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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

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