NLIPW Trademark Law Volume 1 Number 6
May 28, 2013
By the late “90s, many credited the trademark “VIRGIN” with the United Kingdom incorporated company “the Virgin group of Companies” founded by Sir Richard Branson with names starting or incorporating the word “VIRGIN” i.e. Virgin Atlantic airline and Virgin Cola.
In 1999, although Virgin Enterprises Ltd (a member of the Virgin Group of Companies) had registered the trademark “VIRGIN” for aerated waters and other non-alcoholic drinks in Nigeria, Richday Enterprises, a Nigerian company, applied to the Federal Ministry of Commerce and Tourism to register “VIRGIN table water” and was issued an acceptance letter. Richday also registered “Virgin water Bottled” with the National Agency for Food and Drug Administration and Control (NAFDAC), and began selling the product in the Nigerian market.
In 2005, Virgin Enterprises Ltd filed a law suit against Richday and on May 22, 2009, Justice Regina Obiageli Nwodo found in favor of Virgin Enterprises Ltd stating that an average man would have been confused into believing the product labeled “Virgin Table Water” is a product of Virgin Enterprises. The court granted an injunction that restrained Richday, its directors and agents from infringing on Virgin Enterprise’s registered trademark through the use of the word VIRGIN in connection with the production and sale of bottled water.
Arguably the most famous but definitely controversial intellectual property dispute in Nigeria is the case of Musical Copyright Society of Nigeria (MCSN) v. Nigerian Copyright Commission (NCC).
MCSN and NCC had disputes over the collection of royalties which resulted in several litigation cases but on December 14, 2007, about 20 fully armed mobile policemen stormed the business premises of the MCSN without a search warrant. Two officials of MCSN were detained at the office of NCC without an arrest warrant or order of court. The NCC alleged that it had relied on its powers to enforce the Copyright Act inclusive of the powers to enter into any premises without warrant, inspect and seize documents relating to piracy, arrest and prosecute any suspect and generally exercise all powers and privileges of a police officer in the investigation and prosecution of copyright crime. According to NCC, MCSN was performing the functions of a collective management organization or collecting society, without its approval.
In a ruling delivered on March 18, 2013, Justice Yunusa, declared that the activities of MCSN is guaranteed by the Constitution of the Federal Republic of Nigeria and that MCSN’s operations are legal and constitutional. The court awarded damages against NCC for N50 million Naira for what it termed “unlawful disruption and interference in MCSN’s lawful business”.
The legal tussle between the MCSN and NCC has amazed both local and international legal practitioners with several criminal charges and cases filed including: FHC/IKJ/CC/18/2012, FHC/IKJ/CR/19/2012, FHC/IKJ/CR/20/2012, FHC/L/353C/2012, FHC/L/352C/2012, FHC/L/351C/2012, FHC/L/CS/478/2008, FHC/L/CS/35/2008, CA/L/925/2011 and most recently FHC/L/CS/377/13.
During the early 90’s, tobacco giants British American Tobacco (NIG) Ltd and Benson & Hedges (Overseas Ltd) had acquired a reputation as top tobacco brands in Nigeria. Together, they instituted this action against International Tobacco (NIG) Ltd in the Federal High Court in Nigeria for the infringement of the gold color on the Benson & Hedges cigarette pack.
The Federal High Court held that even if the gold color on the Benson & Hedges cigarette pack had not been expressly registered, the color had acquired distinctiveness since it had been in use for about 33 years and as such the subsequent use of the gold color for a similar product by International Tobacco was an infringement of the proprietary rights of British American Tobacco. The court however held that the infringement did not affect the goodwill of the British American Tobacco’s product since evidence showed that it’s consumers were not deceived by the cigarette packs. Dissatisfied with the judgment of the Federal High Court, International Tobacco filed their Notice of Appeal. The Court of Appeal dismissed the appeal as lacking in merit.
While applying for registration of the trademark “Ferodo”, English company Ferodo Limited did not specify that the registration was sought for the accompanying design or garnishing i.e. a red rectangle, at the upper end of which was a smaller black rectangle, inside of which the name “Ferodo” was printed in white.
Ibeto Industries subsequently introduced into the market its own brand of brake pads and linings, which it marketed under the trademark “Union or Union SUPA”. Ferodo Ltd contended that the trade dress “Union” was similar to the trade dress of its “Ferodo” and sued for passing off and infringement of its registered trademark.
On February 6, 2004, Justice Dahiru Musdapher delivering the lead judgement for the Supreme Court, held that Ferodo Ltd had registered the trademark “Ferodo” which could not by any manner be confused with “Union or Union SUPA” and that when a proprietor decides to garnish a trademark with other colorations and devices which make it appealing and decorative, it cannot be assumed that the fanciful and ornamental characters which color the package form part of the trademark. In the absence of registration of the garnishing, the alleged use of the trade dress by Ferodo Ltd was held by the Court not to give them monopoly over the use of red cardboard paper.
5. The Case of My Pikin Baby Teething Mixture
Case No. FHC/L/70C/09
In Nigerian Pidgin, a language which is widely used across the country, the expression “my pikin” literally means “my child” and is often used as an endearment. But in 2008, “My Pikin Baby Teething Mixture” redefined those words completely.
Barewa Pharmaceutical Ltd, the manufacturer of My Pikin Baby Teething Mixture, sold a paracetamol-based syrup that killed 80 babies in 2008. This syrup was contaminated with engine coolant diethylene glycol.
On May 17, 2013, Justice Okechukwu Okeke of the Federal High Court in his judgment wound-up the company. The court also convicted two officers of the company for conspiracy and selling of dangerous drugs sentencing them to concurrent sentences of seven years for conspiracy to sell dangerous drug and seven years for selling dangerous drugs.
What is unique about this case is the fact that it represents the first case in which NAFDAC has secured an actual conviction through the Courts.
In 1969, Procter & Gamble (P&G) registered the trademark “ARIEL” in Nigeria. Sometime in 1998, P&G discovered that Global Soap & Detergent Industries Limited had registered “ARIEL and Atomium Device” as a trademark in Nigeria with the get up “New Global Ariel”. Seeking rectification of the register of trademarks, P&G filed a suit against Global Soap & Detergent Industries Limited.
At the Federal High Court, it was held that ARIEL had become “generic” and P&G was no longer entitled to the exclusive use of “ARIEL” because it had lost the trademark due to non-use in Nigeria. Dissatisfied with the judgment P&G appealed to the Court of Appeal.
On January 24, 2012, the Court of Appeal, presided by Justice Helen Ogunwumiju, in overturning the lower court’s ruling, stated that it is self-contradictory to expunge a trademark for non-use and at the time declare that the trademark has become generic.
The Court also stated that a valid trademark can become generic only if the consuming public misuses the mark or name in such a manner that the mark becomes the name of the product in the public domain.
The core issue raised was whether the Federal High Court had jurisdiction to hear cases founded on passing off of an unregistered trademark. The Supreme Court held that the Federal High Court, which has jurisdiction over Intellectual Property cases in Nigeria, does not have jurisdiction on actions in passing off arising from unregistered trademarks. This decision was highly criticized and many legal practitioners expected a review of the courts decision in this case and further review and interpretation of the provisions of Section 3 of the Trademarks Act. As expected, the Supreme Court re-examined the provisions of Section 3 of the Trademarks Act in the later case of Omnia Nigeria Ltd v. Dyke Trade Ltd.
Sometime in 1989, Dyktrade Limited initiated a trading venture with an Italian company to manufacture grinding stones for the washing of terrazzo floors and adopted the trademark “Super Rocket” for the grinding stones which it registered in Nigeria. Dyktrade sold substantial quantities of “Super Rocket” grinding stones all over Nigeria and had acquired substantial reputation and goodwill in the trademark. In December 1992, Omnia Nigeria Limited began to import consignments of grinding stones branded “Super Rocket” and distributed and sold them. Dyktrade Limited obtained an Anton Piller Order against Omnia Nigeria Limited and brought an action seeking to restrain the company and Directors/Officers from infringing the trademark “Super Rocket” and for passing off or enabling others to pass off grinding stones used for the purpose of terrazzo floors inscribed with the trademark “Super Rocket”.
The Supreme Court held that the Federal High Court has jurisdiction to hear and determine cases of passing off, whether or not these cases arise from registered or unregistered trademarks.
Saam Kolo Enterprises brought an action against Alliance International seeking damages as well as an injunction for the infringement of two of Saam Kolo Enterprise’s registered trademarks. The goods covered by the trademarks in question were shoe protectors described as “step”and “guard” registered in Nigeria by Saam Kolo Enterprises on behalf of a foreign principal in 1990.
Alliance International on the other hand, claimed to have a certificate of registered design in respect of heel protectors also called “step”. Saam Kolo Enterprises had previously instituted a suit at the Federal High Court seeking the nullification of the certificate of design issued to Alliance International in respect of the heel protectors.
The trial court found in favor of Saam Kolo Enterprises. Dissatisfied, Alliance International filed an appeal. In delivering its judgment, the learned Justices of the Court of Appeal considered the concept and definition of a trademark as contra distinguished from a design and held that neither certificate is superior to the other but that they are issued for different purposes and serve different functions. The Court of Appeal also held that Alliance International’s contention that the use of Saam Kolo’s trademark was covered by its certificate of design was without merit.
10. Rev. (Dr.). C.J.A. Uwemedimo and Comandclem Nigeria Ltd v. Mobil Producing (NIG) Unlimited
Suit No. CA/C/15/2009
Uwemedimo and Comandclem Nigeria Ltd filed a claim maintaining that they are the true and statutory inventors of the products of letters of patent No. RP13522 of August 5,1999 and for the infringement of the letters patent by Mobil Producing (Nig) Unlimited.
On December 8, 2009, Justice Kumai Bayang Akaahs of the Court of Appeal held that having applied for the patent and Patent Certificate No. RP13522 was issued, Uwemedimo and Comandclem became the registered patentees in the invention called Anti‐Corrosive Special Paint for Q.I.T(Transteel Blue, White Enamel Q.A.D.) with effect from August 5, 1999.
Mobil alleged that there was an oral contract to pay $2:00 per barrel but Uwemedimo and Comandclem denied that such an agreement existed and that if it did it was against public policy. Since there was no other proof of the oral agreement, the court held that the right to the patent in the invention resided in the statutory inventors. The court however held that an agreement to pay $2:00 per barrel was not against public policy and that any infringement by the Mobil became actionable from August 5, 1999.
One interesting fact about this case was that Comandclem alleged that the infringement had taken place in the early ’80s and as such the Court held that if the purported infringement fell between 1999 and the time the action was commenced, it would have been maintained but since it pointed to the early ’80s, it is statute barred even if they had proved their case. The court however found that there was no evidence that the infringement continued after the patent for the invention was registered.
*The case is currently before the Supreme Court Suit No. SC.69/2011
This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.