Likelihood of confusion: what is the yardstick? Trade mark jurisprudence in Tanzania

In the recent past, trade mark litigation has gradually increased in the High Court of Tanzania (HCT). This litigation includes disputes over registration of trade marks, applications for temporary injunctions, trade mark infringement, and passing-off. Although I have classified trade mark litigation into four distinct groups, more often they tend to overlap in practice. The analysis in this article is limited to case law on trade mark infringement because it raises the most critical legal issues. The basic legal issue in an action for trade mark infringement is whether a commercial use of a proprietor’s trade mark by a competitor is likely to confuse consumers. In considering this legal issue, courts in different jurisdictions (eg Kenya, Uganda, Nigeria, South Africa, USA, and the UK) apply the likelihood of confusion test. As we shall see, the HCT has rarely considered this test in its judgments. In one relatively consistent test, the court has looked at similarity in trade marks to determine infringement that suggests that the test provides a high level of protection for brand owners. However, this test has an adverse consequence for competition in the markets as it creates an unnecessary monopoly for brand owners. Because of this, defendant companies have always been ordered to pay to huge damages and faced injunctions against use of trade marks in dispute which might have not been the case if the likelihood of confusion test was applied. Admittedly, while similarity is one of the factors which courts have to consider in determining confusion, similarity as such is far from determinative. Defining trade mark infringement The Trade and Service Marks Act (TMA) does not define the term trade mark infringement. An attempt by HCT to define it in Colgate-Palmolive Company has not provided sufficient guidance. In that case, the court merely reproduced the wording of section 32 of the TMA without any further analysis. Likewise, scholars have found difficult to define trade mark infringement. Phillips, for example, defines trade mark infringement in terms of unauthorized uses. Re-stating the grounds for trade mark infringement under European law,