Ratification required: impact of Tanzanian Court of Appeal ruling ARIPO trademarks are unenforceable

In its recent decision in Lakairo Industries Group Co. Ltd & Others v Kenafric Industries Ltd & Others (Civil Appeal No. 593 of 2022), the Court of Appeal of Tanzania has delivered a significant pronouncement on the enforceability of trademarks registered through the African Regional Intellectual Property Organization (ARIPO), under the Banjul Protocol. The judgment underscores that ARIPO-registered trademarks have no legal force in Tanzania unless and until the Protocol is domesticated, reaffirming the principle of territoriality in trademark protection.

ARIPO is a centralised regional system that allows applicants to register trademarks in multiple African member states through a single filing. As of 2025, and before the delivery of the landmark case in Tanzania, the countries that have ratified or acceded to the Banjul Protocol include Botswana, Cape Verde, Eswatini, The Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, São Tomé and Príncipe, Tanzania, Uganda and Zimbabwe.

Background of the dispute

Kenafric Industries Ltd, a Kenyan confectionery manufacturer, sued a Tanzanian company, Lakairo Industries Group and its affiliates for alleged infringement of three trademarks — Pipi Kifua, Special Veve, and Orange Drops. Kenafric asserted ownership through national registrations in Kenya and regional registrations via ARIPO, and claimed that Lakairo had copied the names and packaging to market Lakairo Super Veve and similar products in Tanzania.

The High Court (Commercial Division) had found in favour of Kenafric, holding that Lakairo’s marks infringed Kenafric’s rights and ordering the expungement of the appellants’ trademarks from the register. Lakairo filed an appeal at the Court of Appeal.

Issues before the Court

The Court of Appeal condensed the nine grounds of appeal into two principal questions:

• Whether the appellants’ trademarks infringed those of the respondent; and

• If so, whether the respondent was entitled to damages or other reliefs.

Central to the first question was whether Kenafric’s registrations at ARIPO conferred enforceable rights in Tanzania.

The Court’s analysis

The Court of Appeal, in a judgment delivered by Justice Rumanyika, engaged in a detailed examination of the Trade and Service Marks Act, 2023 (TSMA) and the nature of territorial protection of trademarks.

It noted that the respondent’s Special Veve and Orange Drops marks were registered via ARIPO in Zimbabwe under the Banjul Protocol, while the appellants had secured Tanzanian registrations for similar marks between 2017 and 2018. Importantly, the Court emphasised that: “Unless a trademark was registered in Tanzania, the mere use by the appellant of any closely similar trademarks and names of the products may not necessarily amount to infringement…”

Relying on section 14(1) of the TSMA, which provides that exclusive rights in a trademark are acquired by registration in accordance with the Act, the Court reaffirmed that protection is territorial and cannot be extended to trademarks registered only abroad or through regional instruments not domesticated in Tanzania.

The Banjul Protocol and its non-ratification in Tanzania

Kenafric had registered certain marks under ARIPO’s Banjul Protocol on Marks, which allows a single application for registration in multiple member states, including Tanzania. However, the Court categorically held that such ARIPO registrations “have no protection under domestic law because the said Protocol has not been ratified locally to have legal force in Tanzania.”

The Court further drew parallels with its earlier decision in JP Decaux Tanzania Ltd v JCDecaux SA (Civil Appeal No. 254 of 2021, 2024 TZCA 838), reiterating that exclusive rights to a mark belong to “the first person to file and register it in Tanzania.”

Comparative perspective

The Court also invoked jurisprudence from Kenya and Uganda, citing Krystalline Salt Ltd v STD Group of Companies (2024) and Nairobi Java House Ltd v Mandela Auto Spares Ltd (2016), both of which affirm the independence of national trademark registrations under Article 6(3) of the Paris Convention.

By aligning Tanzania’s position with that of its regional peers, the Court reinforced that even in an era of regional integration, trademark rights remain fundamentally national unless expressly harmonised through legislation.

Outcome

The Court found that the respondent’s trademarks were registered outside Tanzania, and that Tanzania had not domesticated the Banjul Protocol. Consequently, Kenafric had no enforceable exclusive rights within Tanzania.

The appeal was therefore allowed with costs, and the High Court’s orders for infringement, damages, and expungement were set aside. The Court described the infringement claim as “superfluous and untenable,” since no Tanzanian registration existed to support it.

Implications for IP practice

This decision has decisive implications for IP practitioners and brand owners operating in East Africa.

ARIPO registrations are not self-executing in Tanzania. Until the Banjul Protocol is ratified and domesticated, ARIPO-filed trademarks must be independently registered with BRELA under the TSMA to enjoy protection.

Territoriality prevails over regional registrations. Trademark rights remain strictly national in scope; foreign or ARIPO registrations cannot ground infringement claims in Tanzanian courts.

Due diligence for cross-border traders is critical. Businesses expanding into Tanzania must secure domestic trademark registrations even where regional filings exist.

Conclusion

The Lakairo decision cements the doctrine of territoriality as the cornerstone of Tanzanian trademark law. It provides welcome certainty for practitioners and businesses alike, confirming that enforceable trademark rights in Tanzania arise only through domestic registration under the Trade and Service Marks Act.

Until Parliament ratifies and domesticates the Banjul Protocol, ARIPO-registered trademarks will remain unenforceable within Tanzanian territory, a reminder that regional IP cooperation still stops at the border.

Francis Kamuzora is a Consultant in Bowmans’ Dar es Salaam office, with more than a decade of experience advising clients on intellectual property law (particularly trade marks and patents, both contentious and non-contentious), tax, employment, and general commercial law. Patrick Kamanthe is an associate in the Nairobi office who advises on intellectual property law, trademarks, branding and protection, TMT, cybersecurity, AI, and emerging technology matters.