Generally, the proprietor or owner of a registered mark has the exclusive right to use the mark. The Business Facilitation Act 2023 has amended the definition of a trademark under the Trade Marks Act 2004 (TMA). It now defines a trade mark as:
A mark used or proposed to be used in relation to goods or services for the purpose of indicating a connection between the goods or services and a person having the right, either as a proprietor or as a registered user, to use the mark, whether with or without any indication of the identity of that person, and may include the shape of goods, their packaging, and combinations of colours.
It is worthy of note that the new definition creates a greater opportunity for brand protection beyond only serving the purpose of differentiation in the marketplace, as opposed to the previous definition.
A trademark infringement occurs when another person who is neither the proprietor nor a registered user of the mark appropriates the same in relation to a similar kind of business to which the trademark relates. Simply put, trademark infringement refers to the unauthorised use of another’s trademark or a mark closely resembling it, which causes confusion in the minds of buyers.
Trademark infringement typically occurs when a person uses a mark that closely resembles the registered mark and is also used in the same line of business as the registered mark in a manner that is likely to cause confusion or deceive consumers. This relates to consumers of both goods and services. Thus, when a person uses the name of another brand for their own business without permission, this is a trademark infringement. Note here that an unregistered mark can also be infringed. In such a case, the owner of the mark can bring an action for passing off instead of a trademark infringement action.
This article examines the concept of trademark infringement, with particular reference to trademark classes and brand protection.
What Constitutes an Infringement
The courts do not readily hold that an infringement has occurred by merely listening to the parties. The Supreme Court of Nigeria held in Bell Sons & Co v Aka & Anor that in determining whether an infringement has occurred, both audio and visual comparisons of the original mark and the infringing mark must be taken together before a conclusion is reached as to whether an infringement has in fact occurred. Thus, in order to constitute an infringement, the act complained of must satisfy the following:
Another form of trademark infringement occurs when a registered user of the trademark assigns the mark to a third party. A registered user is a person who has received permission from the trademark owner to use the mark for a specific period of time under a licence or assignment. Where this user further assigns the mark to a third party, it is seen as an infringement of the trademark.
Trademark Infringement under a Different Class
Trademark applications are arranged according to the description and scope of the types of goods and services to which the mark applies, in accordance with the trademark classification. The trademark classes in Nigeria are in line with the Nice International Classification of Goods and Services of the Nice Agreement of 1957, which provides for 45 classes of goods and services under trademark. While Classes 1 to 34 are for goods, Classes 35 to 45 are for services.
During the registration of a trademark, the applicant is required to file for registration under the appropriate Class. As a result of the registration of trademarks under different classes, similar logos and phrases may be registered as different trademarks under different Classes. This means that they can likely coexist separately without competing since consumers would not be confused. Thus, where there is no likelihood of confusion in the minds of consumers as regards a trademark, registration will be allowed under separate classes even where the trademarks are the same. The determining factor here remains the Class under which the trademark is registered.
Another way to look at trademark infringements in Nigeria is the registration of a name as a trademark. What happens when another person bearing the same name decides to register the name as well?
The TMA 2004 provides in Section 9 that the name of a person can be registered as a trademark provided that such a name is written or presented in a special or particular manner. The implication of this provision is that a person’s name is registrable as a trademark. Recall that in February 2021, the Nollywood actress Omotola Jalade-Ekeinde, MFR, announced the registration of her first name “OMOTOLA” as a trademark under Class 41 (Education and Entertainment) of the trademark classes. The implication of this registration is that Omotola now has exclusive rights to the use of this name in her business under the specified class. However, does this mean that the name is off limits completely? The answer will be in the negative. The law requires the applicant to present the name to be registered in a special or particular manner to the point that it is distinctive and distinguishable from other names and marks. In this case, Omotola represented her name in capital letters. This means that a different representation of this name by another person may be registered, provided it falls under a different class. In summary, a person bearing the same name cannot register it under the same class (Education and Entertainment) and it cannot be represented in the same way as she did hers. This goes to show that trademark classes limit infringement to a particular class, such that multiple trademarks of the same kind can exist provided the classes are different.
The court re-echoed this principle again in the 2022 trademark infringement case between Fan Milk International A/S v. Mandarin Oriental Services BV and The Registrar of Trademarks and Fan Milk International A/S v. Mandarin Oriental Services BV and The Registrar of Trademarks. Here, the court restated the established principle of law, as discussed in this article, that a party cannot claim rights over an alleged conflicting trademark registered in a different class, irrespective of the similarity between the marks. In addition, the court stated that in determining whether two marks are likely to confuse a consumer, the focus should not be on whether the consumer is likely to be confused when the marks are placed side by side but on whether the person who sees the proposed trademark in the absence of the other mark would be deceived and to think that the trademark before him is the same as the other, of which he has a general recollection.
Again, there is no likelihood of confusion where a mark has been around for a long time and the consumers already know it to have a particular look. If the proposed mark has a slightly different look, there is no likelihood of confusion because consumers already know what the older one looks like.
As early as 1962, the House of Lords ruled in Parker-Knoll Ltd v Knoll International Ltd. that where two persons bearing the same name are in the same line of business and seek to register their names as trademarks, the person who first registers will be given priority, to the effect that the person who comes after the first will be forced to further distinguish their get-up from that of the first applicant.
What if a Mark is Unregistered?
While the TMA protects the owners of registered marks, it also creates exceptions for unregistered marks. Section 3 of the TMA allows the owners of an unregistered mark to institute a passing off action against a person intending to appropriate another’s mark. However, establishing a case of passing off is always a bit tricky. The courts have laid down elements of passing off that must be present in order to succeed in a claim for passing off. In Banire v NTA-Star TV Network Ltd. the court held that to succeed in such an action for passing off, the plaintiff must establish that:
Since the appellant in this case could not establish the above elements, the appeal was dismissed. Although Banire’s case relates to the infringement of image rights under the Copyright Act, the court’s decision on the proof of passing off is instructive.
What to Consider as a Brand Owner
Popular brand owners may consider defensive mark registrations. The Nigerian TMA allows a proprietor of a well known trademark that is used in relation to particular goods but does not intend for it to be used for other classes of goods and services to register the trademark as a defensive mark. In this case, the mark need not be in use or proposed to be used in relation to any particular goods or services but can be registered solely for the purposes of protection from appropriation. Thus, Section 31 of the TMA, which allows the removal of marks from the register on the grounds of non-use will not apply. The rationale behind this provision is that a well known trademark could be appropriated and registered in another class and consumers may associate the use of that mark in that class with the proprietor, who is already known. For example, the registration of a well known brand name like Maggie on unrelated goods like clothes may be taken to have the source of origin with the popular cubes brand “Maggie.”
Thus, the law makes an exception for this peculiar case. The implication is that the particular trademark is protected for all classes of goods and services. However, this is only common with well known or popular trademarks. An unpopular trademark may be considered if it can be shown that the alleged infringing use creates a state of confusion as to the source of the goods or services.
Importance of Defensive Registration
As a general principle of law, registration of a trademark gives the proprietor the exclusive right to use and exploit the trademark. However, this right does not extend to situations where another applicant seeks to register the same mark or name under a different class of goods and services, except where a defensive mark registration applies. Thus, generally, trademark classification serves to limit the exclusive rights of a trademark owner to the particular class of registration. The rationale for this limitation is that there is no likelihood of unfair competition or confusion among similar trademarks since each belongs to a separate class and serves entirely different markets. A trademark exists to distinguish products of a particular brand from others in the market and affords the opportunity to benefit from the valuable reputation established over time through the use of a brand. However, where a name or mark is registered under an entirely different class from an existing one, there is no threat to the goodwill and benefits attached to another’s brand. However, the TMA allows proprietors of well-known marks to opt for defensive registration of their trademark to prevent its registration in other classes if this may confuse the consumer or lead to an affiliation of the subsequent registration with the well-known brand. Defensive registration protects a trademark for all classes of goods and services. This helps a brand owner prevent registration of the same trademark in another class, which is ordinarily permitted under the law. Brand owners may thus consider defensive registration, which protects a trademark in all classes.