Passing Off

As precious as the UI logo is to the University of Ibadan, if it’s not registered another school can use it. However, UI can still Sue and this time around not under trademark but ‘passing off’.

 

Due to the fact that a lot of people don’t engage in trademark registration, an action in passing off will succeed. Recently we had a case where someone image was used on Jiji website, his image was not registered but an action for passing off would be successful.

 

We would be talking about passing off today.

 

Passing Off applies to both tangible and intellectual property.

 

 

Introduction

Passing off basically involves a person portraying his trade or his products as that of another. Usually, the basis for this representation is the fact that the other’s trade has built up goodwill  and reputation over the years which is associated with either his trade name or trademark and the  defendant sees it as a basis to make profit for himself by misleading the public and causing confusion

It’s the most common situation with fake products. We’ve all seen fakes of popular brands and products. The likes of adadis,etc.

What the makers of the product do is imitate and try to pass off their own product as that of the popular company. Sometimes, they don’t make everything about their business identical with the business of the popular company, yes. But it is unhealthy competition to allow acts that mislead the public. Little differences that are not easily noticed would count as passing off.

One essential thing about passing off is that the defendant tries to benefit from the *goodwill* of the plaintiff. So where there’s no goodwill or known reputation associated with a company or person, he or she can’t sue for passing off.

These people try to benefit from the good names of popular companies and eventually, they affect these popular companies. Not just in the reduced sales, these companies have to spend more trying to make known the difference between original and fake. Thus, there’s damage to the original company.

What then is goodwill?

Goodwill is defined as the part of business value over and above the value of identifiable business assets. So basically it is an intangible asset. It’s closely associated with reputation and something that the business is known for.

We know Mary Kay products are good and don’t cause skin reactions. Nike shoes are durable. These are goodwill and reputation of the business

 

Now, when a person starts a trade, he has a trade name, signs, marks, slogans, etc which collectively form his Trademark. Trademark is a form of intellectual property right. The owner of the Trademark thus has exclusive rights over the Trademark and can exclude others from using his Trademark unless with a license.

 

So first and foremost, where a person has a Trademark, no other person is allowed to use any sign, slogan, name or mark that makes up his Trademark or that is similar or identical to it under the various Trademark laws.

 

However, apart from the protection granted by Trademark laws, the owner can also sue the infringer for the tort of passing off.

 

But there’s a thin line between passing off and trademark infringement.

In passing off, there’s an emphasis on the damage to the goodwill of a person or business.

And it is not necessary that the Trademark is registered. Under the Trademark laws, if the Trademark is not registered, a person can not bring an action. But a person with an unregistered Trademark has a remedy with passing off.

So it means that in trademark infringement, the defendant is not necessarily interested in benefitting from the goodwill of the plaintiff’s company or product.

 

The requirements

the requirements are Goodwill, misrepresentation and damage. In a more expanded form, there are certain requirements before one can bring an action for passing off. They include

 

1) That there was a misrepresentation

 

2) That the misrepresentation was made by a trader in the course of a trade, usually the same trade.

 

3)  That the misrepresentation was made to prospective customers or ultimate consumers of goods or services supplied by him

 

4) That it was calculated to injure the business or goodwill of another trader

 

5) Which causes damage to the business or goodwill of that other trader or is likely to do

 

 

Now, let’s consider a case.

 

Topshop is a well known fashion retailer. Rihanna is a famous pop star. In March 2012 Topshop started selling a t-shirt with an image of Rihanna on it. The image was a photograph taken by an independent photographer. Topshop had a licence from the photographer but no licence from Rihanna. Rihanna contends that the sale of this t-shirt without her permission infringes her rights. Topshop does not agree.

Basically, first thing is that you don’t have a right per se to your picture. The photographer does (he’s the creator of the valuable form of creative work)

So, running to the conclusion, Rihanna was only able to succeed in an action against the sellers of that cloth cos she established that “the use of that picture passes across an idea that she endorsed the cloth”

 

She did this by showing that

  1. She was as much a fashion icon as a music icon
  2. She represents a brand (with lots of goodwill) within the fashion industry
  3. Apparently, she’s done endorsements of clothing before.
  4. Thus, in the instant case, the use of her picture will definitely connote to the mind of members of the public that she’s endorsed this particular cloth.
  5. Damage to her (her goodwill), not cos the cloth is fake, but cos she’s gaining nothing from the sellers.

The damage will also include loss of control over her reputation in the fashion sphere.

Lastly, lifting directly – the judge noted that :

 

“_a substantial portion of those considering the product will be induced to think it is a garment authorised by the artist. The persons who do this will be the Rihanna fans. They will recognise or think they recognise the particular image of Rihanna, not simply as a picture of the artist, but as a particular picture of her associated with a particular context, the recent Talk That Talk album. For those persons the idea that it is authorised will be part of what motivates them to buy the product. I am quite satisfied that many fans of Rihanna regard her endorsement as important. She is their style icon. Many will buy a product because they think she has approved of it. Others will wish to buy it because of the value of the perceived authorisation itself. In both cases they will have been deceived .”

 

Forms of Passing off

There are basically three forms of passing off

  1. The classical passing off (already discussed earlier)
  2. Extended Passing-off
  3. Reverse / Inverse Passing-off

 

In relation to this, can A who produces Zobo sue B for passing off if B is producing Kunu but labels it as Zobo?

 

Extended passing-off is that unique form of passing-off that protects the property right of a trader in his goodwill and it would appear that each of the plaintiffs’ is entitled to bring an action to protect such property right, so far as thereby affected.” It usually involves more than one plaintiff. Here, the defendant’s misrepresentation is as to the particular quality of a product or services and usually causes harm to the plaintiff’s goodwill.

The material element is the representation.

 

There’s the popular case of Avocaat. Etc..

But, let’s take the Champagne case, this is a type of wine that has some peculiar characteristics in terms of taste, fruit used and sparkling look. Now, there are a thousand and one manufacturers of Champagne..

Where someone produces a different kind of wine, different fruits, different taste, different look,  and then labels it Champagne, the manufacturers of Champagne, can sue him, because people will get to buy it and taste it and its presence in the market will reduce the “value of the word Champagne”.

 

You may ask… What’s special about this passing off? Is it just that it involves more than one plaintiff?

 

We all agree that passing-off involves B passing off his goods as that of A.

This extended passing-off only widens the Umbrella of protection for business owners.

 

It connotes that even where B does not actually make the public believe that his goods are that of A but does something which involves the use of A’s get-up or name or something and which will invariably cause damage to A,  B will be liable to A.

 

In the Zobo-Kunu controversy.

 

The person labelling Kunu as Zobo will prolly put on the label the active ingredients of Kunu as the ingredients of the content of the bottle he is selling,  Buh because the name “Zobo” which he labels on his product has acquired a secondary meaning in the minds of people, and is no longer Just any other name in the dictionary,  he will be causing damage to the real producers of the real Zobo

 

 

 

Reverse passing-off, like the name suggests is where the B is not trying to pass off his goods as A’s but is trying to pass off A’s goods as his. Basically, this can be seen as taking credit for A’s hard work. Same requirements of goodwill, misrepresentation and damage. Just that the table is turned.

 

In the John Roberts Powers School Inc Case, it was held that in reverse passing off, the defendant markets the plaintiffs goods as being the defendant’s goods. In this case the defendant had misrepresented to her students and customers that the study notes for self-improvement and social development of the plaintiff were the product of her own efforts. Injunction was granted by the Courts

In the Samuelson Case, the plaintiff was the author under the stage name Lawrie Wyle of a humorous sketch titled “The New Car” which had been performed successfully before the King and Queen at a Royal Command performance and had attracted favourable reviews. The defendants retained the principle comedian from the sketch to write and perform a film version which emerged as totally different from the original. The defendants used misleading quotations from newspaper reviews of the command performance to advertise their film as if it was the sketch which had pleased the King and Queen.

The Judge holding that it was passing-off remarked of their action thus:

 

“That seems to me to amount to a notice or invitation; come and see our film and when you have seen our film you will have seen the sketch which has been spoken of in the manner which is stated in the passages which appear in the advertisement”

Whenever B sells A’s goods as his, then we have reverse passing-off.

The remedies of passing-off

 

  1. Damages
  2. An account for profit.
  3. An order for Delivery – up of the goods
  4. An injunction to prevent further acts
  5. An enquiry to establish the plaintiff’s loss which I presume will lead back to the damages

 

 

Defences include

 

Use of a registered trademark

Use of individual’s own name

Plaintiff’s own goods – the goods belong to the plaintiff and the name is also that of the plaintiff. In other words, there’s no imitation or difference.

Absence of goodwill – where there’s no goodwill to be damaged, it could be a defence

 

Where a photographer gets paid for his pictures he transfers the ownership of the copyright to the person he sells it to or the person who pays for his service except there’s an agreement whose terns does not include ownership of the Intellectual property right.

 

 

 

Why intellectual property?

Intellectual Property and Technology Law Club is an organization whose establishment seeks to educate and encourage students to learn how intellectual property law impacts innovation, technology and culture. Issues to be discussed in the club include internet and technology issues, cybersecurity and digital privacy issues, electronic contracts entertainment issues, social media and the law, and proprietary interests in intellectual property reform.

In simple terms, the club aims at exploring Intellectual Property law not as a course but as a tool for a 21st-century lawyer in this era of technology.

Why intellectual property?

– First, the progress and well-being of humanity rests on its capacity to create and invent new works in the areas of technology and culture.

As long as man exists we’d continue to create and invent new works.

 

– Second, the legal protection of new creations encourages the commitment of additional resources for further innovation.

When one is assured that his/her work as an author won’t be infringed upon, such person would like to do more, but where the reverse is the case, one would surely think twice before such person creates any work.

– Third, the promotion and protection of intellectual property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being,

 

That is why countries like china, japan and USA don’t joke with their intellectual property system. It is commonly said that china is quick to replicate every invention and patent it to prevent competitionBut smart countries are quick to protect their inventions and if as young minds we are committed to this we can change the face of IP in nigeria

 

 

For various administrative and historical reasons, intellectual property is usually dealt with under the following main headings:

1) Literary, artistic and scientific works e.g. books. Protection of this property is governed by laws concerning Copyright like the Nigeria copyright act (Amended) 2004.

2) Performances, broadcasts e.g. concerts. Protection of this property is governed by laws concerning Copyright’s Related Rights.

3) Inventions e.g. a new form of jet engine. Protection of inventions is covered by laws concerning Patents like the Design and Patent Act 1970now 1990

4) Industrial designs e.g. the shape of a soft drinks bottle. Industrial Designs may be protected by its own specialized laws, or those of Industrial Property or Copyright. Design and Patent Act 1990

5) Trademarks, service marks and commercial names and designations e.g. logos or names for a product with unique geographical origin, such as Champagne. Protection is normally available under various laws like the Nigeria Trademark Act 1965.

6) Protection against unfair competition. E.g. false claims against a competitor or imitating a competitor with a view to deceive the customer. This is related to the economic tort of passing off which we have discussed already in previous sessions.

 

 

Common to all of the areas are two principles:

  • The creators of intellectual property can acquire rights as a result of their work.
  • The rights to that work may be assigned or licensed to others

 

 

 

IP law isn’t a distraction from other laws but a compliment.

*200level* We are going to observe a lot of e-contracts and how it affects the intellectual property of the party involved. For example, there’s what is known as transfer of copyright, if as a company I want to run advertisements on Facebook instead of going to the artiste to pay for the usage of his song in my advert I can easily pay Facebook who in return pays the royalty to the artist. In this situation, there’s a contract between me and the artiste with facebook acting as the agent.

We shall also explore trade secrets and unfair competition  under restraint of trade(contract II)

*300 level* knowledge of intellectual property law can help you understand passing off under law of torts, instead of us explaining using old cases we discuss trending stories which we can easily relate to.

 

*400 level* under IP law we have international treaties which bind various countries, this is where conflict of laws comes in as some treaties may be contrary to national law. If you want to widen your scope beyond national law, conflict of law is important and a club where we have a lot of international treaties it would be easy for us to relate.

 

*500level company law*: every company have both tangible and intangible assets (where intellectual property comes in) you should know at what point to have your company registered under CAC, trademark registration and domain name registration. Knowledge of  remedies is important incase of infringement.

 

Trademark Registration

Trademark is a sign that individualizes the goods of a given enterprise and distinguishes it from other goods.

Goods in this sense include a song title as seen in the joromi case discussed in an earlier session; even a name and image (in some countries) can be registered as a trademark. Moving to sports, some players/coaches names are registered as a trade mark when they join a club if someone should use such player name for an advert or anything that attracts pecuniary profit he’d pay to the club.

Most fashion designers have their logo placed on their shirts after registration… Using such logo without permission is an infringement on the fashion designer trademark.

Ever wondered why Davido used fia instead of fire… Looking at it from the legal perspective if such is registered he is going to generate wealth from the commercial use of that title. He had trademark issues with a fashion designer for his song title: ‘if’ (can’t remember the fact). Understanding trademark is very important.

 

Trademarks are covered by Nigerian Trademark Act 1990. Do you wish to find out how to register a trademark in Nigeria?

You can start the process in two ways.

Guide 1: Write an application by yourself to Trademarks, Patents and Designs Registry, Commercial Law Department of Federal Ministry of Industry.

All trademarks and patents are registered at Trademarks, Patents and Designs Registry, Commercial Law Department of Federal Ministry of Industry.

But before writing a letter, do a search to make sure that someone does not have a similar trademark. That you do not see such trademark on the market does not mean someone has not done it before.

So, you will do a proper search to make sure that no one has done similar mark. Your application letter must contain your full names, passport photographs, and verifiable address even if you are not based in Nigeria.

Also, you need to attach the sample of your trademark, description of relevant information, diagrams, and design. Define the claim or protection (in details) you wish to lay on the trademark. You use this method to register a trademark in Nigeria by yourself.

Guide 2: Get a lawyer to do it for you. You can instruct a local agent/ lawyer to file the application for you providing the requirements mentioned earlier and a signed power of attorney/Authorization of agent to be completed in favour of your lawyer as the enabling instrument to act on your behalf.

He or she will file and follow it up. The agent will be responsible for processing the registration and defending any opposition if it arises, provides the address of local services of documents, and maintains renewal of the trademarks. So, you can register a trademark in Nigeria through a lawyer/agent.

Guide 3: Online application can be used to achieve the same purpose.

It was introduced by the registry to make applications hassle free. You can do this on

www.ipo.cldng.com/a_login.aspx.

After registration, you will get automatic acknowledgment from them. All necessary payments can be made through quickteller.com.

Remember that your local agent can also do it for you online as there is a provision for it on their website. If applications are to be filed online, soft copies of the documents mentioned above are to be provided in jpeg format at a minimum of 1200 dpi.

After the online application, the Registry reviews the application to see if it meets the requirements for registration. This is another way to register a trademark in Nigeria.

After the filing of an application for registration and approval, the court registrar issues an acknowledgment to you (or your agent).

A search will be done to ascertain if a similar mark had been filed or registered earlier by the registry. The registrar will also check if the trademark is worthy to be registered.

If it is okay, you will be notified by a letter of acceptance. When a trademark is submitted, it is advertised in Nigerian Trademark Journal for two months to allow people to oppose or object its registration. If someone opposes it, your agent will be informed to come and defend it.

But if no one objects it, the registrar will issue a certificate of registration to you (or through your agent depending on how you intend to process it).

Note that all goods do not have trademarks covering it, but the disadvantage is that one will not be able to sue someone else or any company he feels is using his trademark because it is not registered in the first place.

The whole process takes roughly 18 – 24 months and a total cost is about N50000 to N60000 to register a trademark in Nigeria.

 

Conclusion

In conclusion, to register trademark in Nigeria has the many benefits in that the registry protects your trademarks, discourages others from using similar marks without your license, notifies the general public about your ownership of the mark (thereby popularizing your trademark), and file a case against at Federal High Court against any company or individual in the event of infringement on the trademark.

Duration of trademarks is 7 years from filling date and renewal for further periods of 14 years.

Therefore, all Nigerian inventors are advised in their best interests to register their trademarks because of the attendant benefits.

 

Trademark

 

 

Trademarks are marks used or proposed to be used with respect to goods or services for the purpose of indicating or showing a connection in the course of trade between the goods and the provider. See Section 67 of the Trademarks Act

 

It tends to allow providers of goods and services to benefit from the goodwill or reputation they have built up over time in the course of the business.

 

Contrarily, trademarks might also be a warning sign for consumers who have had a negative experience with a product bearing the mark

 

For instance, if you bought an underwear from a manufacturing company and it started to get worn out few days after the purchase or you contracted an infection through it, you wouldn’t want to patronise such company’s products again

 

Trademarks aim at achieving two major objectives:

  • to safeguard the rights of a proprietor/owner of the trademark in the business reputation
  • to protect the public interest against deception and confusion in the marketplace

 

A trademark must be a mark, which may include a brand, heading, slogan (e.g. Peak, it’s in you), label, name (e.g. Dangote), signature, letter, numeral, or any combination thereof

 

Importantly, registration is vital to trademark protection, and such registration may be based on the fact that the mark has been used (prior use) or on the futuristic ground ( the mark is to be used in the future)

 

It’s central to the use of a trademark that the connection which a mark shows the owner of the mark and the goods must be “in the course of trade”.

 

So, if a mark only indicates that Mr A owns the mark (mere ownership) but the ownership is not related to business or trade purpose, such mark dies not qualify as a trademark

 

NOTE: There are different classes under which products can be registered. See the cases of Louis vuitton v. Louis Vuitton Dak, Guess v. Gucci

 

Basically, before a trademark can registered due procedure has to be followed to determine if the trademark is available. One may ask, are there any words that are un-trademarkable? Definitely.there are quite a number of them: Deceptive marks, immoral marks, generic terms just to name a few.

 

NOTE: In highlighting the similarly and difference between the tort of Passing off and one’s rights to a trademark, the Tort of passing off is applicable when the trademark is unregistered

 

So When one has gotten his/her trademark ready, such person need persons to get it registered as registration is a prerequisite for instituting an infringement action. Though registration is not mandatory, it helps to establish one’s right in the mark.

 

So if it is unregistered, can one still enforce?

It is provided in section 3 of the Nigerian Trademark Act;

“No person shall be entitled to institute any proceedings to prevent or recover damages for the infringement of an unregistered Trademark but nothing in this act shall be taken to affect right of action  against any person for passing off goods as the goods of another person or the remedies in respect thereof.”

 

There is still a protection available and in the case of an infringement, the Tort of passing off can be applicable. Passing off is a common rwhich can be used to enforce  unregistered trademark rights. The Tort of passing off protects the good will of a trader from misrepresentation.

 

A trademark infringement might fail but a passing off claim will succeed.

 

The following remedies are available in the application of the tort of passing off;

Damages or an account of the defendant’s profit

An order for the delivery up or the destruction of the products

An injunction to prevent further actions that amount to passing off.

Interim injunction if you need to act quickly

An enquiry to establish loss.

 

Moving further, under the Trademarks Act, registration of a mark could either be under PART A or PART B.  See (Section 9 &10 Trademarks Act)

 

Registrable marks under Part A include:

  • name of a company, individual or firm (e.g. Dangote for sugar and cement, Kellogs for breakfast cereals, Toyota);
  • the signature of an applicant;
  • invented words ( new and freshly coined e.g. tachytype, parlograph, and also fictitious character names e.g. Robin Hood);
  • words with no direct reference to character or quality of goods or signification of a geographical name (e.g. a cigarette called CHESTERFIELD was registered because it was not produced in Chesterfield in England);and
  • any other distinctive mark.

 

Under Part B, we have marks which are not “sufficiently” distinctive under Part A but are capable of being distinctive.

The relevant test here is that of distinctiveness

 

Certain marks cannot be registered under the Act, and they are:

  • deceptive or scandalous marks ( or the use of a religious term e.g. Halleluyah);
  • names of chemical substances (e.g. sulphur, magnesium);
  • the Nigerian coat of arms or other emblem of authority;
  • words like patent, copyright, red cross; and
  • dentical or resembling marks (e.g Seven Up and Bubble Up, casorina and castoria)

NOTE: It is just an example, as ‘seven up’ and ‘bubble up’ can be mistaken.

 

In conclusion, one may wonder if international corporations have to register in each country. There exists WIPO, which stands for World Intellectual Property Organization. It is one of the specialised agencies of the United Nations. Companies like Nike, coca-cola, Heineken are registered on an international level and this agency helps protect such registered concept on an international level.

This was prepared by Annie Oti and edited by Alade Michael

Introduction To Copyright and Plagiarism

This is an introduction to the concepts. They are similar and it involves robbery. Robbery of ideas without prior permission. But there’s a slight distinction… Where the issue of robbery of ideas comes in is in cases of Copyright infringement.

Copyright in itself is not per se similar to plagiarism.

Copyright law is in essence concerned with the right of preventing the copying of material existing in the field of literature, arts and the likes. Its object is to protect the owner who has by law registered the work under his name from the unlawful reproduction of his material.

Copyright law has to do with the unlawful reproduction of a person’s materials which have been registered and copyrighted by legal authority.

For a claim to lie against someone in a case of copyright infringement, the copyrighted work must be the source from which the infringing work was derived. So for example, where two precisely similar works are produced simultaneously, the one who gets the first copyright cannot without proof that the other copied his work, claim against that other simply because he got first copyright.

It is just saying that for you to sue someone for copyright infringement, you must be able to prove that the person copied your particular work that has a copyright.

 

Under S.1 of the copyright law of Nigeria, for a work to be eligible for copyright, sufficient effort must have been put into the work to give it an original character and the work would have to have been fixed in a definite medium of expression from which it can be reproduced.

 

It’s not compulsory for a work to be registered at Nigeria Copyright Commission. However, it’s advisable.

 

This brings us to copyright infringement. According to S.15 (1) of the CR. Act, copyright is infringed by a person who without license or authorization from the copyright owner does or causes the doing of an act controlled by the copyright… which infringes on the copyright of the owner.

 

Copyright infringement is a criminal and civil offense under the Act and is punishable by law.

 

Plagiarism, on the other hand, is a concept rooted in ethics and involves passing off the intellectual property of another as one’s own. There’s been a lot of argument on plagiarism in Nigeria especially with the incident of Buhari’s speech that sorta plagiarized someone’s lines.

Plagiarism so far has been described as an academic crime with next to no legal liability in Nigeria. It is the use of another person’s language, thoughts and phrases without informing the author concerned.

 

For example, I just plagiarized the definition because recognition was not given to the source from which I got the definition.