A Trademark when registered grants to the proprietor exclusive rights to use his trademark in relation to the goods and services it was registered for and also institute an action in Court for the infringement made on such trademark or to prevent the unauthorized use of the mark (s). But in the case of an unregistered trademark, the owner can institute an action for passing off made on his mark.
Trademark infringement is the unauthorized and illegal use of a trademark without the consent of the proprietor of the mark, whereby it is used to cause confusion between the original mark and the mark used.
Section 5(1) of the Trademark Act 1967 provides for the exclusive right of a proprietor to use the trademark in respect of the goods it was registered for. Section 5(2) states that “without prejudice to the generality of the right to use a trademark, the marks shall be deemed to be infringed by any person who not being the proprietor of the trademark, uses a mark identical to it or so nearly resembling it as it is likely to deceive or cause confusion in cause of trade in relation to any goods in respect of which it was registered”.
For an action for infringement to succeed in court, the unauthorised use of the mark must be one likely to cause confusion in the minds of the consumers.
Section 9 of the Trademark Act provides for distinctiveness required for registration of a trademark. By that section, in order for a trademark to be registrable under part A of the Act, it must contain at least one of the following particulars:
- It must contain the name of a company, firm, individual presented in a special manner
- The signature of the applicant of registration or some predecessor in the business
- An invented word or words
- A word that has no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or surname and
- Any other distinctive mark
Following the provision of Section 5 of the Act, an infringement of a registered trademark cannot be maintained unless the court finds that the defendant is engaged in the use of the mark identical with the registered trademark.
There are factors to be considered by the court before the action can succeed, which include the followings:
- The marks do not need to be identical before infringement can occur, rather there must be a similarity so great as to create a likelihood of confusion to a reasonable man.
- The court will consider how widely known and recognized the plaintiff’s infringed mark is? And what strength does the plaintiff’s mark carry?
- There must be evidence that the defendants mark caused confusion
- The location of the business of the plaintiff and defendant and how careful consumers might be when considering both businesses. Is a consumer in the marketplace likely to be confused by the similar marks?
- The court will consider the commercial value of the infringed mark and how it is likely to affect the brand of the plaintiff.
- The court will also consider the intention of the defendant because the defendant could intentionally copy the plaintiff’s mark to divert their business. It will consider if the defendant was aware of the mark before infringing on it.
This test was enunciated in the Supreme Court Case of Ferodo Limited v Ibeto Industries Limited 2004 LPELR where the plaintiff, an English company are the manufacturers of FERODO brand of brake linings for motor vehicles and it is sold in cardboard packages. They claimed in their suit that they had been using the marketing in the product in Nigeria for 10 years preceding the suit. The defendant is a Nigerian company that manufactures brake lines in the brand of UNION SUPA brake lines. The claim by the plaintiff was that the packaging of the defendant’s product was so similar to theirs, thereby constituting an infringement to their registered trademark.
It was observed that the defendant’s cardboard package was painted in red, black and white combination so closely resembling that of FERODO cardboard packaging. The defendants in their defence stated that their design box was not distinctive to the plaintiff alone but that the colour combination was traditional to the trade of brake linings. They also denied ever using the plaintiff’s Mark to pass off their product.
The trial judge held that the defendants UNION SUPA was far off the plaintiffs FERODO and does not in any way resemble the plaintiff’s mark and thereby found that there was no infringement. The matter was taken to the Court of Appeal, which also affirmed the decision of the trial judge stating that it is wrong to take two marks side by side to determine whether they are identical but rather the true test is whether a person who sees it or has seen the mark is likely to confuse it with an existing trademark as to confuse and create the impression that the proposed trademark is same as the existing one.
The Appellant still not satisfied with the judgement, further appealed to the Supreme Court where it was held in a leading judgment by Justice Dahiru Musdapher (J.S.C) that the appellants had not discharged the burden of proof placed on them by procedural law after dealing with the exhibits brought forward, the appeal lacked merits and that the appellant cannot succeed because there are clear differences between the two trademarks. The Supreme Court subsequently dismissed the appeal.
Steps to enforce trademark rights
Where a trademark has been infringed upon, the owner has several options available to enforce his rights. According to the provision of the Evidence Act, the burden of proof lies on the plaintiff to prove that the trademark of the defendant is an infringement of its own. One of the processes of registering a trademark is that it must be published in the journal so that opposition to the registration of a mark similar to it can be raised timeously, within 2 months after the publication.
Enforcement of Trademark rights
The owner of a trademark who wishes to enforce its rights can explore the following options, but must do so timeously and aggressively:
- Firstly, the proprietor of the mark can file for opposition within 60 days of the publication in the trademark journal against the registration of a similar or identical mark, which is likely to cause confusion. This can be done by filing a Notice of Opposition and statutory declaration; the responding party will file a counter statement and the matter will be determined at a hearing before the Registrar.
- Where the owner of a mark is aware of a likely infringement on its mark, the owner can apply to the court for a grant of search and seize orders. It gives the owner the right to raid the premises of the infringer without notice to seize all infringing goods found. The owner can collaborate with law enforcement agencies, NAFDAC or Nigerian Customs.
- The proprietor of a mark can enforce its rights where it is made aware of a possible infringement to employ the services of private investigators to conduct an investigation on the premises of the infringer on whether they have stopped using the mark or is still passing off its mark.
- The owner can also enforce its rights by writing a cease and desist letter to the infringer, but to make it more effective the letter can be backed by a valid court order.
- The owner can also enforce its trademark by alerting the general public and consumers through the newspaper and various media forums, on who the real owners of the trademark are and how to recognise their genuine products.
Remedies, which a court may be granted where a trademark has been infringed upon
The Trademark Act LFN 1990 grants a proprietor a civil right of action to sue for any infringement made on its mark. The court that has the right to adjudicate on infringement related matters is the Federal High Court of Nigeria.
The following remedies may be sought by and granted to the Proprietor whose trademark is infringed:
- The owner can seek injunctive reliefs restraining the infringement and unauthorised use or sale of the trademarked items. Before this remedy is granted the court will consider the following:
- The court will decide whether the plaintiff can succeed based on the merit of the case.
- The court will consider whether the plaintiff has suffered irreparable damage
- The court will consider how the injunction will affect both the plaintiff and the defendant.
- The court will also consider if it is in the interest of the public to grant the injunction.
- The proprietor can seek for damages for compensation on the loss suffered resulting from the infringement and passing off of the actions of the infringing party, where the violation of their mark impacted negatively on the reputation of the plaintiff’s business. For damage to be awarded, the burden of proof is on the plaintiff to prove that harm was caused by the infringement that led to consumers’ confusion and deception and sales were diverted from the plaintiff’s business. This can be backed by direct evidence of a consumer, testimony from the public or by circumstantial evidence.
- The owner of the mark can seek an Anton Pillar Court order, which is also an injunctive relief made by ex-parte application, to enable access into the defendants’ premises for the purpose of taking possession of the infringed products or documents.
- Another remedy granted to a plaintiff in an infringement matter is an order of account of profit to recoup all the profits made by the infringer from the unauthorized use of the trademark, especially in a commercialised industry where the defendant has made profits from using the trademark of the plaintiff to pass off products and the plaintiff suffered a gross loss of profit as a result of that act.
The trademark registry because of the numerous applications filed daily can sometimes be inadequate or make mistakes in the process of registration of trademarks, thereby leading to double applications or a situation where the registrar accepts a mark identical to an existing trademark.
As a result of this, it is important to emphasize that trademark goes beyond registering the mark and obtaining the Certificate of Registration; the proprietor must be alert and be on the lookout for any possible infringement likely to occur on its mark. Where an infringement occurs, the owner of the mark shall have a right to enforce its mark and may be entitled to the remedies or reliefs stated above.
Many proprietors of trademarks have had to fight and prosecute the unlawful use of their registered trademark in order to protect the integrity of their brands, as no responsible entity will allow an infringer pass off their products in their name or trademark.
Written by Trademark and Intellectual Property Law Department at Resolution Law Firm, Nigeria