The Registrar of the Trade and Service Marks Registry of mainland Tanzania recently made a ruling that departs from the normal trade mark procedural practice and is likely to impact future cases. 

The ruling concerns the trade mark dispute between Godrej Consumer Products Limited and HB Worldwide Limited.

HB Worldwide, the applicant, had filed an application for registration of ‘HIT’ in class 5.  Godrej, the opponent, then filed a Notice of Opposition.  Upon filing of evidence, HB Worldwide raised a preliminary objection on a point of law to the effect that, firstly, Godrej’s Statutory Declaration was not served upon it within the legally prescribed time. On second and third points of objection, HB Worldwide stated that Godrej’s Statutory Declaration in reply was defective for failing to comply with the provisions of the Oaths and Statutory Declarations Act (OSDA), and the Notaries Public and Commissioners for Oath’s Act (NPCOA).

Under its first objection, HB Worldwide relied on Regulation 37 of the Trade and Service Marks Regulations (TMSA Regulations), arguing that the time within which to serve the statutory declaration was 60 days. 

The Registrar agreed with HB Worldwide’s argument, stating that after the filing of evidence, the statutory declaration must be served on an applicant within 60 days, according to Regulation 37. 

60-day deadline misinterpreted

The Registrar’s interpretation is a significant departure from the clear wording and understanding of the meaning of Regulation 37, which provides that: 

‘Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent and within sixty days from the receipt of the duplicate the opponent shall leave with the Registrar such evidence by way of statutory declaration, as he may desire to adduce in support of his opposition and shall deliver to the applicant copies thereof.’

The 60 days referred to in the Regulations pertain to the time within which the opponent may file its evidence, and not the time within which to serve the applicant.

‘Jurat’ also a point of contention

Turning to the second and third points of objection, HB Worldwide’s argument revolved around the jurat of attestation in the statutory declaration, arguing that it was defective and violated provisions of section 10 of OSDA and section 8 of the NPCOA.  The jurat of attestation is the statement appearing at the end or the bottom of the statement of oath, giving the date and place and before whom the oath has been made or taken. 

Section 10 of the OSDA requires the statutory declaration to conform with the prescribed form set out in the Schedule to the Act.  According to this Schedule, the jurat must state whether the deponent is personally known to the attesting officer before whom the oath is made or has been introduced to him or her by a third party who is personally known to the officer.  HB Worldwide argued that the jurat in this case did not state the relationship between the deponent and the attesting officer or, if relevant, the attesting officer and a third party.

Under the third point of objection, HB Worldwide argued that the jurat contravened section 8 of the NPCOA, which requires the name of the attesting officer to be stated within the jurat of attestation.  It argued that as the name of the attesting officer was not in the jurat, it was defective. 

Why Tanzanian laws are not applicable

In turn, Godrej argued that the statutory declaration was made in another country, namely Kenya, and so the Tanzanian laws pertaining to the form of attestation did not apply in the case at hand. 

The Registrar disagreed with this argument and concurred with HB Worldwide’s submission that as long as the statutory declaration was to be used and filed in Tanzania, the Tanzanian laws governing attestation clauses, namely the OSDA and the NPCOA, applied.  In our view, this is also a significant departure from the prevailing practice which previously did not require Statutory Declarations made abroad to comply with OSDA or NPCOA.

The Trade and Service Marks Act (TSMA) requires that where a person makes an oath or swears to an affidavit under the TSMA, he or she may do so by way of a statutory declaration in accordance with the provisions of the Interpretation of Laws Act (ILA).

The ILA defines Statutory Declarations in 3 categories: declarations made in Tanzania, in any Commonwealth country and in any other country.  If made in Tanzania, a declaration is made in accordance with the provisions of OSDA.  If made in any Commonwealth country, it is a declaration made before a justice of peace, notary public or other person having authority under any law in force to take or receive a declaration.  If made in any other country, a declaration is made before a Foreign Service Officer authorised to administer oaths or before any other person whom the Minister specifies as responsible for legal affairs by an Order in the Gazette.

From the definition of a statutory declaration given under the ILA, it is clearly not true that all such declarations must conform and be made in accordance with the provisions of OSDA even if they were made outside of Tanzania.  The fact that Godrej’s statutory declaration was made in Kenya, a Commonwealth country, means that the second definition of statutory declaration under the ILA would apply. 

In that definition, the pertinent phrase is ‘a person having authority under any law in force’. In our view, the laws in force in this case are the laws in Kenya, where the declaration was made.   

Furthermore, in our opinion, a declaration made outside Tanzania need not follow or comply with what is specified under OSDA as long as it complies with the parameters set out under the ILA, which provides the avenue for foreign laws to apply. 

In any case, it would be unreasonable to require all foreign officials exercising legal practice abroad in their respective countries to be conversant with Tanzanian laws on attestation of documents, as HB Worldwide was proposing. 

Furthermore, Regulation 93 of the TSMA Regulations also provides guidance that is important to consider. This Regulation, which does not impose an obligation to comply with OSDA in all cases, provides that statutory declarations may be made:

(a) in Tanzania before any Resident Magistrate, Judge, Justice of the Peace or any person authorized by law to administer an oath for the purpose of a legal proceeding;
(b) in any other country by the Commissioner for Oaths, or Tanzania Ambassador.

Regulation 93 is silent on whether OSDA must apply in making statutory declarations abroad. However, when read together with the provisions of the ILA, it is evident that statutory declarations made in other countries need not abide by OSDA.

Further, Regulation 94 of the TMSA Regulations provides that the Registrar may presume the authenticity of a declaration made outside the country without requiring proof of genuineness.  Our view, therefore, is that the scrutiny that HB Worldwide had applied to Godrej’s statutory declaration was uncalled for and inappropriate.

The right approach for the Registrar to follow

When all these provisions are read together, it is clear that the Registrar should have overruled the second point of the applicant’s objection.  Similarly, the third point of objection ought to have been overruled since neither the OSDA nor the NCOA applies to declarations made outside Tanzania.  Upholding the objections was, in our view, a serious misdirection on the part of the Registrar. The opponent in this matter should consider challenging the ruling.

Compounding the situation is the fact that the Registrar dismissed the objection and awarded HB Worldwide costs of the proceedings.  In our opinion, the dismissal was unlawful.  Even if the statutory declaration in reply was defective, as alleged, the proper remedy would have been to strike it out and not to dismiss the proceedings.  There was no objection as to the legality or validity of Godrej’s statutory declaration in-chief, meaning that technically, the Registrar was still in a position to conduct a hearing and make a substantive ruling.

The only complaint levelled against the opponent’s statutory declaration in-chief was that it was served late, contrary to Regulation 37.  However, even if Regulation 37 should be interpreted as imposing a deadline of 60 days to serve evidence, dismissing the proceedings is not the prescribed remedy. 

In our view, the Registrar should have considered whether HB Worldwide was prejudiced by the late serving of the documents.  If so, the Registrar should have awarded costs to the applicant and not ordered a dismissal.

To conclude, the Registrar’s ruling in this case provides an opportunity to bring the matter to the High Court for consideration and for a judicial opinion on the proper interpretation of the legal provisions on opposition proceedings.  We shall be reporting on future developments in this matter as events unfold.