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Advertiser banned from using ‘JP Decaux’ in trademark suit

Monday March 08 2021
jp pic
By Bernard James

Dar es Salaam. The High Court in Dar es Salaam has permanently banned an outdoor advertising company, JP Decaux Tanzania Limited, from trading its name over infringement of trade mark.

The Court has sided with the leading outdoor advertisers, JC Decaux SA and JC Decaux Tanzania Limited, that the name “JP Decaux” was deceptively similar to theirs and was likely to cause confusion.

The court has also ordered JP Decaux Tanzania Limited to destruct all its printed materials for outdoor advertising whose use infringe “JC Decaux” SA’s trade mark.

“The issue of similarity of JC Decaux SA to JP Decaux Tanzania Limited is obvious. The difference between the names JC Decaux and JP Decaux is only one letter. They all deal in outdoor advertising. This makes the two names confusingly similar,” said Judge Barke Phillip.

JC Decaux SA is a family owned company established in France by Jean-Claude Decaux in 1964. The company and all its subsidiaries that form JC Decaux Group, operate outdoor advertising in 4,033 cities in more than 80 countries. In Tanzania, it conducts its operations through JC Decaux Tanzania Limited.


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Root of dispute

JC Decaux SA and JC Decaux Tanzania Limited bought a suit against JP Decaux Tanzania Limited in 2018, accusing the latter of infringing its well-known trade mark “JC Decaux” by calling itself and trading as “JP Decaux Tanzania Limited”.

The two complainants argued that the name JP Decaux Tanzania Limited was similar to its trade mark “JC Decaux” because there was only a difference of one letter.

They alleged that the two names—JC Decaux and JP Decaux- are confusingly similar. It was further contention of the plaintiffs that they have been globally using the name JC Decaux since 1964 and registered as its trade mark in 135 countries.


JP Decaux defence

Advocate who represented JP Decaux, Frank Mwalongo denied to have infringed JC Decaux SA’s trade mark, arguing that JP Decaux was incorporated and registered in Tanzania in 2014 prior to the registration JC Decaux Tanzania Limited’s trade mark in 2016.


Court decides

In his recent decision, Justice Phillip said JP Decaux Tanzania Limited has failed to give sufficient explanation why he decided to use the name “JP Decaux”.

“In my considered opinion, legally, it is not correct for a person to register a trade mark confusingly similar to a widely used trade mark, with well-established goodwill in its business while aware of the existence of the same, simply because that trade mark is not registered in their country,” said the judge.

The court declined to agree with Mr Mwalongo that the similarity of his client’s name to JC Decaux SA’s trade mark was just a coincidence.

“In my opinion, the evidence adduced indicates that the same was done by design for a purpose of obtaining some advantage over the goodwill established by the first plaintiff in outdoor advertising business,” said the judge.

JP Decaux Tanzania Limited has also been ordered to pay the plaintiff Sh3 million and Sh20 million in punitive and general damages respectively.

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