EFFECTS OF TRADEMARK REGISTRATION IN AN INFRINGEMENT ACTION IN NIGERIA
Securing exclusivity of a trademark (TM) is the only way to successfully challenge the infringement of one’s mark by a third party. The registration of a mark in Nigeria gives the proprietor exclusive right to the use of the mark in relation to those goods in Nigeria[i] and to bring an action against third parties who infringe on the registered mark. The right to bring an action for infringement stems from the registration of the mark and not the use of the mark. The date of registration is deemed to be the date of filing however, a proprietor can only institute a proceeding to prevent or recover damages for infringement when the certificate of registration has been issued[ii].
What Amounts to Infringement
The right of a proprietor is deemed to be infringed by any person who uses a TM identical with or so nearly resembling the registered TM as to be likely to deceive or cause confusion in the course of trade in relation to goods in respect of which it is registered[iii]. The true test of likelihood of deception is whether-
- the totality of the proposed TM is such that it is likely to cause mistake or deception, or confusion, in the minds of persons accustomed to the existing TM[iv]; or
- the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone would be likely to be confused or deceived[v].
Furthermore, in testing for the likelihood of deception it is necessary to compare the two marks not only visibly but also phonetically[vi].
Limitations to the Rights Conferred
The proprietor’s exclusivity does not extend to:
- his predecessor in title who has continuously used an unregistered TM which predates the proprietor’s TM[vii], or
- an honest concurrent user without prior knowledge[viii]; or
- a person’s bona fide use of his name or the name of his place of business or that of his predecessor in title[ix]; or
- a person’s bona fide description of character or quality of his goods[x].
It is therefore imperative that a proprietor who seeks TM protection register’s the TM in Nigeria. Even though the proprietor of an unregistered TM can always resort to the common law remedy of Passing Off, it is easier to prove infringement than Passing Off. This is because the Passing Off remedy is only available where the proprietor can show amongst others, established goodwill or reputation attached to the goods or service in question. The process of establishing goodwill can also be cumbersome. On the other hand, all that is required to prove infringement is that the TM is registered.
COMBATING COUNTERFEITING VIA REGULATORY AGENCIES IN NIGERIA
The issue of counterfeiting has been of major concern in Nigeria such that the government is now proposing stricter punishments like life imprisonment for the counterfeiting of drugs. Presently, there are several anti-counterfeiting strategies available in Nigeria, these include civil remedies, criminal actions and actions by regulatory agencies. The Nigerian law does not provide any specific civil remedies for counterfeiting. The parties seeking civil remedies usually resort to civil actions for trade mark/copyright infringement, to protect their intellectual property rights. These civil remedies are sought in the Federal High Court, which is a specialized court with exclusive jurisdiction for intellectual property matters. On the other hand, criminal sanctions for combating counterfeiting are primarily embodied in three statutes, the Merchandise Marks Act[xi], Trade Malpractices (Miscellaneous Offences) Act[xii] and the Counterfeit and Fake Drugs and Unwholesome Processed Food (Miscellaneous Provisions) Act[xiii]. Prosecution is commenced by making a complaint to the police, and the offences can be tried both by the High Courts and the Magistrates Courts. Upon conviction of an offence under these statutes, the prescribed punishment ranges from a fine of N50,000 – N500,000 and/or for a term of 2 to 15 years imprisonment.
In addition to these measures, parties may also expedite the process of redress by seeking the assistance of regulatory agencies such as National Agency for Food and Drug Administration and Control (NAFDAC), Standards Organisation of Nigeria (SON) and Nigeria Customs Service (NCS) in combating the counterfeit of their products in the market. We would now examine these regulatory agencies.
NAFDAC is empowered to seize and destroy counterfeit products and seal-up premises of offending persons or bodies where it has reasons to suspect that counterfeiting activities are carried out in a premises[xiv]. NAFDAC has a police squad attached to it that assists in the enforcement. The suspected counterfeiters are arrested and interrogated. Where the counterfeit products are found in a store, NAFDAC tries to trace the products beyond the store to the manufacturer. NAFDAC then examines the product to determine if there is a NAFDAC registration number on the label after which NAFDAC confirms through laboratory analysis that the products are indeed counterfeits. Once this is confirmed, the NAFDAC legal department prosecutes offenders in court.
SON the statutory body vested with the responsibility of standardizing and regulating the quality of all products in Nigeria. SON has implemented a set of guidelines for exports to Nigeria called the Standards Organization of Nigeria Conformity Assessment Programme (SONCAP). SONCAP verifies the conformity of all products exported to Nigeria except those that appear on the Excluded Product List and enforces their standards. SON also implemented a Mandatory Conformity Assessment Programme (MANCAP) aimed at ensuring that all locally manufactured products conform to relevant Nigeria Industrial Standards before they are presented to the consumers. A Brand owner who has information about the counterfeiting of its product may make a formal complaint at the SON office. Relevant information evidencing that the product is counterfeit and indicating the source of the counterfeit product may also be provided to SON. SON would then conduct an investigation to establish that the counterfeit product is substandard and prepare a report. Depending on the outcome of this investigation, SON in conjunction with the police would carry out a raid to confiscate the counterfeit products. This procedure is faster than where a manufacturer has to go through the courts.
NCS: Customs generally play a major role in combating counterfeiting. The NCS unlike its counterparts in most jurisdictions does not have a customs recordal system which is an effective way to record and provide notice of registered rights with customs. The law[xv] that establishes the NCS does not give it the power to prosecute persons who import counterfeit products. It can however, be engaged to prevent the counterfeit products at the port. The Common External Tariff (CET)[xvi] provides the list of products which are absolutely prohibited from importation. Item 3 of Part 4 thereof prohibits the importation of “all counterfeit/pirated materials or articles……..” It is advised that brand owners create awareness of their brand through capacity building. This can be achieved by training the Customs Officials on ways to distinguish the brand owner’s products from counterfeit products and on the dangers of counterfeiting. This way, counterfeit products would be easily identified and confiscated upon entry into the Nigerian ports or borders. The brand owners would also be notified accordingly. Although NCS would not prosecute the matter on behalf of the complainant, it may be called as a witness in a suit brought by the complainant.
Brand owners may take advantage of the services offered by regulatory agencies in fighting counterfeiting. It is imperative that brand owners seek adequate measures to protect their products. This has the ripple effect of bolstering consumer confidence in the brand owner’s products and protecting the value of its brand.
A NEW TRADEMARK JOURNAL IS OUT – SEPTEMBER 10TH
The Nigerian Trademark Registry recently released its Trademarks Journal Vol. 5 No. 2 dated 10 September 2012. This journal was made available to the public on 17 September 2012. The Trademarks Journal contains advertisement of the trademark applications filed in Nigeria. This publication also includes a notification to persons wishing to object to the trade mark application to do so within two months of publication. If this time elapses and no objection has been made or, if made, has been unsuccessful, upon application in the prescribed manner, the mark is then registered and a certificate of registration is issued.
ANTI-COUNTERFEITING COLLABORATION, NIGERIA IN CONJUNCTION WITH THE UNITED STATES CONSULATE ORGANIZES AN ANTI-MALARIA CAMPAIGN
Anti-Counterfeiting Collaboration (ACC) in conjunction with the United States Consulate in Nigeria on 30th August 2012 launched an Anti-malaria Campaign funded by the United States Consulate. The focus of this campaign is to create awareness across the country about the hazards of counterfeit drugs particularly fake anti-malaria drugs. The campaign involves a student poster design contest to coincide with the upcoming ACC’s November Annual Roundtable. Thousands of the posters will be distributed to pharmacies and vendors in Nigeria with the aid of Nigerian enforcement agencies. There would also be a multi-segment radio drama to be broadcast on five Nigeria radio stations in Pidgin English. More information can be obtained from the ACC website here.
Online registration was temporarily suspended due to some challenges encountered in the management of the Online Registration System and manual filings were restored in the interim. However, the Registry on the 28th of September 2012 restored the Online Filing System. Applications can now be filed online.
A&O Partner delivers paper at a Seminar on International Arbitration in Africa
Babatunde J. Fagbohunlu, SAN, a Partner & Head of Dispute Resolution at A & O, delivered a paper titled: “The Future of International Arbitration in Africa” at a Seminar on International Arbitration in Africa co-hosted by Stephenson Harwood LLP and African Legal Network. The event had in attendance members of the African Legal Network as well as lawyers in different areas of practice.
Please click on the links to read the articles recently published by members of the firm:
[i] Section 5(1) of the Trademarks Act, Cap T13, Laws of the Federation of Nigeria (LFN) 2004
[ii] Section 3 of the Trademark Act.
[iii] Section 5(2) of the Trademarks Act.
[iv] SHIPPING ENTERPRISES V. CO-OPERATIVE CONDERFABRIEK (1917-1976) 1 IPLR PAGE 231 AT 243
[v] P.Z CO. LTD. V. A.B. CHAMI & CO. LTD (1917-1976) 1 IPLR PAGE 244 AT 246
[vi] ALBAN PHARMACY V. STERLING PRODUCTS (1917-1976) 2 IPLR PAGE 164
[vii] Section 7 (a) of the Trademarks Act
[viii] Section 13(2) of the Trademarks Act
[ix] Section 8(a) of the Trademarks Act
[x] Section 8(b) of the Trademarks Act
[xi] Cap. M10 LFN 2004
[xii] Cap. T12 LFN 2004
[xiii] Cap C 34, LFN 2004
[xiv] Section 6 of the Counterfeit and Fake Drugs and Unwholesome Processed Food (Miscellaneous Provisions) Act, Cap C 34, LFN 2004
[xv] The Customs and Excise Management Act Cap. C45, LFN 2004
[xvi] Schedule 4 of the Common External Tariff for 2008-2012