Designs Registration Process
The main legislation in Tanzania is Patents Act, 1986 (Tanzania) and Zanzibar Industrial Property Act, 2008. Tanzania has also ratified Agreement on the Creation of the African Regional Industrial Property Organization, 1979 ((effective for Tanzania as from 12 October 1983) and the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) (effective for Tanzania as from 01 September 1999). There are no local requirements for registration of design in Tanzania mainland. In Zanzibar, the procedure for registration of industrial design is prescribed under the Zanzibar Industrial Property Act, 2008 and the Industrial Property Regulations, 2014. An industrial design can be registered through ARIPO. It is possible to protect copyright over industrial designs under the Copyright and Neighboring Rights Act, 1999. There is a copyright registry which registers protected copyrights.
According to ARIPO definition, design means the appearance of the whole or a part of a product including any industrial or handicraft item. Features of appearance of a product which are solely dictated by its technical function are not granted design protection. It is only possible to register an industrial design under ARIPO Protocol and make Tanzania to be one of the designated states or to register an industrial design and benefit from protection in Tanzania. Design protection may be granted by ARIPO Office for any designs which are new and have individual character.
Under ARIPO Protocol, the duration of protection is ten years from the date of filing, design protection is renewable for further periods and the maximum duration of protection may be 25 years from the date of application. The rights and privileges of proprietors of designs registered in the United Kingdom are extended to Tanzania and Zanzibar during the term of design registration.
Under ARIPO Protocol, the designer or his legal successor in title, for example, the assignee can apply for registration of a design. The application has to be administered by a duly qualified representative. A power of attorney to that effect must be lodged within two months of the filing date of the application.
According to ARIPO Protocol, a design is registrable if it is a new appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture materials of the product or its ornamentation. To qualify for registration, the design must be new which means that it must not be the same as any design which has already been made available to the public, and have individual character which means that the overall impression it produces on an informed user of the design must differ from the overall impression produced on such a user by any design which has already been made available to the public. A design can be two-dimensional, three dimensional or otherwise. According to ARIPO Protocol, not registrable are:
- Designs having features of appearance which are solely dictated by its technical function;
- Features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product to which the design is applied and/or in which it is incorporated to be mechanically connected to or placed in, around or against another product so that either product may perform its function, except designs serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system;
- Designs constitute an unauthorized use of State emblems or other emblems of an authority or international organisation as defined in the Paris Convention for the Protection of Industrial Property;
- Designs contain medals, emblems, armorial bearings or official signs and hallmarks indicating authentication and warranty the use of which is of public interest;
- Designs being identical with a design which has been made available to the public after the date of priority and to which protection has been granted with an earlier date of priority; and
- If it is contrary to public policy or to public morality.
As said above, there are no local requirements for registration of design. In order to obtain design protection in Tanzania and Zanzibar, a design must either be registered in the United Kingdom or by ARIPO. Under ARIPO Protocol, a design is considered new if no identical design has been made available to the public before the date of priority. The regional system for registration of industrial designs that applies to Tanzania and Zanzibar is African Region Intellectual Property Organization (‘ARIPO’). Starting from 01 September 1999, when Tanzania signed the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982), ARIPO industrial designs applications may be filed. An industrial design granted by virtue of the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) in respect of which United Republic of Tanzania is a designated state, the grant have the same effect in Tanzania and Zanzibar as a if an industrial design was granted under the Tanzanian law. If the Patent Office communicates to ARIPO office indicating its objection to grant of an industrial design, the grant by ARIPO has no effect in the United Republic of Tanzania until a decision is made in accordance with the provisions of the Harare Protocol.
Applications for the registration of industrial designs can be lodged at the Tanzanian Industrial Property Office (Receiving Office) or directly with ARIPO. A patent attorney need not represent an applicant when lodging an application. However, an applicant whose ordinary residence or principal place of business is outside the contracting state in which lodging is done must be so represented. Filing can be done by personal delivery or by registered mail. The request must be made in a prescribed form obtainable from any contracting state or ARIPO office in Harare. These forms are available online at ARIPO website. Applications lodged not in a prescribed form could be accepted provided there is an indication that the request is made under the Protocol with at least one designated state. However, a prescribed form will have to be submitted as soon as possible after lodging.
The ARIPO application received by Receiving Office will be accorded an application number and a date of receipt, and stamped with the Receiving Office's stamp. The application number which will consist of a two letter country code of the Receiving Office, a slant, the letters AP, a slant, the letter D, a slant, the four digit year in which the application is lodged, a slant and the numbers allotted internally by the Receiving Office. For example in the case of Tanzania being the receiving office the numbering would be "TZ/AP/P/2006/1". The applicant will be notified of receipt of the application by the Receiving Office. The notification will indicate the date of receipt of the application including the number allotted by the office. The Receiving Office will check whether the prescribed formal requirements for according a filing date have been met. These are identification of an applicant and his address, reproduction of the design and application and designation fees, or an undertaking to pay these fees.
The applicant will be invited to correct deficiencies relating to formal requirements within two months from the date of invitation. However, if such corrections are not made within the prescribed time limit, the applicant may request the Receiving Office to transmit the application to ARIPO. Failure to comply with any of the above requirements within the prescribed time limit will result into refusal of the application. An application in three copies must be transmitted by Receiving Office to ARIPO Office expeditiously. Transmittal will be effected with in 14 days from the date of a complete application is received or from the date on which a request for transmittal is made or within 7 days from the date of filing in case there is an undertaking to pay the application and designation fees. Receiving Office will notify the applicant of such transmittal.
Upon receipt of an application by ARIPO Office, it will assign an application number which will consist of letters of AP, a slant, D, a slant, the four digit year of receipt of that application, a slant and a five digit number in sequential order of applications as filed at ARIPO. For example, the numbering may be ‘AP/D/2006/00001’. The application will be stamped by the ARIPO stamp against the date of receipt of the application. The ARIPO Office will verify if the application complies with requirements to accord a filing date. Where such requirements are not complied with, the applicant will be invited to submit corrections within two months of such invitation. Where the requirements have been met, a filing date will be accorded and the applicant and the Receiving Office will be notified accordingly.
The next stage is to conduct examination as to form. This will be carried out as soon as the filing date has been accorded and its objective is to determine whether the mandatory application requirements have been met. These include short and precise title, indicating the subject matter of the design. The application must disclose the applicant's name and address. Where the applicant is not the creator, the name and address of the creator must be disclosed, and a statement specifying the basis of the applicant's right to the design must be furnished.
An applicant must state the contracting states under which protection is sought. Only contracting states may be designated and designation after the filing date will be disregarded. However, any state may be withdrawn from the designation any time. An application must be accompanied by a reproduction of the design. Three-dimensional design will require all different graphic reproductions of the design. However, one reproduction will be required for a two-dimensional design. The applicant will be invited to correct deficiencies in the application within two months from the date of such notice. Failure too correct will result in the refusal of the application. The applicant, the Receiving office and the designated states will be notified. A request for conversion of a refused application into national application may be made within three months from date of refusal by ARIPO. Such a request must be signed by the applicant and accompanied by a conversion fee. Where all the requirements have been met, the ARIPO office will transmit copies of the application to all the designated states. Basing on the reason that there is no registration procedure provided under the local legislation, it is not possible to convert refused ARIPO application into national application.
The applicant and designated states will be notified of compliance with form requirements. This notification will be accompanied by a copy of the design. Designated states may within six months of such notification decline to protect the design in their territories on the basis that it does not comply with provisions of the Protocol and or their national laws. ARIPO office will after six months from the date of notification of compliance with form requirements, register and publish the design on behalf of the designated states, which did not decline to protect the design. However, this is subject to payment of the registration and publication fee by the applicant. The design will be registered in the Design Register and such registration will be published in the ARIPO Journal. A certificate of registration will be issued and copies of the certificate together with copies of the reproduction of the design will be transmitted to the designated states. Designated states will be required to register the design in their national registers and publish the registered design in their national journals or gazettes.
On the eve of each anniversary of filing of the application, maintenance fees must be payable to ARIPO. Each designated state may request for remittance of maintenance fees due to it. Notification of extension of validity of the registration will be sent to the designated states. Notification of invalidation will also be sent. Designated states are required to furnish (if any) information relating to the registration of licences, assignments and other rights pertaining to design registration.
According to ARIPO Protocol, priority declaration should indicate the filing date, the office and the number of the earlier application(s). A copy of the earlier application(s) should be furnished within three months form the filing date. An English translation of a priority document not in English should be submitted with six months from the filing date.