GODFREY OKOYE UNIVERSITY
FACULTY OF LAW
COURSE TITLE: LAW OF INTELLECTUAL PROPERTY 2
COURSE CODE: LAW 504
SESSION: 2024/2025 SEMESTER: SECOND
LECTURER: REV. VICTOR MUNACHIMUSO NZEBUNACHI ESQ FICPAN
Barrister and Solicitor Supreme Court of Nigeria
LL.B (HONS), B. L, LL.M, B.TH TEL: 07066791566
EMAIL: nzebunachivictor1000@gmail.com; Victor.nze@gouni.edu.ng
COURSE CONTENTS
PART ONE
1. Historical Development
2. Registrable Trade Marks
3. Trade Marks' Proprietorship
4. Infringement of Trade Marks
5. The Administration of Trade Marks
6. Jurisdiction
7. Remedies
PART TWO
1. Historical Development
2. Patentable Inventions
3. The Patent Grant
4. Infringement of Patents
5. The Administration of Patents
6. Jurisdiction
7. Remedies
PART THREE
1. Historical Development
2. Registrable Designs
3. Designs' Proprietorship
4. Infringement of Industrial Designs
5. The Administration of Industrial Designs
6. Jurisdiction
7. Remedies
PART ONE
HISTORICAL DEVELOPMENT
The principal objective of the law of trade marks is to ensure that no one not being the proprietor of a trademark or a registered user thereof uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered. In particular, this protection is of great importance to manufacturers of goods and products, for example, chemical, pharmaceutical and mineral substances, furniture and upholstery, paper, mineral and aerated waters, tobacco and many other products. This protection also applies to those who trade in these goods and products, using specified trademarks and trade names.
As Nigeria advances industrially, there is indeed a great need for the law of trade marks. In this country, we now see so many fake products with marks imitating the trade marks and names of the genuine foreign countries. Apart from these fake products which are imported, many other fake products which are produced within the country also carry marks which imitate oftentimes the trade marks and names of the genuine Nigerian manufacturers. Effective laws to combat these malpractices and other trade marks problems are therefore very necessary. Nigeria derives her law on Trade Marks from the English law where we will therefore look into the English law for the historical evolution of trade marks.
1. THE EVOLUTION OF TRADE MARKS
In England "demands for the legal protection against the imitation of marks and names were made and succeeded to from the early years of industrialization. The Courts of Equity took the lead because plaintiffs wanted injunctions. They intervened when one trader represented to the public that he was selling the goods or carrying on the business of another. Soon afterwards, similar actions for damages at common law are found; the action for deceit being made available to a competitor. That extension bore it's own limitation, for deceit required proof of deliberate fraud. Other potential limitations were by-passed: the common law courts had no scruple in holding it actionable for a manufacturer to supply a retailer with the instruments of fraud, or for one trader to "pass off" goods as another's even if they were not of inferior quality.
Westbury as Lord Chancellor insisted that a mark or name could be protected even though the public did not know the producer as such but used the connection with a trade source simply as a sign of quality. Traders kept up pressure to have the protection of trademarks made more secure. In 1875, the campaign for a registration system succeeded so far as marks for goods were concerned. Critically, there was no obligation to use the mark before registering it. This gave business an important measure of security when launching a new product. Since the Trade Marks Act of 1875 subsequent legislations were passed in England in 1883, 1905, 1919, 1938 and 1994.
2. THE RECEPTION OF THE LAW OF TRADE MARKS IN NIGERIA
Before the post 1900, there was no English Statutes in force in Nigeria. The law governing trade marks in Nigeria is contained in the Trade Marks Act. This Act repealed the Trade Marks Act, 1958 and it's regulations. The Common Law rights are however still preserved. Thus, Section 3 of the Act provides that, "nothing in the Act is to be taken as affecting rights of action against any person for"passing off" his goods as the goods of another person or the remedies in respect thereof".
2. REGISTRABLE TRADE MARKS
A trade mark must be registered before the proprietor of the mark can benefit from the protection granted under the law. Such a mark may be registered in Part A or Part B of the Register. Although a mark may be distinctive or capable of distinctiveness, registration will not be automatically granted. Accordingly, deceptive, scandalous, identical and resembling trade marks will not be registered.
(1) WHAT IS A TRADE MARK?
Under Section 67 of the Trade Marks Act Cap T13, Laws of the Federation, 2004, a 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 or services and some person having the right to either as proprietor or as registered user to use the mark whether with or without any indication of the identity of the person, and means, in relation to a certification trade mark, a mark, a mark registered or deemed to have been registered under Section 43 of this Act ".
Some words in the above definition call for clarification. Thus, what is meant by the words "used or proposed to be used " and the words "a connection in the course of trade" in the above context. We shall examine them.
(a) "Used or Proposed to the Used"
These words clearly indicate that the actual use of a mark is not required before the mark can be accepted for registration. Indeed, as most traders are normally anxious, before adopting a mark as a trade mark, to ascertain whether it will be registrable, they will certainly find this provision useful.
(b) "A Connection in the course of Trade"
What, then, does "a connection in the course of trade" mean in this context? Regrettably, there is no decided Nigerian cases on this point. In the leading English case of Aristoc Ltd v Rysta Ltd however, these words were fully examined. In this case, the respondents had applied to register a mark consisting of the word 'Rysta' in respect of stockings. The appellants who opposed the registration carried on business as manufacturers of, and dealers in women's stockings. They adopted the invented word "Aristoc" as a trade mark in the year 1923 and had sold silk stockings of their manufacture throughout the United Kingdom to the value of about four million pounds sterling. On the other hand, the respondents at the date of their application for a trade mark had neither made nor sold any stockings. However, they were the owners of an undisclosed process for effecting invisible repairs to ladies stockings by catching up the broken threads which had caused ladders therein which the process is called "Rysta" process. The respondents in general did not deal directly with members of the public. It seemed that laundries and retail stores had been accustomed to accept from ladies their stockings which laddered. These stockings were then on directions of the owners forwarded to the respondents, who carried out the repairs and returned them to the laundries and retail stores with a printed ticket or label attached in which the word "Rysta" appeared in bold type.
The appellants, however, opposed the registration of the mark as being calculated to deceive or cause confusion and they also objected on the ground that a mark used to indicate repairs to stockings could not be registered under the provisions of the British Trade Marks Act of 1938. This latter objection was extensively discussed in the House of Lords. In their judgement, the House of Lords held that the execution of repairs on stocks which are made by manufacturers other than the repairers did not involve "a connection in the course of trade" between the stocks and the repairer such as to enable the latter to register as a trade mark, a mark applied to the stocks.
Lord Maugham, after referring to other authorities to buttress his point, concluded: "My conclusion upon a careful consideration of the Act of 1938 and of the authorities is that the repair of stockings undertaken by the respondents does not constitute "a connection in the course of trade within the meaning of the Trade Marks Act, 1938, and that a trade mark for stockings intended merely to indicate that they have been repaired by the person claiming to register such a mark cannot be accepted for registration". To succeed, therefore, it must be shown conclusively that the goods for which the registration of the mark is being sought are either manufactured or solely dealt with as a merchant in the course of business by the applicant. Then and only then will it be held that there is "a connection in the course of trade".
(2) WHEN WILL A TRADE MARK BE DEEMED REGISTRABLE?
The Register, in which trade marks are registered, is divided into two parts called Part A and Part B respectively.
(a) Part A Registration: In order that a trade mark (other than a certification trade mark) may be registerable in Part A of the Register, Section 9(1) of the Trade Marks Act provides that it must contain or consist of the following essential particulars:
(a) the name of a company, individual or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) an invented word or words;
(d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification, a geographical name or a surname;
(e) any other distinctive mark.
There is, however, a proviso to the above. A name, signature or word or words other than such as fall within paragraphs (a) to (d) of this section will not be registered under paragraph (e) of this section except upon evidence of its distinctiveness.
The Common feature that runs through the above is that such mark must be distinctive.
The meaning of distinctive is provided for in Section 9(2) which reads thus: "For the purpose of this section, "distinctive " means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course trade from goods in the course of which no such connection subsists". Also see the provision of Sub-section 3.
Section 9(3) provides: "in determining whether a trade mark is adapted to distinguish as aforesaid the Tribunal may have regard to the extent to which the trade mark is inherently adapted to distinguish as aforesaid and by reason of the use of the trade mark is in fact adapted to distinguish as aforesaid".
The effect of the above statutory provision is that the Registrar in considering an application to register a trade mark, must consider both its inherent adaptability to distinguish and also the extent to which it is shown by evidence (if there is such evidence) to be distinctive.
There are number of cases where the word "distinctiveness" was a matter of consideration with respect to the registration of goods in the Register.
1. In the case of Yorkshire Copper Works Application YCW Ltd applied to register the word "Yorkshire" (in Parts A and B of the Register, being conceded that if registration in Part A was refused, registration in Part B must be refused also) for "solid-drawn tubes and capillary fittings, all being made of copper or non-ferrous copper alloys". The applicants contended and for the purposes of the decision of the court, it was accepted that to everyone concerned with the trade in these goods, the word "Yorkshire" had lost its primary geographical significance and become 100 percent distinctive of the applicants. Thus, the Registrar, however, refused the application and appeals against his decision were dismissed by Lloyd-Jacob J., and the Court of Appeal. The Applicants then appealed to the House of Lords where their Lordships also dismissed the appeal. It is, therefore clear from the above case that where the inherent unsuitability is so strong that no degree of distinctiveness can counterbalance it, the mark will not be registered.
2. In the Nigerian case of Liggett and Myers Tobacco Ltd v Registrar of Trade Mark the applicants brought an application for an order that the Registrar should register their trade mark, "Chesterfield" simpliciter, without any design. The Applicants, however, the owners and proprietors of "Chesterfield" with a device registered on the register in Class 45. The respondents refused to register the trade mark "Chesterfield" without any design on the ground that the word is a geographical name in its ordinary signification. At the trial, the Counsel for the applicants submitted that the trade mark had been used by the applicants since 1930 and that it could, therefore, be accepted by the Registrar as being distinctive of the Plaintiff's goods. The Court held that the application should be accepted and registered.
3. In the Nigerian case of Trebor Nigeria Ltd v Associated Industries Limited the Court held inter alia that the trade mark of the defendants, a black elephant, was very distinctive of the defendant's goods and did not infringe that of the Plaintiffs.
(B) PART B REGISTRATION
This is provided under Section 10(1-3)
3. NON-REGISTRABLE MARKS
There are some specific provisions that prohibits registration which are:
a. Deceptive or Scandalous Marks as provided in Section 11(a-b)
b. Identical and Resembling Trade Marks as provided in Section 13(1-3)(a-b).
c. Names of Chemical Substances as provided in Section 12(1-2)
4. ASSOCIATED, CERTIFICATION, DEFENSIVE, SEPARATE AND RESEMBLING TRADE MARKS:
The Trade Marks Act permits the categorization of certain trade marks into associated, certification, defensive, separate and resembling trade marks.
(i) Associated Trade Marks
Where a trade mark that is registered in respect of any goods is identical with another trade mark that is registered in the name of the same proprietor in respect of the same goods or description of goods or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may require that the trade mark will be entered on the register as an associated Trade Mark.
(ii) Certification Trade Marks is provided in Section 43(1-10)
(iii) Defensive Trade Marks is provided in Section 32(1-6)
(iv) Separate Trade Marks is provided in Section 24(1-3)
(v) Resembling Trade Marks Registered as a Series is provided in Section 25(1-2)
TRADE MARKS' PROPRIETORSHIP
A. CATEGORIES OF INDIVIDUALS AND COMPANIES WHO MAY APPLY TO REGISTER A TRADE MARK
(i) Proprietors of Trade Mark is provided in Section 18(1-7)
(ii) Joint Proprietors of a Trade Mark is provided in Section 64(1-2)
(iii) Corporate Bodies which are not yet formed is provided in Section 35(1-4)
The Trade Marks Act provides that no application for the registration of a trade mark in respect of any goods must be refused, nor must permission for such registration be withheld on the ground only that it appears that the application does not use of propose to use the trade mark -
(a) if the tribunal is satisfied that a body Corporate is about to be constituted, and that the applicant intends to assign the trade mark to the body Corporate with a view to the use thereof in relation to those goods by the body Corporate.
(iv) Registered Users is provided in Section 35(1)(b). The Trade Marks Act also provides that no application for the registration of a Trade Mark in respect of any goods must be refused nor must permission for such registration be withheld on the ground only that it appears that the applicant does not use or propose to use the trade mark -
(b) if the application is accompanied by an application for the registration of a person as a registered user of the trade mark and the tribunal is satisfied that the proprietor intends it to be so used by that person in relation to those goods and the tribunal is also satisfied that that person will be registered as a registered user thereof immediately after registration of the trade mark".
PROCEDURE FOR REGISTRATION AS A REGISTERED USER is provided in Section 34(1-8)
Rights and Limitations of a Registered User is provided in Section 33(1-5)
(v) Persons to whom the Trade Mark has been assigned. The Proprietor of a Trade Mark can also lawfully assign his trade mark as is provided for in Section 26(1-5)
B. DURATION AND RENEWAL OF A TRADE MARK is provided in Section 23(1-4)(b)
Registration is for an initial period of 7 years but may be renewed thereafter from time to time for a period of 14 years at a time in accordance with the Act. See the case of A. B. Chami & Co. Ltd v W. J. Bush & Co. Ltd
C. PROCEDURE FOR REGISTRATION
There is a centralized system of registration for trade marks. There is a Registrar of Trade Marks and there is a Register in which trade marks are registered.
(i) Preliminary advice on distinctiveness is provided in Section 17(1-2)
(ii) Application for Registration is provided in Section 18(1-7)
(iii) Publication of Notice of Application is provided in Section 19(1-3)
(iv) Opposition to Registration is provided in Section 20(1-5)
(v) Appeal from Registrar's decision on opposed application is provided in Section 21(1-6)
(vi) Registration is provided in Section 22(1-4). There is need to consider a few cases decided on the procedure for the registration of trade marks.
(A) In the case of Liggett and Myers Tobacco & Co v Registrar of Trade Marks the court granted the applicant's application for an order that the Registrar of Trade Marks should proceed with the registration of their trade mark "Chesterfield". In its ruling, the court held that the onus was on the applicants to prove that the word "Chesterfield" was not a geographical name in its ordinary signification. In this case, the court held that the applicants had discharged this onus having regard to the dictionary meaning of the word.
(B) In the case of In Re Marketing and Shipping Enterprises Ltd v Co-operative the applicants brought their application seeking an order that the registration of the Trade Mark "Peacock" brand of evaporated milk be proceeded with by the Registrar of Trade Marks and that the opposition of the objectors should be disregarded. The objectors lodged their objection to the application on the ground
(a) that they are the Proprietors of the Trade Mark "Peak" Brand which had been continuously and extensively used by them throughout Nigeria since 1954;
(b) tha the trade mark applied for by the applicants was closely similar to that of the objectors;
(c) that the use by the applicants of the Trade Mark applied for would be likely to deceive or cause confusion by leading the purchasing public in Nigeria to believe that the goods of the applicants were those of the objectors;
(d) that the use of the applicants of the mark applied for would be reason of its being calculated to deceive be disentitled to protection in court of Justice, and finally
(e) that the registration of the trade mark applied for contravened Section 13 of the Trade Marks Act (which talks about Identical and resembling trade marks not to be registered).
The Applicants filed a counter statement denying those grounds and maintaining that there was no risk of confusion between the marks
Dismissing the application, the Court held:
1. The true test in this type of case is whether the proposed trade mark is such that it was likely to cause mistake or deception or confusion in the minds of persons accustomed to the existing trade mark.
2. It is well settled that the onus of proving that there is no reasonable probability of deceiving or causing confusion is on the applicant for the registration of a Trade Mark.
3. That onus is greater when the trade mark is new and no trade has been established in it.
4. The onus is not discharged by calling evidence of dealers in the product confined to a section only of the community.
(C) In the case of Wellcome Foundation Limited v Registrar of Trade Marks and Anor, the plaintiffs application was for an Order of Certiorari (Certiorari serves to direct for the removal of a certified record of a particular case tried in an inferior court, tribunal, inter alia for the purpose of being quashed or rejecting invalid or unlawful administrative decision) to remove into the Court and quash the acceptance of the application to register the trade mark "ACTID" by the Registrar of Trade Marks. It was the contention of the Plaintiff that under Regulation 33 of the Trade Marks Regulations, it was obligatory on the Registrar of Trade Marks to consider a new application in comparison with all registered trade marks and pending applications. Counsel for the applicant argued that the application to register the trade mark "ACTIFIED" was pending at the time when the application to register the trade mark "ACTID" was filed by the 2nd Respondent.
Dismissing the application, the Court stated that where a party challenges the action of the Registrar of Trade Marks performed pursuant to Regulation 33 of the Trade Marks Regulation, 1967, he has to put before the court materials to show how the Registrar performed his duty whether he acted within or outside the ambit of the provisions of the law. Jinadu J held inter alia:
"Having failed to put all necessary materials before the Court, it is not possible to conjecture (an opinion or conclusion formed from an inconclusive basis of an information or the formation or expression of an opinion or theory without sufficient evidence for proof) what happened, before the Registrar decided to accept the said application to register ACTID. In the circumstances, therefore, the applicant has failed to prove that the Registrar failed to comply with Regulation 33 of the Trade Marks Regulations 1967 and accordingly Certiorari cannot issue as prayed by the applicant."
(D) In the case of Philip Morris Incorporated v Brown and Williams Tobacco Corporation (Export) Ltd & Anor the issue for determination was whether the Registrar of Trade Marks was right in rejecting the opposition posed by the applicant to the application of the respondent to register "Choice Ultra Lights" in Class 34 in their name. The facts of the case was that the respondent made an application to the Registrar of Trade Marks in January 1980 to register Choice Ultra Light, in Class 34 in their name. The Registrar accepted the mark in May 1980 and published the acceptance in the Trade Marks Journal in July 1982. The appellant then filed a notice of opposition with grounds in September 1982 before the Registrar.
The case of the appellant was that the appellant, it's predecessors and affiliates had been engaged in the manufacture and sales of cigarettes in the USA for many years. The appellants also stated that they had valid and subsisting registration for "Lights" in well over 80 jurisdictions and that, in Nigeria "Lights" was registered in Class 34 in 1971. The appellants further claimed that "Choice Ultra Lights" which the respondents wanted to register contained the word "Lights" which as such was not the respondent's distinctive mark of their goods and was likely to cause confusion.
The respondents, however, contended among other things that the word "Lights" was being used by the appellant as purely a "description" as applied to cigarettes and that the word was common to the trade and to the tobacco industry.
Upon a review of the facts, the Registrar rejected the opposition whereupon the appellants appealed to the Federal High Court.
Dismissing the appeal, the Federal High Court stated that the right to the use of a Trade Mark given by Registration is subject to conditions or limitations on the register, provided that the Proprietor of the right is given opportunity by the Registrar to be heard; that there is nothing in Section 5(1) tha confers an immunity on a Proprietor that once a trade mark is registered, the Registrar can no longer register the same trade mark again for another person; that if the fact is made out that a name suggested by two marks is merely descriptive and that there is no likelihood of deception, the Registrar is legally entitled to register the second mark.
Furthermore, Honourable Judge, Belgore J held in a nutshell, that "the word "Lights" was a common word to the cigarette and tobacco industry and it cannot be made the monopoly of a single manufacturer".
(E) In the case of Hondret and Company Limited v Registrar of Trade Marks the applicant had appealed the decision of the Registrar in refusing to register their mark "Rise Fresh Air Freshner" on the ground that it conflicted with an earlier identical mark, the application for registration of which was pending at the time of the applicant's application. The Registrar had relied on Section 13(1) in refusing the application. In upholding the appeal, the Court held that Section 13(1) can only apply when the mark sought to be registered conflicts with a mark already registered and not when both marks are subject of pending applications as in the present case. There was also no finding of fact by the Registrar that the trade mark sought to be registered by their applicant was likely to deceive or cause confusion with another on the register.
D. EXTENT OF THE RIGHT CONFERRED UPON THE PROPRIETOR OF A TRADE MARK is in two stages
Right given by Registration In Part A is provided in Section 5(1-4)
Right given by Registration In Part B is provided in Section 6(1-2)
E. STATUTORY EXCEPTIONS TO THE EXCLUSIVE RIGHT TO THE USE OF A TRADE MARK
The exclusive right to the use of a Trade Mark is subject to the following:
(a) Right Conferred by Concurrent Registration
Section 5(4) provides that, "the use of a registered trade mark, being one of two or more registered trade marks that are identical or nearly resemble each other, in the exercise of the right to the use of that trade mark given by such registration shall not constitute an infringement of the right to the use of any other of those trade marks given by such registration. In the case of Electro Technische Fabric Schmidt & Co (otherwise) Diamond Works GMBS v Bateria Slany Narodni Podnic the two registered trade marks in question were identical and that they relate to the same class of goods and that they are bound to cause confusion if used by two different companies. However, the defendants, without objection by the Plaintiff had been using their trade mark for some 6 years since it's registration and had used it for a considerable number of years before that. They pleaded acquiescence (the reluctant way of accepting something without protest) in defence to the Plaintiff's application for an order to expunge their mark from the register.
The Supreme Court held that as the defendant had used the trade mark in dispute for many years during which their business had acquired a good deal of reputation with the same market in which the Plaintiffs claim their own goods were distributed, it must have come to the Plaintiff's notice that the defendants were using as of right a trade mark identical with theirs, and as they did not object, they had undoubtedly acquiescenced in the concurrent user of the mark for a considerable length of time and it would be unjust now to ask the defendants to stop using the mark.
(b) Right of persons who have their own marks before the use of registration whichever is the earlier of the registered Trade Mark is provided in Section 7
i. In the case of American Cyanamid Company v Vitality Pharmaceutical Ltd the facts were that the appellant sued the respondent at the Federal High Court for infringement of the appellant's registered trade mark "HOMOCIN", an antibiotic preparation. The appellant averred (to assert or declare positively especially in a pleading) at the trial that it is a corporation organized and in existence under the laws of the state of Maine in the United States of America. The appellant also averred that it is a limited liability company incorporated in Nigeria under the Companies Act, 1968 and that it is the vendor of an antibiotic capsule which it has imported into Nigeria for several years and sold in Nigeria under the registered mark "HOMOCIN" but that the respondent has also put into the Nigerian market for sale capsules called "GONORCIN". The appellant averred that the said respondent trade mark "GONORCIN" is similar to the appellant's trade mark of "GONOCIN" and has led to the public confusing and taking the respondent's GONORCIN as the appellant's "GONOCIN".
In its own defence, however, the respondent denied most of the appellant's claims and stated that it was registered in 1956 under the Registration of Business Names Act as Vitality Medicine Stores but that in 1980, it was incorporated as a limited liability company. The respondents also contended that since 1956, it has been the sole agent of one company in West Germany which manufactures anti-biotic preparations and that since 1969 it had put into the market anti-biotic preparations made by the West German Company bearing the word "GONORCIN" which it registered with the Pharmacy Board.
The trial Court dismissed the appellant's claims. In doing so, the trial Judge treated the Vitality Medicine Stores and the Vitality Pharmaceutical Limited as one and the same entity and held that it was protected by Section 7 of the Trade Marks Act of 1965 in that it had been in continuous use of the antibiotic preparation "GONORCIN" long before the appellant's trade mark "GONOCIN" was introduced into the Nigerian market.
The appellant appealed to the Court of Appeal against the judgment of the Federal High Court. The Court of Appeal, however, in an unanimous decision also dismissed the appeal and upheld the decision of the trial Judge that the respondent was entitled to the protection of Section 7 of the Trade Marks Act, 1965 on the ground, inter alia, that the Vitality Pharmaceutical Limited was the successor of Vitality Medicine Stores.
Dissatisfied with the decision of the Court of Appeal, the appellant appealed to the Supreme Court. However, the Supreme Court unanimously dismissed the appeal and stated that:
1) The whole of Section 7 of the Trade Marks should be read as a whole. Where there has been no evidence of abandonment of continuous user the Judge can rely on the section.
2) Continuous use of the trade marks does not necessarily mean daily use of the product.
3) Section 7 of the Trade Marks Act of 1965 protects trade marks which are identical with or nearly resembling that of a Proprietor or a registered user of a registered trade mark where such a trade mark been in continuous use by another of his predecessor in title, previous to the date of the registration of the new trade mark. The protection covers both prior use of the trade mark or the registration of the mark in the name of the Proprietor or his predecessor-in-title. In other words, the Proprietor or registered user of a trade mark is not entitled to interfere with an existing trade mark even if identical with or nearly resembling his own if it has been in continuous use before the use of or registration of his own trade mark.
"Furthermore, a close scrutiny of evidence shows positively that the issue and marketing of GONORCIN has been in the open market before the Medicine Stores was incorporated in 1980. Exhibit E supports this conclusion. I will agree with the lower Courts that the protection provided by Section 7 of the Trade Marks Act 1965 covers the respondent's case. The case of Gbasamosi Tokunboh and Anor (supra) is not in distinguishable in the sense that what was relied upon by that court before Section 7 of the Trade Mark Act 1965 was invoked was the acceptance of the evidence of continuous user. Where there has been no evidence of abandonment or continuous user, the judge can rely on Section 7 of the Act".
2. In the case of Gbasamosi Tokunbo and Anor v Chanrai and Co and Anor the plaintiffs in 1968 registered a Trade Mark known as "Cock Device Brand Mosquito Coil" "Orire Goodluck". The Plaintiff's claimed that the defendants who are selling Cock Brand Mosquito Coils with the Cock Device on the label infringed their trade mark. The defendants, however, denied infringing the plaintiffs' trade mark and claimed to have imported mosquito coils with similar trade mark as early as 1963, five years before the Plaintiff's trade mark was registered.
Dismissing the Plaintiff's claims, the Honourable Judge, Belgore J held that the defendants would be liable only if what the defendants had imported were likely what was registered or closely resemble it so as to mislead the public into believing that the two are one and the same thing. The judge held that in the instant case, the two products are not so alike as to mislead the public into regarding the one for the other. There was, therefore, in view of the Honourable Judge, no infringement of the Plaintiff's trade mark.
The Honourable Judge further held that the defendants were entitled to the protection of Section 7 of the Trade Marks Act, 1965 having used a Trade Mark resembling that of the Plaintiff prior to the date the plaintiff registered his own Trade Mark.
(c) Right to use of a Trade Mark but which is subject to conditions and limitations is provided for in Section 5(3)
(d) Right of a person who is Bona fide using his own name etc is provided for in Section 8(a)
(e) Right of a person who is Bona fide using any description of the character of his goods is provided for in Section 8(b)
INFRINGEMENT OF TRADE MARKS
1. What constitutes an infringement of Trade Mark is provided for in Section 5 (2). It is pertinent to note that an action cannot be commenced by or against a trade mark, as the trade mark is not a juristic person. It is the proprietor of the trade mark who can sue or be sued as was well enunciated in the Supreme Court case of Maersk Line and Anor v Addide Investments Limited and Anor where the 1st Respondent contracted the appellants for the shipment of Gum Arabic on board their vessel "MV CHRISTIAN MAERSK 9506" and claimed that 400 bags of the goods were destroyed due to the negligence of the appellants.
On being served with the writ of summons, the appellants moved the trial Court to strike out the name of the 1st appellant from the suit on the ground that it is a non- juristic person and therefore lacks the capacity to sue or be sued. In the affidavit in support of the motion, it was deposed inter alia that the 1st appellant is a trade mark.
Subsequently, the respondents filed a motion for an order of court for the joinder of three parties as defendants. These were:
(1). The owners of the Vessel "Christian Maersk"
(2). The master of the Vessel "Christian Maersk"
(3). Dampskihsselzkabet at 1912, Akieselskar Aktiesselsksbet.
The two applications came up together for hearing before the trial Court and in its ruling, the court held, on the appellants' motion to strike out the 1st appellant, that the use of the 1st appellant did not cause a doubt as to whom it refers; that in any event under Order 23 of the Federal High Court (Civil Procedure) Rules, the court can amend by substituting another name if it is satisfied that the mistake in using the original name was genuine. Invoking it's power under Order 32, the trial Court ordered the respondents to change the 1st appellant's Trade name to its real name.
On appeal to the Court of Appeal, the Court of Appeal dismissed the appeals and the appellants appealed to the Supreme Court.
The Supreme Court allowed the appeal and held inter alia that:
1. A person who is made a party to an action either as a plaintiff or as a defendant must be a legal person or, if not, a body vested by law with power to sue or be sued. Thus, if it is successfully shown that a party to an action is not a legal person, that party should be struck out of the suit, and if such party was expressed to be the Plaintiff, the action should be struck out.
2. While a "trade mark" is a term identifying and distinguishing a business product, a "trade name" is a description of a manufacturer or dealer and applies to business and it's goodwill. A trade name is the name or title lawfully adopted and used by a particular organization engaged in commerce.
3. An action cannot be commenced by or against a trade mark as it is not a juristic person. It is it's proprietor that can sue or be sued.
2. Enforcement of the Right of a Trade Mark Proprietor
A civil action lies practically in all infringement cases.
a. The Proprietor of a Trade Mark can bring an action to prevent the registration of a mark similar to or resembling his own registered mark by another person.
b. He can also institute an action if the mark which infringes his own mark has already been registered.
c. Where the two marks resemble or nearly resemble each other as to be likely to deceive or cause confusion, the Proprietor of a trade mark is likely to succeed in an action for infringement.
We will discuss about 10 cases where an action for infringement was brought by the proprietor of the trade mark and the Court's verdict on each of them. They are namely:
A. In the case of Savage v Allen the plaintiff as registered Proprietor of certain trade marks claimed an injunction to restrain the defendant from infringing his registered marks and from passing off his goods as or for those of the Plaintiff. He also claimed damages and delivery of marked goods. The marks in question consisted of a word and a picture in each case. They referred to medicines for babies. The Plaintiff's word as "Yaro" a Hausa word meaning "baby boy". The defendant's word was "Yiola" a Yoruba word meaning "it will live". It was not suggested that a literate person could make any mistake in reading the two words; or was it suggested that an illiterate person would be confused by the sound of the two words.
The general practice of the trade in Lagos had for many years been that a picture of a baby was shown on all "BABY MEDICINES". Both the plaintiff and the defendant had a picture of a baby on the medicines in question.
Giving the judgement for the defendant, the Court held that in view of the established practice of the use of pictures of babies on "baby medicines" and of the difference between the plaintiffs and the defendants' pictures, there had been no infringement by the defendant of the Plaintiff's mark.
B. In the case of The Wholesale Colonial Trading Company v The Ikorodu Trading Company the bone of contention was that the respondents whose trade mark is "Orida" sued the appellants who intend registering "Oridara" as their trade mark name on the basis that it should be expunged from the Register as not being registrable so as not to cause deceit or confusion to the public. "Orida" blades began to come to Nigeria from Germany from about 1933 and were popular. After the war broke out, they stopped coming from there; however, respondents imported blades from England bearing "Orida" and in a similar get-up. On 14th October, 1941, the respondents registered "Oridara" as a trade mark. An application to register "Orida" in January 1941, had been refused on the ground that it was not an invented word selected by respondents.
The appellants were bound to succeed in their suit unless respondents succeeded in having "Oridara" expunged from the Register.
The two issues for determination are:
1. Whether "Oridara" should not have been registered, and
2. Whether respondents had a Locus Standi to sue for it to be expunged.
The Court held that as at the time and years before "Oridara" was registered, there was a wide use of "Orida" signifying make of blades and that "Oridara" would be calculated to deceive and was therefore unlawfully registered.
(c) In the case of G. Gottschalk & Co. Ltd v Spruce Manufacturing Co. Ltd the issue was whether a registered trade mark which is similar to another can be considered as an infringement which is calculated to deceive the purchaser. The facts are that the appellants are the registered Proprietors of a trade mark which they have applied for years to textile piece goods manufactured for sale in Nigeria. The principal feature of this trade mark is a hand. The respondents also manufactured piece goods for sale in Nigeria, and the trade mark applied to their piece goods also has a hand as the principal feature. In each case, the Trade Marks have other features which are different. The appellants sought by this action an injunction to restrain the respondents from continuing to infringe their trade marks and claimed damages. The trial Judge dismissed the action as he held that the difference between the two marks was clearly apparent.
The Supreme Court held however that the distinctive and characteristic feature of both marks was the hand, and the respondents adoption of this symbol as the principal feature of their mark was calculated to mislead purchasers. The appeal was allowed and an injunction was granted.
(d) In the case of Aktiebolaget Jonkopin Vulcan v Star Match Co. Ltd the issue was that the Plaintiff was not able to prove their case with enough evidence that the goods was registered and the defendants' did not adduce with enough evidence to prove that their own mark was registered. The Court held that for a trade mark to be infringed there must be evidence that customers are likely to be misled and confused by the infringement.
(e) In the case of Alban Pharmacy Ltd v Sterling Products Int. Inc the appellants were the proprietors of the trade mark "CASTORIA" registered in Nigeria. The product is a special laxative for children and the mark on the bottle is a tiny picture of five children with the words "FLETCHER'S CASTORIA". The appellants based their objection to the registration by the respondents of a proposed trade mark "CASORINA" on the ground that the trade mark is so similar to their registered trade mark "CASTORIA" as to be calculated to deceive. The respondents mark showed the device of a baby in a large picture on the bottle bearing the word "CASORINA". In upholding the objection, the Supreme Court referred with approval to the dictum of Sargent J. in the Matter of Application for registration of a Trade Mark where the learned Judge said:
"The question is not whether if a person is looking at two trade marks side by side there would be a possibility of confusion, the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view of only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection".
The Supreme Court held that in comparing the two marks "CASORINA " namely "RINA" in itself is not free from causing confusion with"RIA" in "CASTORIA". As all the cases show, the court must consider the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone. All these considered, the appellants' counsel has satisfied us that it would be wrong to allow the applicant to register this Trade Mark".
(f) In the case of Bell Sons and Co v Godwin Aka and Anor the evidence in that case was that the registered Trade Mark by the respondents was a label on bottles containing the same commodity as that being sold by the appellants and in exactly the same colour and combination as in the registered Trade Mark of the appellants with the difference only in the aspect of the block capital "B" written in black as an inset on the design of the appellant, the respondents design bore "A" in red.
The trial Judge held that both literate and illiterate customers could distinguish between the block letters A and B because of the difference in shape whether or not they are written in the same colour and that there was therefore no likelihood of deception.
Being dissatisfied, the appellants appealed to the Supreme Court which held that the onus is upon the party seeking to register a trade mark to show that the mark proposed to be registered is not so nearly resembling another one already registered so as to be calculated to deceive and that the respondents had not discharged this onus, and that the mere substitution of the letter "A" in red for the letter "B" in black was insufficient to dispel the confusion which might arise in the mind of a customer who has already always to go by his recollection.
(g) In the Supreme Court case of I.R.C International Limited v Jena Trading the plaintiff company sought an injunction to restrain the defendant from infringing their trade marks. The infringements complained of were the use of the words "DOSEX GOSSAMER" by the defendants which they claimed, infringed their own "DUREX GOSSAMER" and "SENSITIVELY" which, they also claimed, infringed their own "SENSITOL". The defendants denied these allegations and said that they were neither the manufacturers nor the importers of the products and that they have at no time infringed the said marks. They contended that they bought DOSEX GOSSAMER and DOSEX ordinary contraceptive from customers in the ordinary course of business and that their customers purchased these products from overseas manufacturers.
In the course of his submission, the counsel to the defendants informed the court that the plaintiffs were not entitled to judgment on the basis that they did not show that the word "DOSEX" bears any resemblance to the word "DUREX" as to be capable of deceiving customers in respect of the products to which both words are applied and also that the two names are completely different in spelling and pronunciation because the two words are clearly different from each other.
Upholding the Plaintiff's claims, Omo-Eboh J held, "That there's also evidence which is acceptable, true and correct that the goods concerned are usually purchased by literate, semi-litetare and illiterate persons who know the use to which they are put and there is no gainsaying that in a community like our own when the majority of the people are not literate, many buyers are attracted by the colour or packaging of products he wants to buy or identifies the product he wants to buy. Therefore, I hold that the deciding factor in a case like this should not be the spelling or pronunciation of the two names "DUREX" and"DOSEX" but should be more on the sound of the words than anything else".
In the case of Beecham Group Limited v Esdee Food Products Nig Ltd the plaintiffs were the registered Proprietors of the trade mark "LUCOZADE" in respect of their chemical substance used for medicine and pharmacy. They were also the registered Proprietors of the trade mark "LUCOZADE" in respect of substance used as ingredients in foods. The trade marks were registered in 1946 and have been used for their products since then. According to the plaintiffs, the defendants recently put in the market a non-alcoholic beverage using the trade mark "GLUCOSAID", which mark, the plaintiffs claim, was an infringement of their own trade mark. The defendants admitted in their statement of defence that they were registered Proprietors of the trade mark "GLUCO-SAID DRINK" which they registered in 1981.
The learned Judge, Anyaegbunam J in upholding the Plaintiff's claims referred to several authorities and went on to hold that no trader has a right to use a trade mark so nearly resembling that of another trader as to be calculated to mislead incautious purchasers and that the test to be applied may be on ocular observation or by sound.
Being dissatisfied with the judgement of the lower Court, the defendants now appellants appealed to the Court of Appeal where the main issue was whether the appellants product name "GLUCO-SAID" infringed the respondents trade mark "LUCOZADE". Unanimously dismissing the appeal, the Court of Appeal Justices made references to the cases of Bell Sons and Co v Aka and Ors and stated that the law of trade marks is aimed at the subtle as well as to the obvious infraction of the law and both the ears and the eyes must be together involved in the exercise of comparison of the two marks. They also held that the registered Trade Mark should not deceive the public or cause confusion. The Justices upheld the decision of the lower Court and stated that "GLUCO-SAID" in sound is confusing to "LUCOZADE" and will undoubtedly mislead the public.
(i) In the case of Seven-Up Company and Anor v Warri Bottling Company Ltd the plaintiffs claimed that they owned three registered trade marks namely "Seven-Up"; "7-Up" and "Up" but that they saw an advertisement by the defendants in the Daily Times for a product referred to as "Thumbs-Up" which is similar to their product and which might cause confusion in the market.
After so many considerations, the learned Judge, Belgore J in upholding the Plaintiff's claims held that:
1. "Thumbs-Up" can be confused with each of the Plaintiff's three registered marks.
2. Not every customer is a literate and hence it is very important to consider that "7-Up" and "Thumbs-Up" stand the chance of misleading in the ears of less particular people.
(J) In the case of Ferodo Ltd and Anor v Ibeto Industries Limited the issues before the Court was
1. Whether the registered Trade Mark of the First Appellant is simply the word name "Ferodo" and the representation as shown in the Exhibit and
2. Whether the respondent infringed the appellant's registered trade mark.
The facts were that the appellants sued the respondents claiming that the respondents were infringing their trade mark by way of graphic representation of their product contained in a packet being marketed and known as "Ferodo". The appellant's bone of contention was that not only was the word "Ferodo" registered but in addition, it was registered with a colour of red rectangle with black and white checkered strip.
The respondents contended that
1. Their trade mark did not in any way infringe that of the appellant as their trade mark bears the word "Union Supa" while that of the appellant bears the word "Ferodo".
2. There's no trace of connection between the two words.
3. That the appellant must show that the color combination has been registered as a separate mark or as an additional mark and not merely as part of the name mark.
At the end of the trial, the trial Court held that the respondent's trade mark "Union Supa" does not resemble the appellant's trade mark "Ferodo" and dismissed the action. The appellants appealed to the Court of Appeal.
Unanimously dismissing the appeal, the Court of Appeal reviewed Section 67(1) of the Trade Marks Act 1965 on the meaning of "Trade Mark". The Court also reviewed Section 9(1) and Section 10(1) of the Trade Marks Act 1965 in the essential particulars required for registration in Parts A and B of the Register. The Court reviewed Section 9(2) on the meaning of "distinctiveness" and went on to hold that the decoration of a name or word registered as a trade mark does not form part of the trade mark and the Court referred to Regulations 25 of the trade marks Regulations which states that every application for the registration of a Trade Mark shall contain a representation of the mark in the space provided in the application for the purpose.
3. Similar Pictorial Trade Marks and The Illiterate
The decided cases we will look at will indicate that two similar Pictorial representations which will not likely deceive an educated European or African will, however, deceive an illiterate person.
a. In the case of Lagos Stores Ltd v Black stock and Co, where the issue for determination was whether the two labels were so similar as to likely to be mistaken by "an ordinary native". In 1909 in the case of John Holt and Co Ltd v J.J.W. Peters and Co of Hamburg trade marks were registered by Messrs. John Holt and Co containing representations of a ding dog. Messrs Peters had already registered a trade mark containing among other features, the representations of a bird in his mouth. In the course of his judgement Osborne C. J said:
"It is too much to expect an illiterate native to appreciate such differences; he sees the dog, which he associates with the name of Peters and cannot read anything on the label. The standard of a more civilized community does not apply in his case, and he is in greater need of protection in matters of this nature than a European who is supposed to be able to read and write".
b. In the case of C.F.A.O v Miller Brothers representations of a guinea fowl and turkey were also held capable of deceiving the illiterate native.
In conclusion, it must be noted that the question of literacy or illiteracy can arise in the case of word, marks or a mixture of a Pictorial and word representation because the illiterate cannot read, he appreciates differences in lettering.
THE ADMINISTRATION OF TRADE MARKS
There has always been an effective administrative machinery for the practice of Trade Marks in Nigeria and the two principal officers are:
1. The Minister for Trade and Industry charged with the responsibility for trade marks and
2. The Registrar of Trade Marks who under Section 1(1) is appointed by the Federal Civil Service Commission and whose office shall be situated in the Federal Capital Territory, Abuja. The Registrar acts under the control and direction of the Minister as provided in Section 1(2)
THE MINISTER, HIS POWERS AND DUTIES is provided for in Section 45(1)(a)-(i)
THE REGISTRAR, POWERS AND DUTIES is provided for in Section 23(2) and (3), 27(1-3), 30(1-3), 46, 47 and 48.
1. Renewing upon application made by the registered Proprietor for the registration of a Trade Mark as provided for in Section 23(1-3)
2. Requiring or dissolving an association of trade marks as provided for in Section 27(1)
3. Registering on the register the title of an assigned as provided for in Section 30(1)
4. Removing an application a trade mark from the Register that is not in use as provided for in Section 31(1)-(2)(a-b)
5. Removing a trade mark due to non payment of renewal fees as provided for in Section 23(4)(a-b)
6. Rectifying the Register as provided in Section 38(1-5)
7. Striking out or varying registration for breach of condition as provided for in Section 39(1-3)
8. Correcting the Register as provided in Section 40(1-2)
9. Altering a Registered Trade Mark as provided in Section 41(1-4)
10. Registering in the register the title of Registered Users as provided in Section 33(1-5)
11. Awarding costs during processing of applications to any party as he may consider reasonableness as provided in Section 47
Let's examine some cases on the powers and duties of the Registrar namely:
a. In the case of Procter and Gamble Limited v Global Soap and Detergent Industries Limited, the issue before the Court was whether the Registrar of Trade Marks was right in refusing to dismiss the respondent's application for rectification of the register of trade marks and was right in ruling against the appellant that the Registered Trade Mark "Flash" should be removed from the register of Trade Marks for non-use. The Court found that the fact that the trade mark "Flash" of the appellant/applicant had not been used in Nigeria for 5 years up to one month is correct and that the only reasonable conclusion to be arrived at is that the appellant/applicant registered the trade mark with no bona fide intention to use it in Nigeria.
b. In the case of Nabisco Inc v Allied Biscuits Company Ltd, the issue before the Court was whether based on the facts and circumstances of the case, the Registrar of Trade Marks after upholding the appellant's preliminary objection has the power to strike out the matter finally or to adjourn the matter for hearing and grant an enlargement of time to the respondent to file evidence and whether the Court of Appeal was right in its restoration of the ruling of the Registrar of Trade Marks instead of ordering a re-trial having regard to the irregularities and circumstances of the case.
The facts of the case were that the respondents (Allied Biscuits Company Ltd) filed an application to register "RITA" as a trade mark after conducting searches in the Registry of Trade Marks. The application was accepted and numbered. Thereafter, the appellant Nabisco Incorporated, made an application to register the same "RITA" as it's own trade mark. The application of the appellant was advertised in the Trade Mark journal whereupon the respondent commenced opposition proceedings to challenge the registration at the Trade Marks Registry.
When the matter came before the Registrar of Trade Marks, the appellant's Counsel raised a preliminary objection contending that there was no evidence before the Registrar on which the matter could proceed. He had filed a counter statement which was served on the respondent. It was the appellant's contention before the Registrar that the respondent should have filed a statutory declaration upon the receipt of its statement pursuant to Regulation 51 of the Trade Marks Regulations 1967.
After hearing arguments of both counsel, the Registrar upheld the appellants' objection and adjourned for hearing extending the time within which the respondent may file its statutory declaration. At the close of hearing and after considering evidence, the Registrar refused to register the device "RITA" as the appellant's trade mark. The appellant, being dissatisfied with the Registrar's decision appealed to the Federal High Court which Court allowed the appeal and set aside the decision of the Registrar. The respondent, being dissatisfied with the decision of the Federal High Court appealed to the Court of Appeal. The Court of Appeal allowed the appeal and restored the decision of the Registrar. The appellant then appealed to the Supreme Court where in determining the appeal, the Supreme Court considered the provisions of Regulations 51, 52 and 56(1) of the Trade Marks Regulations.
Unanimously dismissing the appeal, the Supreme Court held that:
1. Where an opponent fails to file a Statutory declaration as provided in Regulation 51 of the Trade Marks Regulation 1967, he is deemed by virtue of Regulation 52 to have abandoned his opposition unless the Registrar of Trade Marks directs otherwise.
2. The fact that the Registrar upheld the objection of the Counsel for the appellant and proceeded to extend the time for the provision of evidence and fixed a date for hearing was wrongly, badly and inelegantly made which, however, made was in exercise of the discretion conferred on him by Registration 52.
c. With respect on the powers of the Registrar to rectify or strike out a mark from the Register, see the case of Bethlehem Knitting Factory Limited v Registrar of Trade Marks where the applicants brought an application for an order expunging Trade Mark No. 15963 from the Register. They contended that they were incorporated under the laws of Hong Kong and that they were the original owners in respect of underwear called "Hings" registered in Hong Kong in 1951. By an application in 1974, they sought to register the said trade mark in Nigeria. The Register of Trade Marks, however, pointed to the applicants that the trade mark was already registered in the name of Glamour Garment Factory. In their supporting affidavit, the applicants deposed that the Glamour Garment Factory was aware at the time they applied for registration that the mark "HINGS" did not belong to them and that they had no bonafide claim to it. Besides, the applicants claimed that the Glamour Garment Factory had not used the mark since registration but put it on the register for a fraudulent purpose. The applicants also deposed that the company could not be found at the address given as their principal place of business at the time of incorporation.
Finding for the applicants, the Honourable Judge, Ayinde J made copious reference to Section 14(1) and 31(1) of the Trade Marks Act and said: "In the instant case, I have found that there was evidence of non-use of the Trade Mark, "HINGS" since Glamour Garment Factory registered it in July 1966 and that the company is not in existence at present. In view of the foregoing I am included to acede to the prayers of the applicants for rectification of the Registrar of Trade Marks, and accordingly, I order that the Trade Mark, "HINGS" be expunged from the Register ".
JURISDICTION
See Sections 47, 49-53, 54-56
Courts' Jurisdiction over Trade Marks Disputes
When it comes to the issue of infringement of an unregistered trade mark, the Court holds that they lack jurisdiction in entertaining such matters being filed by the applicant.
1. In the case of Alhaji M. T. Elebute and Anor v Dr. Olugbenga Ogunkua the plaintiff brought an application for an interim injunction to restrain the defendant from using or claiming the plaintiffs' unregistered trade mark or the Proprietorship of it until the final determination of the suit. Counsel for the defendants objected on the ground that the unregistered trade mark could at best be a business name over which the Federal High Court has no jurisdiction. The Court, refusing the application quoted Section 3 of the 1965 Trade Marks Act and went on to say that a person can only institute proceedings to prevent or to recover damages for the infringement of a trade Mark if the trade mark is registered but where the trade mark is not registered, his remedy lies in a State High Court in an action for passing off. In the present case, the Court held that the Plaintiff's trade mark has not been registered and therefore follows that by operation of law, the Plaintiff's are not entitled to bring the application.
2. In the case of Societe Bic S.A v Charging Industries Limited and Anor the Court held that an action for infringement of a Trade Mark before the Federal High Court cannot be founded on an unregistered trade mark. The Federal High Court can assume jurisdiction if the applicant relies on the tort of passing off as long as the trade mark is registered. Section 3 provides for the effect of non-registration. It provides thus, "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".
What does Passing off mean?
"Passing off" is a legal term used in intellectual property law, particularly in common law jurisdictions, to describe a situation where one party misrepresents their goods, services, or brand as being associated with another party, leading to confusion among consumers. It is commonly used in trademark disputes to prevent businesses from unfairly benefiting from the reputation of an established brand. For example, if a company sells shoes with a logo that closely resembles Nike's swoosh, it could be accused of "passing off" its products as Nike's, misleading customers into believing they are buying an authentic Nike product.
3. In the Supreme Court case of Patkun Industries Limited v Niger Shoes Manufacturing Co Ltd where the respondents claimed against the appellant and two others at the Federal High Court for a declaration that the appellant and the other defendants are not entitled to infringe their registered trade mark and pass-off goods not of the respondents manufacture or merchandise. The defendants/appellants in their statement of defence denied passing off the goods as those of the respondents but also contended that the Federal High Court has no jurisdiction to entertain the suit and that it should be struck out. The appellant filed an application in respect to that where the Federal High Court ruled that it had the jurisdiction to hear the suit and dismissed the application filed by the appellant.
On appeal to the Court of Appeal, they dismissed the appeal as well by the appellants who then further appealed to the Supreme Court.
The Supreme Court unanimously dismissed the appeal and stated as follows:
1. That the true intendment and purpose of Section 3 of the Trade Marks Act 1965 are that -
a. No person shall sue for the 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 or passing off of a registered trade mark.
2. Where a Statutory provision is in conflict with the common law, the Common Law gives way to the statue. In the Instant case with respect to the provisions of Section 3 of the Trade Marks Act 1965, it confers additional right of action by preserving the right of action of "Passing off" in respect of such goods.
3. Where a Common Law right has been enacted into a Statutory provision, it is to the statutory provision so made that resort must be had for such rights and not to the Common Law.
4. A "passing-off" action arising from the infringement of Plaintiff's registered trade mark, it's common law origin notwithstanding is clearly within the jurisdiction of the Federal High Court as a civil cause of matter.
5. Order 11 Rule 6 of the Federal High Court Civil Procedure Rules 1976 allows joinder of several causes of action in the same suit if both can be conveniently tried or disposed off together.
6. Two distinct claims arising from the same transaction can be included at the time of the issue of the writ in one writ of summons.
Also read the Supreme Court case of A.B. Chami & Co. Ltd v W.J. Bush and Co. Ltd; The Welcome Foundation Limited and Anor v Ranbaxy Montrari Nigeria Limited; Exxon Corporation v Exxon Nominees Industries; Ayman Enterprises Ltd v Akuma Industries Limited and Ors; Nigeria Distillers Ltd v Rufson Distilleries Ltd and Ors; Primrose Nigeria Ltd v Mr. Atul Singh and Anor
REMEDIES FOR THE INFRINGEMENT OF TRADE MARKS
The remedies are
1.Damages
The available damages that are available to a Plaintiff are
A. General or Special Damages,
B. Exemplary or Punitive damages and
C. Nominal damages.
In the case of Beecham Group Limited v Esdee Food Products (Nigeria) Ltd the plaintiffs who were registered Proprietors of the trade mark "LUCOZADE" had brought an action for infringement of their trade mark against the defendants who called their own product GLUCOS-AID. The Learned judge upheld the Plaintiff's claims and went on to consider the issue of damages. The Plaintiff's in their statement of claim, claimed damages of N500,000 (Five hundred thousand naira) or account of profits made by the defendants. The assessment was affirmed by the Court of Appeal.
2. Injunction
In the case of Soul Publications Limited v Sweet Hearts Publication Ltd and Anor, the issue for determination was whether the Court should access to the Plaintiff's prayers for an interlocutory injunction in the terms contained in the Plaintiff's motion papers. The Court had earlier in the form of Anton Piller Order restrained the defendants from publishing, selling, offering for sale or advertising any magazine or publication under or in the name of and or title of "HEARTS" or "SWEET HEARTS" or under or any other name and or title of which the word HEARTS forms part pending the determination of the motion on notice filed herein.
The Court upheld the Plaintiff's claim to an interim injunction. Read the case of Primrose Nigeria Ltd v Mr. Atul Singh and Anor and Dyktrade Ltd v Omnia Nigeria Ltd
3. Anton Piller
An Anton Piller Order is a type of court order that allows a plaintiff to search the defendant’s premises and seize evidence without prior warning. It is used in cases where there is a serious risk that the defendant might destroy or conceal crucial evidence if notified in advance.
This order is common in intellectual property and fraud cases, ensuring that important documents, data, or materials are preserved for legal proceedings. It is considered an extraordinary remedy and is only granted under strict conditions, such as:
1. Strong prima facie case – The plaintiff must show compelling evidence of wrongdoing.
2. Serious damage – The potential harm from the defendant's actions must be significant.
3. Real risk of evidence destruction – There must be a genuine concern that the defendant will destroy or hide evidence.
Because of its intrusive nature, the court requires strict safeguards to prevent abuse, including appointing an independent supervisor to oversee the execution of the order.
In the case of Ferodo Ltd v Unibros Stores, an Anton Piller Order was granted where the Plaintiff's who were the sole distributors in Nigeria of Ferodo Linings, claimed that their products were being sold by the defendants who were not their customers.
The Court granted the following orders:
a. The defendants are to permit up to 6 persons including a police officer to enter upon the premises of the defendants for the detention, preservation, and inspection of any movable property or thing that would constitute a breach of injunction prayed for in the suit.
b. The defendants are to allow the Plaintiff's Solicitor to inspect all or any documents in the custody or under the control of the defendants relating to the matters in question in this suit and
c. The defendants, by themselves, their servants, or agents are restrained from repeating any infringement of the Plaintiff's registered trade marks.
Read the case of Jay Laboratories (Nigeria) Ltd v James L. Study and Others
4. Delivery up of goods
The Court grants this remedy where the infringing goods will be ordered to be delivered up to the defendant so as to be destroyed. This relief was granted in the case of Beecham Group Limited v Esdee Food Products Nigeria Ltd were the defendants product marked "GLUCOS-AID" drink infringed the Plaintiff's drink marked "LUCOZADE"; the Court held, inter alia, that the defendants should deliver upon oath for destruction all the goods, cartons, wrappers, blocks, discs or stamps bearing any mark or get up, that would be in breach of the injunction which had been granted.
5. Account of profits.
The Plaintiff is entitled to the profit on each item wrongly sold and he does not have to prove that the sale was to a deceived customer.
GODFREY OKOYE UNIVERSITY
FACULTY OF LAW
COURSE TITLE: INTELLECTUAL PROPERTY LAW 2
COURSE CODE: LAW 504 SESSION: 2024/2025 SEMESTER: SECOND
LECTURER: Revd. Victor Munachi Nzebunachi Esq, FICPAN, MCArb
Barrister and Solicitor Supreme Court of Nigeria
LL.B (HONS), B. L, PGD, LL.M, B.TH
Lecturer Intellectual Property Law, Godfrey Okoye University
Email: nzebunachivictor1000@gmail.com; Victor.nze@gouni.edu.ng
Tel: +2347066791566
TOPIC 2:
1. HISTORICAL DEVELOPMENT
2. PARENTABLE INVENTIONS
3. THE PATENT GRANT
4. INFRINGEMENT OF A PATENTS
5. THE ADMINISTRATION OF PATENTS
6. JURISDICTION
7. REMEDIES
1. HISTORICAL DEVELOPMENT
INTRODUCTION
The essence of Patent is to grant protection to an invention under the law which is of tremendous importance to technicians and technologists; to medical scientists and space scientists; to lecturers, researchers and professors in institutions of higher learning; to physicists, biologist, chemists, agriculturist, and pharmacists; to computer engineers, telecommunication engineers, marine engineers, electrical and mechanical engineers and other professionals.
Due to low pace of technological inventions and developments in Nigeria, there are few Inventions for which protection has been sought through the grant of a patent which under the Copyright and Trade Marks Act, Nigeria derives her law on Patents from the English Law which we will look into the English Law for the historical origins of Patents.
2. PARENTABLE INVENTIONS
1). What is an Invention?
Under the Nigerian Law, there is no definition of an invention. In the English case of Reynolds v Herbert Smith and Co Ltd he opined, "Discovery adds to the amount of human knowledge, but not merely by disclosing something. Invention necessarily involves also the suggestion of an act to be done and it must be an act which results in a new product or a new result or a new process or a new combination for producing an old product or an old result".
Section 1(5) Patents and Designs Act Cap P.2, Laws of the Federation 20042 provides that principles and discoveries of a scientific nature are not Inventions for the purposes of this Act.
2). When will an invention be deemed Patentable?
Section 1(1) Patents and Designs Act, Cap. P.2, Laws of the Federation 2004 provides that Subject to this section, an invention is patentable -
(a) If it is new, results from inventive activity and is capable of industrial application; or
(b) If it constitutes an improvement upon a patented invention and is also new, must results from inventive activity and must be capable of industrial application.
(a) If it is new, results from inventive activity and is capable of industrial application;
Under this heading, the aim is that of newness or novelty which is a sine qua non of patentability. See Sections 1(2)(a)-(c); Section 1(3).
(i) Publication by Oral disclosure
If the inventor incautiously discloses his invention to someone else, he may forfeit his right to a patent for invention and by so doing, the person to whom he discloses the invention must be free to pass on the information whether inadvertently or fraudulently notwithstanding the structure put upon him by the inventor at the time when the disclosure was made.
(ii) Publication by document
Mere exhibition in a bookshop or display on a library shelf constitutes publication and it is therefore not necessary that the document should have been sold in order to constitute publication.
(iii) Prior Use
An invention can be made available to the public other than by the written or spoken word which can be 'Used' and if 'Used' in public, this may constitute an opportunity for the public to learn of the invention. For example, where the patent sued on is for a lock and a similar lock has been used on a gate adjoining a public road for sixteen years prior to the patent, this will be held to invalidate the patent. In the English case of Femento Industrial S. A. v Mentmore Manufacturing Co. Ltd the Court of Appeal had to consider the question whether the prior user of certain ball point pens by three individuals to whom gifts of them were made in circumstances which left the recipients of the gifts free to use the pens as they wished, amounted in law to an anticipation of the invention. Lord Evershed M.R held, "that if those few pens came to the hands of the three recipients in circumstance which left them free at law and in equity to do whatever they liked with them and what they discovered from them, then it would appear to follow that the Plaintiffs in this case must fail".
(b) If it constitutes an improvement upon a patented invention and is also new, must results from inventive activity and must be capable of industrial application.
In other words, it does not matter that a process similar to it has already been invented; as long as this new process constitutes an improvement on the old process and it satisfies all the requirements of novelty etc, then it will be deemed Patentable. See the case of James Oitomen Agbonrofo v Grain Haulage and Transport Ltd where the Plaintiff sued the defendants for infringing his patent grant. The Plaintiff had invented a harmless electric water boiler which, unlike the imported ring boiler, would prevent fire disasters which does not shock but will glow red and hot like the imported ring boiler. The Plaintiff's device was capable of preventing fire disasters because it would not work if it is not filled with water, the reason being that water was made one of the components in its working mechanism. The Plaintiff als mentioned two identification characters of the Oitomen harmless boiler which are-
1. The perforation of the filter.
2. The material used,
a stainless steel product which he claims no one has ever used before in a heating device.
The Plaintiff was granted a patent for his invention on the ground that he satisfied the requirements of novelty and industrial applicability which are the key requirements of patentability.
3). Non-Patentable Inventions
Section 1(4)(a-b) provides patent that can never be granted.
3. THE PATENT GRANT
It is important to state that the right to a patent is not vested in the true inventor rather the right to a patent is vested in the Statutory inventor, that is to say, the person who, whether or not he is the true inventor is the first to file an application for the grant of the patent. Persons to whom the invention has been assigned and persons to whom a contractual license has been granted also have a right to apply to register their titles to the patent.
The Patent and Designs Act also provides a guide as to who has a right to a Patent including the duration and renewal of such a patent and the Statutory provisions also gives guidelines as to the procedure for a patent application, the extent of the right conferred upon the patentee and the statutory exceptions to the patentee's right.
A. CATEGORIES OF PERSONS WHO MAY APPLY TO REGISTER A PATENT
1. Statutory Inventors is provided for in Section 2(1-3)
2. Persons who employ or commission others to make an invention is provided for in Section 2(4)
3. Persons to whom the invention has been assigned is provided for in Section 24(1-5). See the case of Arewa Textiles Plc and Ors v Finetex Limited where the respondent instituted an action at the Federal High Court Kaduna claiming an infringement by the appellants of its registered patent No. RP 12024 in respect of a "method and apparatus" of producing textile materials. The process which was registered under the patent was described as a "method of and apparatus for impregnating a textile web with an impermeable medium". The respondent in its pleading and evidence at trial claimed that it invented the technology with Boaty Company Limited, its technical partners, whereupon the patent was granted. The appellants denied the averments and averred that the 1st appellant had been engaged in the production of textile fabrics in Nigeria since the early 70's and that the company has been producing textile fabrics with printing on both sides since 1980.
Evidence before the trial Court revealed that the respondent company was incorporated in 1993 and that the patent which it sought to enforce was in fact developed by one Kong Sang Wong who assigned it to Boaty Company Limited which registered same as patent No. RP 12024 in its own name. In 1994, Boaty Company Limited assigned the said patent to the respondent in the following terms:
"Now therefore, I/We hereby assign the said invention to the assigned(s) in so far as Nigeria is concerned, together with the right to apply for Letters patent in his/her own name and I/We the assignees hereby accept the assignment".
There was, however, no evidence that the respondent ever registered this patent in Nigeria. At the conclusion of hearing, the trial Court granted the claims of the respondent and awarded damages against the appellants. Being dissatisfied, the appellants appealed to the Court of Appeal where the Court unanimously allowed the appeal. On the effect of an unregistered assignment or transfer of patent, Salami, JCA who delivered the leading judgment held, inter alia,
"The right to apply for Letters patent in respect of an invention by an assignee thereof under his own name is not a mere moral adjuration. It is a duty under Section 24(1) of the Patents and Designs Act Cap. 344 Laws of the Federation of Nigeria, 1990 to register assignment, transfer or interest held in joint ownership of a patent. This is because by virtue of Section 24(1) and (3) of the Patents and Designs Act an assignment or transfer thereof shall have no effect against third parties unless it has been registered and the prescribed fees paid. In the instant case, there is no evidence of such registration and payment of the requisite fees before the Court and in the absence of such vital evidence, the respondent's cause of action against the appellants is inchoate because the assignment would have no effect ".
4. Persons to whom a Contractual Licence has been granted is provided for in Section 23(1-6)
Licences of Right is provided for in Section 10(1-5)
B. DURATION AND RENEWAL OF PATENTS is provided for in Section 7(1-3). Patents are renewable annually and will, therefore, be rendered invalid if they are not renewed annually as provided in Section 7(2) . In the case of Jansen Pharmaceutical N.V. v The Registrar of Patents and Designs, the Plaintiff was granted in the United Kingdom a Patent relating to Imidays Thiawoles and the process for preparing them. The grant was renewable annually in the United Kingdom. The Plaintiff registered the patent in Nigeria in 1969 in accordance with the provision of the Registration of United Kingdom Patents Act, Cap. 182 of the Laws of Nigeria, 1958 where in the Act, there is no provision for payment of renewal fees whereas under the Patents and Designs Decree No.60 of 1970 which repealed the 1958 Act, provision is made for the payment of annual renewal fees.
The Plaintiff, however, failed to pay the annual renewal fees within the stipulated time as a result of which the Registrar of Patents declared that the Plaintiff's patent had lapsed. The Plaintiff now brought this action seeking a declaration that notwithstanding the provisions of the Patents Act, 1970, the United Kingdom Patents registered in Nigeria are not subject to renewal in Nigeria.
Dismissing the Plaintiff's claims, the court held that since Schedule 2 of the Patents and Design Decree provides that a patent registered under the Registration of United Kingdom Patents Act of the Laws of Nigeria, 1958 must be treated in Nigeria as if it has been granted under the Decree, it follows that such patent will continue to be valid as long as it complies with the provisions of the Decree.
Being dissatisfied with the judgement of the trial Court, the Plaintiff's (now appellants) appealed to the Court of Appeal which unanimously dismissing the appeal, the Court of Appeal agreed with the decision of the trial Judge and stated that since Schedule 2 of the Patent and Design Act provides that a Patent registered under the Registration of the United Kingdom Patents Act, Cap. 182 of the Laws of the Federation, 1958 must be treated as if it has been granted under the 1970 Act, it follows that such a patent remains valid as long as it complies with the provisions of the 1970 Act as far as it is applicable. The Court of Appeal further stated that Patents registered under the Registration of United Kingdom Patents Act are now deemed to be registered under the Patents and Designs Act, 1970 and the provisions of the latter Act relating to payment of annual renewal fees are applicable to such Patents.
C. THE PROCEDURE FOR PATENT APPLICATION
With respect to the registration for a Patent, we have a Registrar of Patents and Designs and there is a Register in which parents are recorded.
(i) Application for Patent Grant
The application for the grant of a patent signed by the applicant or his agent must be on Form 1 as provided in Rule 8(1) of the Patents Rules (Patents and Designs Act Cap P.2.) Laws of the Federation, 2004.
The application which relate to only one invention is provided for in Rule 11 of the Patents Rules (Patents and Designs Act Cap P.2.) Laws of the Federation, 2004.
(ii) The Specification is provided for in Rule 12(1).
(iii) The Claim is provided for in Section 12(2).
(iv) Examination of application for Patent is provided for in Rule 13-15. If on examination of an application, it is discovered that the formal requirements of Rule 11 have not been complied with, the Registrar must reject the application. See also Section 4(1-4).
(v) Grant of the Patent is provided for in Rule 15.
(vi) Registration and Publication is provided for in Rule 16(a-b).
D. EXTENT OF THE RIGHT CONFERRED UPON A PAYENTEE is provided for in Section 6(1-3)(b).
E. STATUTORY EXCEPTIONS TO THE EXCLUSIVE RIGHT TO THE USE OF A PATENT
(a) Compulsory Licence is provided for in First Schedule Part 1 paragraph 1 (a-d) Patents and Designs Act, Cap. P.2, Laws of the Federation, 2004.
(b) Other Statutory Exceptions to the exclusive right to the use of a Patent Grant is provided for in First Schedule Part 1 paragraph 2 (a-b); also see the provisions of the First Schedule Part 2 Paragraph 15-17,20(a-f)
4. INFRINGEMENT OF PATENTS
(1) What constitutes an infringement of a Patent is provided for in Section 25(1-4) . A person shall infringe only if his acts relate to commercial or industrial activities as provided for in Section 6(3)(a-b).
(2) Enforcement of the right of a Patentee
In the case of Pfizer Inc v Polyking Pharmaceutical Limited and Anor , the Plaintiffs averred that they were the owners of Patent RP 9708 in respect of a chemical compound, PIROXICAM but that the defendants infringed the patent by importing for sale Rossiden Capsules which contained the same compound PIROXICAM as that of Plaintiff's. The defendants filed pleadings but they did not turn up to defend the action but the gist of their defence was that their own patent was different from that of the Plaintiff because they produced it by different processes. However, the expert witness called by the Plaintiff disagreed with the view of the defendants and asserted that regardless of the possibility of producing any chemical product by different processes, so long as the products of the different processes were the same compound, they cannot differ in potency.
After so many deliberations, finding for the Plaintiffs, the court held that, "the compound in the defendant's drug, Rossiden is the same PIROXICAM as the one in the Plaintiff's No. PR 9708 and as such, the defendants have infringed the Plaintiff's patent No. PR 9708. See other cases of James Oitomen Agbonrofo v Grain Haulage and Transport Ltd (1998) FHCL. 236; Arewa Textiles Plc and Ors v Finetex Limited (2003) 7 NWLR. 322.
5. THE ADMINISTRATION OF PATENTS
PATENTS ADMINISTRATION
The two principal officers are -
1. The Minister charged with the responsibility for Patents i.e. the Minister for Trade and Industry and
2. The Registrar of Patents and Designs, who under Section 28(1) of the Act is appointed by the Federal Civil Service Commission who acts under the control and direction of the Minister.
(1) THE MINISTER: HIS POWERS AND DUTIES is provided for Section 23(6), 27(1-4); First Schedule, Part 1, Paragraph 13; Section 28(6) ; First Schedule, Part 2, Paragraph 15-17.
(2) THE REGISTRAR OF PATENTS AND DESIGNS: POWERS AND DUTIES is provided for in Section 3-5; Section 28; Rule 28, 29, 36, and 37 Patents Rules Cap P.2, Laws of the Federation, 2004.
6. JURISDICTION
Court's Jurisdiction over Patent's Disputes is provided for in Section 26(1-3).
7. REMEDIES are 1. Damages, 2. Injunction, 3. Account of Profits and 4. Delivery Up.
TOPIC 3:
1. Historical Development
2. Registrable Designs
3. Designs' Proprietorship
4. Infringement of Industrial Designs
5. The Administration of Industrial Designs
6. Jurisdiction
7. Remedies
1. HISTORICAL DEVELOPMENT
Industrial designs are primarily those elements incorporated into mass produced products that aim to enhance their attractiveness by their appearance which today when so many consumer products are technically very similar, designs becomes an important distinguishing factor.
2. REGISTRABLE DESIGNS
A. What is an industrial design is provided for in Section 12. In the case of Serg Aims Aluminum Products Limited v Stanley Akagba and Ors , the Plaintiff had claimed against the defendant jointly and severally for the sum of N500,000 being general damages for the infringement or breach of the exclusive right of the Plaintiff disagreed to the production, manufacture and marketing of the product carried under the Certificate of Registration of Design issued to the Plaintiff, pursuant to the Patent and Design Decree 1970. It was the Plaintiff's case that it's registered design related to ranges of Prime Steel Casement Window, Bonsue Door, Universal Steel Door and Sleep Well Door. The items were also of the same dimension. However, as the Plaintiff claimed, the first defendant who was a former marketing manager of the Plaintiff started to divert the jobs of the plaintiff to his own company. He had also been canvassing for jobs from the Customers of the Plaintiff at lower price.
The defendant, however, claimed, through his counsel that since ranges and dimensions were not protected under the Act, they were accordingly free materials to which the Plaintiff could not lay claim as the creator. Egbo-Egbo, J did not subscribe to this view and said, inter alia: "Unfortunately I do not subscribe to such general view. It is obvious ranges and dimensions make up what we call designs. If these designs have been registered in Exhibits B-B1, it is legally wrong for the defendant to copy them. It is the invention of the author, in this case the Plaintiff, which the law seeks to protect when such inventions are registered. To copy them into its almanac and advertise it is a violation of the Plaintiff's rights".
B. When will an Industrial Design be deemed registrable?
Section 13 talks about Registrable Designs. Sub (1) provides: Subject to this section, an industrial design is registrable if
(a) It is new; and
(b) It is not contrary to public order or morality.
(a) An Industrial Design must be new - Section 13(1)(a),(2-3)
Accordingly, newness or originality is a sine qua non of regustrability. On the definition of what is new and original, Duckley L.J in the English case of Dower Limited v Numberger opined: "The word 'original' contemplates that the person has originated something that by exercise of intellectual activity he has started an idea which has not occurred to anyone before that a particular pattern or shape or ornament may be rendered applicable to the particular articles to which he suggests that it shall be applied. If that State of things be satisfied, then the design will be original although the actual pattern or shape or whatever it is which is being considered is old in the sense that it has existed with reference to another article before. The word 'new or original ' involves the idea of novelty either in the pattern, shape or in the way in which an old pattern, shape or ornament is to be applied to some special subject matter".
In the case of Sunday Uzokwe v Densy Industries (Nig) Ltd and Anor the issue for determination before the Supreme Court was whether the design (No.4464) was new at the time it was registered, in compliance with the requirements of Section 13(1)(a) of the Patents and Designs Act. The case of the appellant at the trial was that he is the registered owner of the Design 4464 in respect of Kitchen Plastic where he claimed that at the time of the registration of the design in March 1991, it was a new design which he created and started the production of plastic containers after the registration of the design. However, he discovered shortly after the registration that his right had been infringed by the Respondent. The first Respondent, however, countered that the design was not new and that the appellant was in fact not the creator of the design. The respondent further said that it was a common design which was available in the market and which had been produced before the registration of the appellant's design. The second respondent also denied newness of the design.
The learned Judge found in favour of the appellant and awarded N10,000 damages against the respondents. The appeal of the respondents to the Court of Appeal was successful where the Court opined that:
(1) In the instant case, only Section 13(1)(a) is relevant to the determination of whether or not design No.4464 is new.
(2) A party who alleges the earlier existence of a design must certainly prove such existence and the most fundamental way of proof is the tendering of the design in court. It is only when the court physically sees and examines the earlier design along with the other one that a judicious conclusion will be drawn.
The appellant being dissatisfied with the judgement of the Court of Appeal appealed to the Supreme Court where the Court upheld the decision of the Appeal Court and held that: "The design of the Plaintiff for the Kitchen containers is not before me in this suit. The design of the first defendant is, however, before me. A party who alleges the earlier existence of a design must certainly prove such existence and the most fundamental way of proof is the tendering of the design in court". See also the cases of Controlled Plastic Limited v Black Horse Plastic Industries Limited (1990) F.H.C.I.180; F.O. Ajibowo Co. Ltd v Western Textiles Mills Limited (1976) 7 S.C.97; Iyeru Okin Plastic Industries Limited v Metropolitan Industries (Nig) Limited (1986) F.H.C. 336; Chukwumereje and Sons (W.A) Limited and Ors v Patkun Industries Limited and Ors (1989) F.H.C.L.R.423; and Peter E. Venture (Nigeria) Limited v Gazassonner Industries Limited and Anor (1998) 6 N.W.L.R.619.
(b) An Industrial Design must not be contrary to public order or Morality
Public order or morality must be deemed to cover such matters as good government, the administration of justice, public services, national economic policy and the proper interest of the State and society. Industrial Design must not run contrary to the attainment of the above objectives.
C. Non-Registrable Industrial Designs
The Act did not specify or state which designs should be excluded for registration. However, the following should be excluded which are:
(a) works of sculpture other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process
(b) wall plagues and medals
(c) printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, coupons, dressmaking patterns, greeting cards, leaflets, maps, plans, postcards, stamps, trade advertisement, trade forms, and cards transfers and the like.
3. DESIGNS PROPRIETORSHIP
A. Categories of persons who may apply to register an Industrial Design
1. Statutory Creators is provided for in Section 14(1-3) which talks about right to registration.
2. Persons who employ or commission others to create a Design is provided for in Section 14(4)
3. Persons to whom the design has been assigned is provided for in Section 24(1-3)
4? Persons to whom a Contractual Licence has been granted is provided for in Section 23(1-6)
B. DURATION AND RENEWAL is provided for in Section 20(1-3)
C. THE PROCEDURE FOR REGISTRATION
The Patents and Designs Act contains guidelines on the procedure for the registration of an Industrial design.
1. Application for Registration is provided for in Section 15(1)(a-b),((2-3)
2. Examination of application for Registration is provided for in Section 16(1-2)
3. Registration and Publication is provided for in Section 17(1-3)
4. Application under sealed cover is provided for in Section 18(1-2)
D. EXTENT OF THE RIGHT CONFERRED UPON THE PROPRIETOR OF AN INDUSTRIAL DESIGN is provided for in Section 19(1-3)
E. STATUTORY EXCEPTIONS TO THE EXCLUSIVE RIGHT TO THE USE OF AN INDUSTRIAL DESIGN
(a) Where the product has been lawfully sold in Nigeria
By the combined effect of Section 13(3) and 19(2)(b) and (3) of the Patent and Design Act Cap P2 Laws of the Federation 2004, the right of exclusiveness conferred on the registered owner of an Industrial design by the provisions of Section 19(2) of the same Act where the product has been lawfully sold in Nigeria before the application for registration. See the cases of Peter E. Venture (Nigeria) Limited v Gazassonner Industries Limited and Anor (1998) 6 N.W.L.R. 619; Oduntan v General Oil Limited (1995) 4 N.W.L.R. (Pt 60) 325; Chukwumereje and Sons (W.A) Limited and Ors v Patkun Industries Limited (1989) F.H.C.L.R. 423; Black Horse Plastic Industry Limited v Ceplas Industries Nigeria Ltd (1993) F.H.C. 348.
(b) Where the design has been made available to the Public
Where the design has been made available to the public, this will invalidate newness and render the design unregistrable. See the case of F.O. Ajibowo Co. Limited v Western Textile Mills Limited (1976) 7 S.C. 97; Iyeru Okin Plastic Industries Limited v Metropolitan Industries (Nigeria) Limited (1986) F.H.C.L. 336.
4. INFRINGEMENT OF INDUSTRIAL DESIGNS
(1) What constitutes an Infringement of an Industrial Design is provided for in Section 25(1-4)
(2) Enforcement of the right of a Proprietor of an Industrial Design is provided for in Section 19(1-3). See the cases of Sumal Foods and Confectionary Limited v Wholesome Processing Co. Ltd (1990) F.H.C. 143; Sargent Aims Aluminum Products Limited v Stanley Akagba and Anor (1994) F.H.C.S. 188; Controlled Plastic Limited v Black Horse Plastics Industries Limited (1990) F.H.C. IB. 180.
5. THE ADMINISTRATION OF INDUSTRIAL DESIGNS
The two principal officers are:
1. The Minister charged with the responsibility for Industrial designs i.e. the Minister for Trade and Industry and
2. The Registrar of Patents and Designs. See Section 28(1)
1. The Minister: His Powers and Duties is provided for in Section 30(1)(a-c). Also see Sections 23(6),28(6),27(1)
2. The Registrar of Patents and Designs: Powers and Duties is provided for in Sections 15(1),16(1-2),17(2-3), 28(2),(6),24, 21(2)(c-d), 22(2)(a)(i-iii), 22(3)(a-c), 23(b)
6. JURISDICTION
Court's Jurisdiction over Industrial Designs' disputes is provided for in Section 26(1-3)
7. REMEDIES
1. Damages
a. Special or General damages
b. Exemplary or Punitive damages and
c. nominal damages. See the case of Chanrai and Co (Nigeria) Limited v Khawan (1965) All Nigerian Law Reports 189; Controlled Plastic Limited v Black Horse Plastics Industries Limited (1990) F.H.C.L.180; Sumal Foods and Confectionery Limited v Wholesome Foods Processing Co.Ltd (1990) F.H.C.IB.143; Sargent Aims Aluminum Products Limited v Stanley Akagba (1994) F.H.C.S. 188.
2. Injunction: See the cases of Black Horse Plastics Industry Limited v Ceplas Industries (Nigeria) Limited (1998) F.H.C.L.348; Peter E. Venture (Nigeria) Limited v Gazassonner Industries Limited and Anor (1998) 6 N.W.L.R. 619 C.A; Sargent Aims Aluminum Products Limited v Stanley Akagba and Anor (1994) F.H.C.S. 188 at 210.
3. Delivery Up: See the case of Sumal Foods v Wholesome Foods Processing Co Ltd (1990) F.H.C.I. 143 at P. 167; Controlled Plastics Limited v Black Horse Plastics Industries Limited (1990) F.H.C.I. 180 at p.199.
4. Account
- Lecturer : Victor Munachi Nzebunachi