By Adedotun MOSES
Section 67 of the Trademarks Act, CAP T.3 Laws of the Federation of Nigeria 2004 defines a trademark as follows:
“trade mark means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 43 of this Act:,
In other words, trademarks create a relationship between the goods and proprietor of the goods in the course of business. A good example will be the connection between the logo with a green background and a white inscription with the letters “g-l-o” and Globacom Limited in the course of the telecommunications business. A certification mark as referred to in section 67 refers to a mark stating that the goods have attained a certified standard. A good example of this is having the Standard Organization of Nigeria (S.O.N) mark on a product. This indicates that the product is certified to have attained certain standards and/or of a certain quality.
When a mark is registered, it confers on the marker the exclusivity to use the mark and an infringement occurs where another person not being the proprietor of the mark uses it in a way that is inconsistent of the rights of the proprietor as guaranteed by the Trademarks Act.
Where a person intends to register a trademark, an application is made to the Registrar of Trademarks who considers where the mark is distinctive and does not infringe on any registered mark. Following the consideration, an acceptance is issued pending the publication of the mark in the journal. Following the publication, a 60-day window is given to anyone who has any objection to the registration of the mark and where no objection is received within this period a certificate is issued under the hand of the Registrar duly sealed. The issuance of this certificate signifies registration and not the issuance of the acceptance as is misconceived by a lot of persons.
Having set this down, the main crux of this article and others to follow is the position of the Nigerian law on the infringement of unregistered trademarks. The start point of this consideration is Section 3 of the Trade Marks Act which provides as follows:
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
The first half of the above section appears straight forward when it provides that no person can institute any action for the prevention or recovery of damages in respect of an unregistered trade mark. However, the second half is not at straight forward as the first when it provides as follows:
………………but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
In understanding the interpretation of the above provision, the following cases will be considered:
1. Patkun Industries Limited v. Niger Shoes Manufacturing Company Limited (1988) LPELR-2906 (SC)
2. Dyktrade Limited v Omnia (Nig) LTD (2000) – 977 (SC)
3. Omnia (Nig) LTD v Dyktrade Limited (2007) LPELR – 2641 (SC)
4. Ayman Enterprises Limited v Akuma Industries limited & Ors (2003) LPELR- 683 (SC)
These cases are instructive in this discourse as the position of the Nigerian law on unregistered trademarks may be understood through the judgment of the Learned Justices of the Supreme Court of Nigeria and we commence this analyses by considering the case of Patkun Industries Limited v. Niger shoes manufacturing company limited (Supra)
THE CASE
The Respondents were the Plaintiff before the Federal High Court where they brought an action against the Defendant for the infringement of a registered trademark and passing-off in respect of foot wares marked and described as “Nishmaco”.
THE QUESTION
Following the institution of the suit at the Federal High Court, the Appellant brought a Preliminary Objection to dismiss the suit on the grounds that while the Federal High Court had jurisdiction to hear cases concerning infringement of registered trademarks, it did not have the jurisdiction to hear matters concerning passing-off as this was a tort created by common law. Section 7(1)(c )(ii) of the Federal Revenue Court Act, 1973 and Section 3 of the Trade Marks Act, 1965 came up before their Lordships of the Supreme Court of the Federal Republic of Nigeria for consideration. The said Section 7(1)(c )(ii) provides as follows:
“7. (1) The Federal Revenue Court shall have and exercise jurisdiction in civil causes and matters-
(a) relating to the revenue of the Government of the Federation in which the said Government or any organ thereof or a person suing or being sued on behalf of the said Government is a party;
(b)connected with or pertaining to-
(i) the taxation of companies and of other bodies established or carrying on business in Nigeria and all other persons subject to Federal taxation,
(ii)customs and excise duties,
(iii) banking, foreign exchange, currency or other fiscal measures;
(C)arising from- (i) the operation of the Companies Decree 1968 or any other enactment regulating the operation of companies incorporated under the Companies Decree 1968, (ii) any enactment relating to copyright, patents, designs, trade marks and merchandise marks;
(d) of Admiralty jurisdiction.”
Summarizing the question before their Lordships, they were confronted with the question whether the Federal High Court had the jurisdiction to hear matters of passing-off and whether the Plaintiff ought not to have instituted his action for infringement of its trademark before the Federal High Court and its action for passing-off before the State High Court and whether both actions could be conveniently instituted before the Federal High Court. In resolving this, the Court considered the provisions of Section 3 of the Trade Mark Act and its implication.
THE POSITION
Their Lordships while holding that the Federal High Court had the jurisdiction to hear the matter considered a combined reading of the provisions of Section 3 of the Trade Mark Act and Sections 7(1)(c )(ii) of the Federal Revenue Court Act, 1973. Portions having bearing on this piece are discussed below:
A.G Karibi Whyte J.S.C held as follows:
The section prohibits action in respect of unregistered trade marks but preserves the right of action for passing-off goods as the goods of another. Thus a right of action in respect of passing-off arising from the Trade Mark Act 1965 is preserved by the proviso italicised.
………………………………………………………
Again where a statutory provision is in conflict or differ from common law, the common law gives place to the statute. A statutory right may be conferred in addition to, and not in derogation of a common law right – See National Assistance Board v Wilkinson (1952) 2 Q.8. 648. This is exactly what Section 3 of the Trade Marks Act, 1965 has done. In addition to the right of action conferred on the owner of a registered Trade Mark, the statute has in this section conferred an additional right of action by preserving the right of action of passing-off in respect of such goods. Section 3 of the Trade Marks Act. 1965 proprio vigore thus gives a right of action of passing-off. The right of action is therefore derived from the Trade Marks Act, 1965 and not from the common law. It is not correct to assume that a right of action enacted into a statutory provision is ineffective merely because it has its origin in the common law. This is not so. The common law tort of passing-off in respect of other matters still exists, but in respect of trade marks. In this country the right of action of passing-off relating to the infringement of registered trade marks is statutory and can be found only in section 3 of the Trade Marks Act 1965.
……………………………………………………………………..
It is well settled law that where a common law right has been enacted into statutory provision, it is to the statutory provision so made that resort must be had for such rights and not in the common law.
………………………………………………………………….
This claim of passing-off is different from a claim for passing-off which postulates that the plaintiff is actually marketing some goods and that the defendant is passing-off his own goods as and for the goods marketed by the plaintiff. This latter claim is clearly not founded on any of the enactments stated in Section 7(1)(c)(ii) and will not be within the jurisdiction of the court. – See IML/AIR chartering Nig. Ltd. v. IMNL International Messengers Nig. Ltd. (supra); Samuelson v. Producers Distributing Co. Ltd. (1932)1 Ch. 201.
From the foregoing it would appear his Lordship in interpreting section 3 of the Trade Mark Act is stating that a party cannot maintain an action for the infringement of an unregistered trademark however, where the trademark is unregistered an action may be brought in passing-off. Also, a party may bring an action for the infringement of a registered trademark and in addition to this, bring an action in passing-off as a different claim-head. Furthermore, and importantly, passing-off as it relates to trademarks is covered by the trademark Act strictly and not common law.
A.Nnamani J.S.C held as follows:
These two provisions when read together provide, in my view, the same answer as the Court of Appeal, gave in this matter. The Revenue Court Act states, a civil cause arising from an enactment relating to Trade Marks. Clearly the Trade Marks Act 1965 is an enactment relating to Trade Marks. The Act makes provision for actions for Infringement of Registered Trade Marks. It bars actions in respect of Unregistered Trade Marks. More significantly, it preserves in the proviso to Section 3 of the Act set down above, a right of action against any person for passing-off. It is necessary to observe that the words of the proviso are Nothing in this Act not Nothing in this Section for, if it were the latter. it would have been argued that the right of action on passing-off goods so granted would be limited to matters arising from unregistered trade marks. In the way it is worded, it is my view that there is preserved a right of action in passing-off of goods whether what is involved is an unregistered or registered Trade Mark. It seems to me that from the wording of the proviso to Section 3 read together with Section 7(1)(c)(ii) of Act No. 13 of 1973, a Statutory right of action on passing-off is provided. What is involved, at least as it relates to Trade Marks, is not the Common Law action of passing-off, but a statutorily guaranteed right of action. This to my mind is sufficient to dispose of the matter of jurisdiction. For it thus falls within Section 7(1)(c)(ii) of Act No. 13 of 1973.
Considering the underlined portions above, it will appear that his Lordship is stating that while a party shall not have audience in court in respect of an infringement of an unregistered trademark, it will have the ears of the court where the claim involves passing-off in respect of a registered or unregistered trademark.
M.L Uwais J.S.C held as follows:
It is not in doubt that the Federal High Court has jurisdiction to hear cases of alleged infringement of registered trade marks by virtue of the provisions of Section 3 of the 1965 Act read together with the provisions of Section 7(1)(c)(ii) of the Federal Revenue Court Act, 1973. It is also not in dispute that there cannot be an action for the infringement of unregistered trade mark by virtue of the provisions of Section 3 of the 1965 Act. However, where the infringement of the unregistered trade mark leads to the tort of passing-off, the 1965 Act, allows an action to be brought in respect of the passing-off.
The flaw in the argument on behalf of the appellant that the Federal High Court lacks jurisdiction in passing-off actions can be seen in the fact that first, Section 7(1)(c)(ii) of the 1973 Act which vests jurisdiction in the Federal High Court, does not distinguish between the infringement of registered trade mark and unregistered trade mark. It simply talks of “enactment on trade marks.” So that the infringement of registered trade mark and unregistered trade mark could have been the subject of suit in the Federal High Court. But the limitation provided by the 1965 Act is that no action for the infringement of unregistered trade mark can be brought except an action for passing-off which stems from such infringement.
His Lordship states the position in other words when he sets forth that a party aggrieved by an infringement of an unregistered trade mark has a remedy in passing-off not an infringement of the unregistered trademark
A.G.O Agbaje J.S.C held as follows:
It is to be noted that the plaintiff’s action is not grounded or founded in the common law tort of passing off simpliciter. Passing off of the plaintiffs goods is only referred to as an incidence of the infringement of the plaintiff’s registered trade mark complained of. So it is not correct as contended for by counsel for the 2nd defendant that the plaintiff’s claims are based on the common law passing off action. The expression “pass off” is an ordinary expression. And when it is said that something is passed off as something it means no more than that something is falsely represented as something. The indications in the plaintiff’s statement of claim, are clearly to the effect that it is using the expression “pass off” in its ordinary meaning not in any technical sense.
The plaintiff’s claims in my judgment relate exclusively to the infringement of its registered trade mark. The claims evidently arise from an enactment relating to trade marks to wit Trade Marks Act, 1965. So the Federal High Court has jurisdiction, in my judgment, to try the action under Section 7(1)(c)(ii) of the Act of 1973. We are here concerned “with a registered trade mark, so Section 3 of the Trade Marks Act, 1965 which I have quoted earlier on in this judgment cannot be invoked against the plaintiff’s action but rather in favour of it.
The learned Justice here will appear to state that passing-off can be used in a simple sense or a technical sense. In a simple sense, it relates to presenting a thing as another but in its technical sense will require proof showing all the elements in the tort of passing-off even though the tort is provided for under statute.
A.B Wali J.S.C held as follows:
Section 3 of the Trade Marks Act, 1965 provides that-
“No person shall be entitled to institute any proceeding to prevent, or to recover damages for infringement of an unregistered trade mark, but nothing in this Act shall be taken to affect rights of action against any person for passing off goods of another person or remedies in respect thereof.”
The true intendment and purpose of the Section has been neatly summarised in the Respondent’s brief as follows –
(a) No person shall sue for infringement of an unregistered trade mark.
(b) Any person can sue for passing off of an unregistered trade mark.
(c) Any person can sue for infringement and passing off for a registered trade mark.
The position becomes clearer when one considers points (a) – (c) as laid out by his Lordship above however, the confusion begins to unfold when later cases are considered. In the follow-up article to this, the cases of Dyktrade Limited v Omnia (Nig) LTD (2000) – 977 (SC) and Omnia (Nig) LTD v Dyktrade Limited (2007) LPELR – 2641 (SC) will be considered.
