The Court of Appeal of Tanzania has delivered a significant ruling in HB Worldwide Limited v Godrej Consumer Products Limited (Civil Appeal No. 215 of 2023) [2025] TZCA 480.
It addresses a critical tension in trademark law: the extent to which the Registrar of Trade and Service Marks, by issuing a registration certificate before the expiry of the statutory 60-day appeal period, can effectively frustrate an aggrieved party’s right of appeal.
The judgment clarifies both the limits of judicial intervention in opposition proceedings and the procedural safeguards surrounding rectification of the trademark register.
The facts
HB Worldwide Ltd (HB Worldwide) applied to register the trademark ‘HIT’ in Class 5. The application was opposed by Godrej Consumer Products Ltd (Godrej) under the Trade and Service Marks Act [Cap 326 RE 2002] (TMSA). Before the substantive opposition could be heard, HB Worldwide raised three preliminary objections, that challenged  the propriety of Godrej’s statutory declaration.
The Deputy Registrar upheld the objections and dismissed the opposition. Dissatisfied, Godrej appealed to the High Court (Commercial Division).
Notably, under the TSMA, an aggrieved party has 60 days to appeal against the Registrar’s decision. Notwithstanding this statutory window, the Deputy Registrar issued a certificate of registration in favour of HB Worldwide before the expiry of the appeal period.
On appeal, the High Court reversed the Deputy Registrar’s ruling, which reinstated the opposition proceedings, and declared the registration of ‘HIT’ a nullity. Aggrieved, HB Worldwide appealed to the Court of Appeal.
The issue
The central issue was whether the High Court was justified in nullifying the registration of the trademark in the absence of a specific prayer and without hearing the parties and the Registrar of Trade and Service Marks.
The argument
Appellant’s position (HB Worldwide):
- The High Court acted beyond its jurisdiction by nullifying the registration suo motu, as rectification of the register was not sought in the appeal.
- Nullification without involving the Registrar contravened Section 52(1) TSMA, which guarantees the Registrar a right to be heard in proceedings concerning alteration or rectification of the register.
- The High Court’s order violated the appellant’s constitutional right to be heard and improperly deprived it of vested proprietary rights.
Respondent’s position (Godrej):
- The Registrar erred in registering the trademark before the expiry of the 60-day appeal period, thereby frustrating Godrej’s statutory right of appeal.
- The High Court’s nullification of the registration was a natural consequence of allowing the appeal and necessary to prevent the Registrar’s premature registration from undermining the opposition proceedings.
- Section 54 TSMA grants the High Court powers equivalent to the Registrar’s, including authority to declare a registration of no legal effect.
Held
The Court of Appeal proceeded to quash the entire proceedings before the High Court, on account that the trademark had already been registered. The opposition proceedings before the Registrar were distinct from rectification proceedings before the High Court.
Since the appeal arose solely from opposition proceedings, the question of rectification of the register was not before the High Court. Accordingly, the High Court erred in nullifying the trademark registration without affording the parties a hearing or involving the Registrar.
Analysis
Statutory right of appeal vs registration
The respondent’s arguments were based on the statutory right of appeal. Godrej maintained that, as an aggrieved party, it was entitled to lodge an appeal within 60 days against the Registrar’s decision.
According to the respondent, the High Court’s nullification of HB Worldwide’s registration was a necessary consequence of upholding that right. Had the High Court merely overturned the Deputy Registrar’s decision on the preliminary objections while leaving the registration intact, the reinstated opposition proceedings would have been rendered nugatory, since the trademark had already been issued.
The Court of Appeal rejected this reasoning as it held that nullifying a registered trademark falls within the realm of rectification proceedings, governed by section 52 of the TSMA, which requires the Registrar of Trade and Service Marks to be joined and heard. By nullifying the registration suo motu, the High Court had effectively engaged in rectification without following due process. Instead, the Court directed the parties ‘to take appropriate action in respect of the registered trademark in accordance with the law’.
The effect of this holding, however, is significant. By insulating registration from being overturned in opposition appeals. The Court of Appeal’s reasoning appears to allow the Registrar to effectively curtail the statutory right of appeal.
Once the Registrar issues a certificate of registration within the appeal window, the opposition proceedings are rendered futile – even if an appeal is pending. This outcome sits uneasily with Article 13(6)(a) of the Constitution of the United Republic of Tanzania, which guarantees the right of appeal and the right to be heard.
In practice, the Registrar retains the power to prematurely close that route by registering the mark before the 60-day period lapses. Unless legislative or regulatory safeguards are introduced, the problem is likely to persist.
Limit on judicial intervention
The judgment highlights the procedural distinction between opposition and rectification proceedings. While the High Court can hear appeals against decisions of the Registrar, it cannot nullify a trademark registration absent a formal rectification process.
