise, when the use of this expression is widespread in relation to foods and beverages" Relating to the matter at hand, the Counsels submitted that the word "Family" is widespread in relation to manufacturers of 10 products under class 3 of the Nice Classification in ARIPO region across Africa and in Tanzania as well. That the Appellant's prayer was that the word "family" be disclaimed for being commonly used English word and descriptive under class 3 of the Nice Classification and that following the finding that the word "Family" is descriptive the Deputy Registrar ought to have granted the Appellant's prayer. The Counsels went on submitting that it is a settled principle in trademark jurisprudence under the doctrine of laudatory epithet that Epithets, laudatory or otherwise, are by definition adjectives because they are descriptive. That the word "family" connected with another word is also an English adjective and therefore the use of the word "family care" indisputably falls under the doctrine. The submission was supported by a persuasive case of M-Systems Group(PTY) Ltd vs Cochrane Steel Products(PTY)Ltd Case No. 61028/2015 at page 13 last paragraph (which cited with approval the British case of Joseph Crosfield & Sons' Application (1909)26 RPC 83 where the court stated: "(w)ealthy traders[who]are habitually eager to enclose part of the great common English language and to exclude the general public ofthe present day and ofthe future from access to the enclosure'' 11 and held that; "an ordinary laudatory epithet ought to be open to the world, and is not, in my opinion, capable of being registered'' They went on submitting that under the law, the word that is common to the trade and of undistinctive character ought to be disclaimed. Reference was further made to Section 18 of the Act.; "Ifa trade or sen/ice mark contains a matter or matters common to the trade or it is of a or service non- distinctive character, in determining whether the trade or service mark should be entered or remain in the register, it shaii be required as a condition ofits being on the Register; (a) that the applicant or the proprietor shaii disclaim any right to the exclusive use ofany part ofthe trade or service mark, or to the exclusive use ofaii or anyportion of such trade or service mark as aforesaid to the exclusive use of which he is not entitled; or (b) that the applicant or the proprietor shaii make such other disclaimer as is considered necessary for the purpose of defining his rights under the registration, 12 provided that no disclaimer on the register shall affect any rights of the proprietor of a trade or service mark except such as arise out of registration of the trade or service mark in respect of which the disclaimer is made. Their conclusion was that upon finding that the word is descriptive, the Deputy Registrar ought to have disclalnned the word and failure to do so the Deputy Registrar erred In first finding the word "Family" as being descriptive under class 3 of the Nice Classification of Goods and Services and on the other hand refusing to grant the Appellant's prayer to disclaim the same for being descriptive. The prayer was for the proceedings and ruling of the Deputy Registrar be quashed and set aside and the register of marks be rectified by disclaiming the word "Family" for being common and descriptive. In reply, Mr. Kamala started by pointing that the appellant Counsels are misleading the court because the Ruling of Deputy Registrar never found or even ordered as alleged by Appellant that "Family" is descriptive in class 3 of the Nice International Classification of Goods and Services. To the contrary, he submitted, at pagel7 of the Ruling the orders by Deputy Registrar are that: "The Applicant has failed to establish that the 13 Respondent's Trademark "family'' is generic and descriptive in ciass 3ofthe Nice..." He hence argued that the allegations by Appellant are misleading allegations as the orders are clear on the aspect of non- descriptiveness of FAMILY CARE trademark, that the mark FAMILY CARE is not descriptive in class 3. He elaborated that class 3 covers non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations. On the substantive grounds, Mr. Kamala submitted that a trademark can be in form of Fanciful representation (fanciful mark), arbitrary representation (arbitrary mark). Suggestive representation (suggestive mark), Descriptive representation (descriptive mark) and Generic terms representation (shapes or colour) (generic mark). That for a trademark to be descriptive, it has to contain word or shapes of describe ingredient of goods which it represents in the market and that the word FAMILY could not and cannot be held descriptive. His argument was that the mark or even the word does not at all have connection with cosmetics in class 3 of the international classification of goods and services. On the dissected 14 representation suggested by Appellant which he argued to be incorrect, his reply was that the mark and the word FAMILY cannot be termed to have connection with nature or shape of goods in class 3 hence cannot be descriptive in class 3 of the Nice International Classification of Goods and Services. He then pointed at page 15 of the ruling of the registrar which he alleged to be a slip of a pen and Registrar never intended or found that the word family is descriptive. That the Deputy Registrar of trademarks never found or even reasoned FAMILY to be descriptive word. That throughout the decision of Registrar, the reasoning was to the effect that the word FAMILY is distinctive /non descriptive, and that there was a slip of a pen on page 15 where the word "not" was not inserted therefore creating typographic mistake. He argued that the paragraph in the decision of Registrar of Trademarks which misses the word "not" is inconsistent with the rest of the reasoning of Registrar regarding registrability and distinctiveness of the mark "FAMILY CARE"or the word "FAMILY"for that matter. The Appellant has anchored ground 1 of the appeal that an error on page 14 of the decision of registrar was a finding which was not at all. He went on submitting that a finding cannot by any reason be hanging in the air within the decision without being substantiated 15 by the rest of the decision text or without being anchored on text content. That a disconnected sentence in the middle of other paragraphs reasoning differently from a single sentence or word mere typographical error cannot be called a finding. He then referred to the holding of the Court of Appeal that a litigant cannot suffer loss through mistake based on a slip of a pen, citing the case of William Getari Kegege Vs Equity Bank and Ultimate Auction Mart, Civil Application No. 24/08 Of 2019; Court of Appeal of Tanzania at Mwanza at P. 9 where it was held that the Court can rectify the error where there is an error which is wholly inconsistent with the judgment. He went on submitting that in the same judgment, the case of VIP Engineering & Marketing Limited v. Societe Generate De Surveillance (S.A)& Another, Commercial Case No 16 of 2000 was also referred to where it was held that: "a litigant should not be allowed to suffer through the mistake of an officer of the Court connected with the administration ofjustice and that Courts have a duty to ensure that Court records are true and that they represent an accurate record ofthe proceedings." Mr. Kamala submitted further that in the case of Victor W. Meena and Halidini H. Sarakikya Versus Arusha Technical College Civil 16 Appeal No. 515 of 2020 In which there was slip of a pen which created inconsistence between the reasoning in the judgment and P.13, the Court of Appeal judges held among others: "The bolded expression justifies that the accidental slip in the present appeal is inconsistent with the reasoning of the High Court Judge. The clarification and or correction of the said accidental error is apparent from the High Courtjudgment. Unlike the learned counsel for the appellants, we have found that the error is a result ofan oversight; it does not change the substance ofthe judgment' On those authorities, he submitted that the whole reasoning of the ruling by Deputy Registrar of Trademarks is in line that the word FAMILY is not descriptive to goods in class 3 of the Nice Classification. On emphasis, he pointed to page 15 of the ruling Registrar of Trademarks which say: "Therefore, when resolving this issue, I am convinced that the word "Family"is descriptive in character under goods failing in class 3 of the Nice Classification" He then argued that the above extract paragraph from decision of 17 Deputy Registrar of Trademarks is wholly inconsistent with the entire ruling because it is slip of the pen therefore cannot change the decision of Registrar. That most part of the reasoning of Deputy Registrar can be seen on page 14 and 15 of the decision whereby at page 14 the Deputy Registrar held: "The Respondent on his Statutory Declaration attached several certificates of registration and renewal certificate from other jurisdictions bearing the mark "Family Care'', this are from; Afghanistan, Mozambique, Burundi, Rwanda, Uganda, Zambia, Zimbabwe, Madagascar, South Africa, Liberia, Angola, and Zanzibar. In support of existence of Family Care products in the market the Respondentattached several Declaration by Distributors from Burundi, Kenya, Malawi, Rwanda, Somalia, Uganda and Tanzania." The fact that the in his statutory declaration the respondent attached several certificate of registration from other jurisdiction bearing the mark Family Care" means that the name is not a descriptive mark to make it prohibitive of registration as a Trade Mark. He then pointed to the Ruling from the hearing Committee in the Matter of the Merchandize Marks Act Claim No 3 of 2021 (Supra) of which the Committee ruled in Respondent's favour. That in the Ruling, CWI who was the Deputy Registrar testify that the word "Family" has no direct link to the character and purpose of goods under class 3, part of the decision at page 16-17 states; 'We are also in agreement with CWI on his account that the mark "famiiy"has no direct iink to the character and purpose ofgoods under dass3hence it cannot be ruied out to be generic that's why it was formerly examined and approved. I have aiso gone through the Applicant's Statutory Declaration specificaiiy exhibit CCIL4 on annexures though written CCIL3 on Statutory Declaration which is a letter from the Registrar addressed to FCC(Ref No. BRELA/TZ/T/28084/04 sated October, 2021), partly the letter reads in para 58l6. He further pointed to page 15 where it was held: 'When substantiveiy examining the mark "Family Care'' in dass 3, the word "Care" is descriptive hence no exclusive right to the use ofthe same was granted, the granted mark was oniy for exclusive use of the word 19 "Family''which is distinctive in ciass 3as per Section 16 ofthe Trade and Service Marks read together with NICE Classification ofGoods ofGoods and Services(the goods in ciass 3are as provided in Para 3of this letter) He concluded that the law prohibits using the Trade or Service Marks already registered by another Proprietor which is similar or most likely similar with the registered mark. It is our finding therefore "Family Care" and "Bodyline Family Care" are most likely similar hence they cannot honestly co-exist in the Register." That the word "Family" is descriptive in character under goods falling in class 3 of the Nice Classification. Mr. Kamala then pointed that he will not dwell much on this issue due to the fact that the first issue is not that far from the second. His argument was that as the exclusivity was granted to the word "Family" as per Section 14(1) of the Act which states, then the second framed issue was whether the Trademark "Family Care" is subjected to disclaimer or for removal/expungement from the Register. He then argued that there is inconsistency with the reasoning and the slip of pen regarding the mark FAMILY CARE. He concluded that since the Court of Appeal has ruled on slip of pen matter, in the same spirit and hierarchical binding precedent of the 20 Apex Court of the land, this court be pleased to consider and adopt the same approach of the Court of Appeal of Tanzania. Mr. Kamala also distinguished the case referred by the appellant, the case of Marico limited v Agro Tech foods limited FAO(OS) No.352/2010 and the position in Cadila Healthcare limited v Gujarat Cooperative milk marketing federation (2001(41) PTC 336 which in his view are distinguishable to the current circumstances. That in these cases, the court was ruling on secondary meaning of a mark acquired through long time use while in our present case the FAMILY CARE has Inherent distinctiveness. That the cited cases by counsel for Appellant are irrelevant in the present appeal as the present mark is inherently distinctive in nature and that the mark is inherent distinctiveness and has acquired distinctiveness Having heard the parties' submissions for and against the appeal, as I had pointed earlier, the issue for determination before me is whether the word "Family" is descriptive under class 3 of the Nice Classification of Goods and Services and whether it is common and descriptive deserving to be disclaimed subjecting the Register to be rectified by expunging the mark from the Register. In determining the issue, it is important that I revisit the meaning of a trademark and what a descriptive trademark is, for the purpose of registration 21 or refusal of registration and whether the registration of the trademark "Family Care" was legal in line with the nature of the name registered. To begin with, generally speaking, a trademark is a word, phrase, symbol, design, or combination of these that identifies a company's goods or services from similar goods of other competitors. Section 2 of the TMSA defines a Trademark to mean: "Any visible sign used or proposed to be used upon, in connection with or in relation to goods or services for the purpose of distinguishing in the course of trade or business the goods or services of a person from those ofanother." From that definition, it can be well settled that the purpose of a trademark is to help customers distinguish a company from its competitors and identify the source of its products or services. They also provide a legal protection for a company's brand and help prevent counterfeiting and fraud. Having settled on the what a trademark, there a further task of defining what a descriptive trademark is. Black's Law Dictionary 8^^ Edition 2004 at page 4658 defines descriptive trademark to mean a trademark that is a meaningful word in common usage or that 22 merely describes or suggests a product. Descriptive trademarks are generally considered to be weak and are more difficult to protect than other types of trademarks. They are words or phrases that describe the characteristics or qualities of the goods or services being offered, such as the ingredients, quality, purpose, or geographic origin. With the above definitions in mind, it is the applicant's contention that the word "Family" is widespread in relation to manufacturers of products under class 3 of the Nice Classification in ARIPO region across Africa and in Tanzania as well. The Appellant's prayer was that the word "family" be disclaimed for being commonly used English word and descriptive under class 3 of the Nice Classification. The respondent vehemently disputes that contention. Starting with the their own submission, the applicant have made it known to the court that it is also on the record that the word family has been used in relation to goods in class 3 both in Tanzania and within ARIPO members for instance; with ARIPO members, there is a mark registered as "Family Detergent" owned by Viva Products Limited, a mark "Mukwano Family" owned by Mukwano Industries (U) Ltd also in Tanzania there is a mark registered as "Family" owned by G and B Soap Industries and also a mark registered as 23 "Flora Family Jelly" owned by Flora Family Jelly. They then argued that based on the evidence, it is clear that the word "Family" is an ordinary word. My concern has then been if the word is used widely by other products, why would the appellant just move the registrar to remove the word family in the Trademark registered No. 28084 belonging to the appellants and not for other users of the word family? Having traced the dispute, the appellant had used both the word family and care from the registered trademark of the respondent and his move to have the word family de-registered is for an ill intention to have the word care as being common and descriptive not being restricted for the appellant to use anymore. The above notwithstanding, I have also given a thought in passing, to the fact that the respondent has been using the trademark for the past 25 years and the appellant her mark over years, shouldn't there be a limitation upon which a person can file for de-registration of trademark instead of waiting for years of investment and name building. This position was well captured by the Deputy Registrar in her decision where she observed: "7/7 determining this issue, it is pertinent to first understand that both parties have their Trademarks registered. Whereas the Applicant among other marks 24 has several registered Trademarks by the style of "Bodyllne''and the Respondent among other marks has a trademark registered by the style of 'Tamiiy Care''. When zeroing matters at hand is the existence in the Register the word "Family"which was registered on 21st June, 2000 and ever since the said Trademark has been enjoying peacefully protection." This issue made me re-visit the time limitations upon which one may lodge a grievance on infringement or rectification of a trade mark or its register. Section 27(1) of the TSMA is clear that a notice of opposition of a Trademark Registration may be given to the Registrar within the time limited prescribed from the date of advertisement. The grounds of opposition are prescribed under Part IV and Section 27(2) of the same Act. Now from the facts as gathered from the records, I even wondered if the matter beforehand was lodged within time. This arises from the records whereby the Deputy Registrar is quoted in her decision while providing for a background upon which the respondent's trademark came into existence: "In nutshell, Tanga Pharmaceutical & Piasties Limited, a limited iiabiiity company incorporated under the laws of 25 Tanzania (herein after to be referred as the Respondent or Proprietor interchangeabiy) through form Number TM/SM 2 and TM/SM 3 on 21sl June, 2000 fiied an appiication for registration ofa Trademark "Famiiy Care" (words oniy)in ciass3ofthe Nice Classification ofGoods and Services(referred as Nice Classification) in respect ofail goodsincluded in class 3. The said appiication was accepted absolutely by the Registrar on 1st August, 2000. In compliance with Regulation 32 of the Trade and Service Marks Regulations 2000 (referred as the Regulation) the Trademark "Family Care'' was advertised on September, 2000 and certificate was issued 10^ January, 2001 bearing registration number 28084. The Respondent on 15th April, 2004 through TM/SM 22 (application by the Registered Proprietor for addition to or alteration ofa registered mark} requested the mark to be amended from "Family Care"(words oniy) to "Family Care" (word and logo). The said altered: Trademark is depicted hereunder. 26 •y:; The afore mentioned application for alteration (TM/SM 22) was accepted on 14 May, 2004 with condition to disclaim the use of the words "Perfumed, Pure Petroleum Jeiiy and 100g", and wentfor publication on 15th July, 2004. The impugned Trademark was renewed for 7 years up to 21st June, 2007 and further renewed on 21^ June, 2017 which will lapse on 2F^ June, 2027. Therefore, given the time limits and the fact that the disputed Trade Mark was registered and renewed registration several times, whether it was proper for the appellant to have lodged the grievance at the time. In the cited case of Marico Limited vs Agro Tech Foods Ltd (Supra)the court emphasized that a trademark is said to be distinctlveness when it is Immediately connected with a certain product, manufacturer or owner In the minds of the public. The court also held that long period of time In the use of a trademark In such a way that the description is relatable only and only to that source, thus distinctlveness of descriptive nature would be accepted, albeit it is a tweaked form of normal descriptive word. My 27 determination here is not meant to make a finding that the word "Family "under scrutiny is descriptive, rather more than 20 years of uninterrupted use by the respondent should not be ignored. Coming back to the issue of whether the word "family" as widespread in relation to manufacturers of products under class 3 of the Nice Classification in ARIPO region across Africa and in Tanzania as well. The Appellant's argument was that the word "family" is commonly used English word and descriptive under class 3 of the Nice Classification. The controversy is on the verdict that was reached by the Deputy Registrar whereby the appellant argued that the decision was to the effect that the family is descriptive under Class 3 of the Nice Classification. The respondent argued that following the analysis of the Registrar the finding to that effect was a slip of the pen. Having analyzed the evidence in her analysis the Deputy Registrar made the following observations: "Before I flinch to resolve Issues at hand, it is prudent to iist herein under goods which are failing under Class 3ofthe Nice Classification; "Non-medicated cosmetics and toiietry preparations, nonmedicated dentifrices, perfumery. 28 essential oils, bleaching, reparations and other substances for laundry use, cleaning, polishing, abrasive preparations, sanitary preparations being toiletries, tissues impregnated with cosmetic lotions, naif art. stickers, polishing wax and sandpaper". We should also remember as per TM/SM 2 which is application form for registration of a mark, the Respondent fisted aii goods falling in class 3ofthe Nice Classification. From the above finding, the Deputy Register was satisfied that ail goods falling under class 3 of Nice Classification were listed. She then went further in determining whether the word "Family" is descriptive in class 3 of Nice classification and not distinctive. In order to resolve this issue, the DR cited the provisions of Section 16 of the Act and further quoted the wording of the letter to FCC from the Registrar which I find basis in making a determination in this appeal. In the said letter with Ref No. BRELA/TZ/T/28084/04 sated 8th October, 2021 which is part of this record, the Registrar informed the inspector at para 5 & 6 that: "When substantiveiy examining the mark "Family Care" 29 in class 3. the word Xare" is descriptive hence no exclusive right to the: use ofthe same was granted, the granted mark was only for exclusive use of the word "Famiiy" which is distinctive in class 3as per Section 16 ofthe Trade and Service Marks read together with NICE Classification of Goods and Services(the goods in class 3are as provided in Para 3of this letter^. The Registrar was categorical that is that "Care" that was descriptive and bi exclusive right, However, the granted mark was only for the exclusive use of the word "Family" which he held to be distinctive in class as per Section 16 of the Act. Therefore, it cannot be concluded that the Deputy Registrar, after making all the observations and findings, meant to hold that the word "family" was descriptive. My take on the analysis and all the case law cited is that the word "Family" was not held to be descriptive. This can also be supported by the same letter at para 6 where the Registrar wrote: "Therefore, the iaw prohibits using the Trade or Service Marks already registered by another Proprietor which is similar or mostlikely similar with the registered mark. It is bur finding therefore "Family Care'' and "Bodyiine Family Care"are most likely similar hence they cannot 30 honestly co-exist in the Register. The issue at the point was concluded that the intended mark to be registered as "Bodyline Family Care" are most likely similar and could not co-exist with the mark "Family Care". All this was held after the Registrar was satisfied that the word "Family" is not descriptive contrary to what the appellant would wish for this court to make a finding. Having made those findings therefore, it is pertinent to emphasize that the mark "family" has no direct link to the character and purpose of goods under class 3 of the Nice Classification of Goods and Services since it is distinctive and not descriptive. Therefore, its registration as a trade mark "Family Care" was proper in the eyes of the law and the subsequent registration intended by the appellant would be an infringement of the Act. In conclusion therefore, I see no reason to vary the decision of the Deputy Registrar. The appeal before me is lacking in merits and is hereby dismissed with costs awarded to the respondent. Dated afe=^R^alaam this 23-^^ day of September, 2024. 4 2 ■.u CD .M. MAGHIMBI >0^ * JUDGE 31