IP 2.9 INTRODUCTION TO THE LAW OF TRADEMARKS
A trademark identifies and distinguishes a person’s goods from others in the market. Trademark traces the origin of goods. It guarantees that goods bearing the mark are of superior quality.
For example; it is arguable that name is what makes Peak milk more expensive than Cowbell milk… Rolex more expensive than Swatch… Rolls Royce more expensive than Toyota… I-Phone more expensive than Tecno, etc. Consumers usually purchase goods based on the quality expected, previous experiences and recommendations and where they purchase an imitation, they may think it is the real product they had purchased and hate the product/trademark. That is why the law should be there.
What is a Trademark?
Section 67 (the interpretation section) of the Trademarks Act defines trademarks as: A mark used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and the proprietor/registered user of the mark.
Just note the following:
- It is a mark: A mark was defined in Section 67(1) to include a device, brand, heading, label, name, signature, numeral… or any combination thereof.
- Registration may be based on prior use or intention to use (unlike patents and designs).
- The use must be in relation to goods. (Does not cover service marks).
- The use of the mark must be in the course of trade: to show a connection between the goods and the proprietor. Aristoc V Rysta.
REGISTRABILITY UNDER THE ACT
Registration is NOT mandatory. It can however serve as evidence to establish that the plaintiff is the proprietor of the mark. In essence, non-registration does not invalidate a trademark but there can be no infringement of an unregistered mark-Section 5. An unregistered owner can seek protection under the tort of passing off.
The trade marks register is divided into two parts;
- Part A.
- Part B.
The mark must contain at least one (i.e any one or more) of the following.
- The name of the company, individual or firm represented in a special manner: the name must be true and it must not suggest that it emanates from another person.
- The signature of the applicant: To authenticate that the documents are emanating from him.
- An invented word(s): defined in Eastman Photographic Material Application as “new and freshly coined”. Depending on the facts of the case. So long as it does not convey any obvious meaning to the ordinary person. For example “Kodak”. In De Cordava V Vicks, the court held that misspelt words are not invented words. In Trebor Nigeria V Associated Diaries, the court noted that the black elephant on the defendant’s product was distinctive and can serve as a trade mark.
- A word(s) having no direct reference to the character or quality of goods… and not being a geographical name or a surname. Names like, Peak milk, Cowbell, Milo, NIDO, none of these names have direct reference to milk so it can be registered. Words that suggest that the goods are produced in a particular locality are not registrable as was held in Liver Pool Electric Cable’s Application.
- Any other distinctive mark: distinctive meaning (Section 9) “adapted to distinguish”. In Re Cadbury Brothers Ltd Application, the court noted that a mark is distinctive if a person thinks of the manufacturer when he sees the mark. E.g. you think of apple incorporation when you see a 2d apple fruit with a bite taken out.
Where a mark does not qualify under part A it may come under part B.
By Section 10 of the Trademarks Act, (to come under this head/part) the mark must be distinctive or capable of being distinctive in future with prolonged use. This means that the mark must be capable of distinguishing the goods which emanate from the proprietor in the course of trade.
The law of patent seeks to prevent deception and confusion of the public as such there are certain marks that cannot be registered for public policy reasons.
- Deceptive or Scandalous Matter: Section 11. Marks which are capable of deceiving and confusing the public by wrongly suggesting a connection with another trader’s product or material. In Re Orwoola, Orwoola was rejected for clothing not made of wool.
A mark is scandalous where it is capable of causing disaffection or adversely affecting the mores of the society at the particular time. For example FCUK (i.e. the wrong spelling of fuck) was refused for registration in one case.
- Names of Chemical Substances: which are accepted as the name of a single chemical rather than a mixture. Section 12. For example sulphur, magnesium, and so on. But where it is used alongside another word, it may be registrable. For example, Fikky’s Milk of Magnesia, Nwosu’s Citric Juice.
- The Nigerian Coat of Arms: or any mark so closely resembling it as to be calculated to deceive members of the public-Section 62. Also, words such as national, president, governor or emblems which can deceive the public that the applicant is employed by or supplies goods to the president or governor in his official capacity.
- Words like; Patent, Copyright, Red Cross cannot be used.
- Marks which are similar to or identical to a registered trademark are not registrable. Because they are likely to deceive and confuse the public. In Seven Up Ltd V Bubble Up Ltd, the court held that Bubble-up was similar to Seven Up. Peacock Milk… declined registration as it was similar to Peak Milk. “”Castoria” was held to be similar to ”Castorina” in Alban Pharmaceuticals V Sterling Products, holding that the imperfect recollection of the illiterate consumer should be a considered. In Re Jellnek, the court noted that the nature, composition of the goods, uses and the trade channels would be taken into account.
However, Section 13 provides that the registrar may allow registration of identical trade marks in the case of honest and concurrent use or in other special circumstances. In Re Pirie’s Application, the court posited that we should consider:
- The extent of use.
- Likelihood of confusion the consumers.
- Honesty of the concurrent use which the applicant must prove.
Don’t be confused; in the exam, you should read the question on trademark very well then follow these steps in answering:
ONE: What is the mark or act or issue in the scenario? You can educate the examiner on what the law regards as a mark, etc.
TWO: is the mark in the scenario unregistrable/prohibited? You briefly educate the examiner on prohibited and restricted marks and what can possibly be done.
THREE: If the mark is not prohibited or restricted then you ask can the mark (i.e. brand, heading, label, name, signature, numeral) be brought within the ambit of (any option in) Part A. in answering this; you briefly teach the examiner what part A requires.
FOUR: If the mark cannot be brought within the ambit of Part A (which is very unlikely in practice) then you ask whether the mark can be brought under Part B (i.e. whether it is distinctive or capable of being distinctive in the future. Teach the examiner small.
FIVE: you conclude on your cumulative findings and advise the parties (in possibly 2 lines) on the procedure for registration where you think their name can be registered.
Note that this illustration is not a hard and fast rule as it depends on the way the questions come.
Section 18 of the TMA
- Preliminary advice as to the distinctiveness of the trademark may be sought.
- Apply in writing to the registrar either in part A or B of the register.
- Registrar may refuse or accept such application. He may with the assent of the applicant, treat part A application as Part B application where the mark does not reach the requirement of Part A.
- Where the registrar refuses an application, the grounds for refusal must be put in writing.
- The applicant may appeal to the court which shall hear both sides and make an appropriate order.
- Where the registrar accepts such application, he shall cause the notice of such acceptance to be published in the Trade Marks Journal.
- A person may within 2 months of publication give notice of opposition in writing stating the grounds. The applicant shall be notified of such opposition and he shall send his counter-statement within one month. Both parties shall be heard subject to appeal to the court.
- Failure to make a counter-statement (after someone has challenged the application) would show that the applicant has abandoned the application.
- The application may be regarded as abandoned where the applicant fails to follow up after 12 months. The registrar should notify the applicant before treating the application as abandoned.