By Chris Uwakina, Esq.
Trade mark infringement could be seen as where the proprietary right of a trade mark is tempered with. The proprietor of a trade mark has an exclusive right over his trade mark. Where a person proposes to register a mark that resembles a registered trade mark or uses the trade mark which is closely similar to a registered trade mark in relation to connected goods, it is known as trade mark infringement.
The ownership of a trade mark is vested on the proprietor or the registered user. Accordingly, an unauthorized usage of a registered trade mark constitutes an infringement of the proprietary rights of the registered proprietor. Every trade mark must be registered for an action of infringement against it to succeed. A mark not registered is as good as an idea of symbols or words which has no legal backing against infringement. Thus, a trade mark must be registered to form a statutory proprietary right. Nevertheless, nothing estops the proprietor of an unregistered trade mark from commencing an action against the passing-off in his goods.
Furthermore, for a proprietor of a trade mark to commence an action of infringement on his trade mark, he must show evidence that the proposed mark is similar or resembles his registered mark. Such resemblance or similarity must pass through some tests known as the triple tests. The court or the registrar of trade mark must be convinced on the weight of evidence, that such mark is similar or resembles the registered mark.
Another factor which a proprietor of a trade mark must put into consideration before instituting an action for the infringement of his trade mark is in connection to the goods or services in question. The question is whether the resembling mark which constitutes the infringement is used in connection with the goods for which the trade mark was registered. If the answer to the above question is on the affirmative, then infringement is eminent. For example, if the business the infringer deals on beverages while the registered proprietor of the mark deals on pharmaceutical products; such usage will not amount to infringement. Section 5(2) of the Trade mark Act 1967, provides inter alia; “right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof, using it by the way of permitted use, uses a mark identical with it or so likely to deceive or cause confusion, in the cause of trade, in relation to any goods in respect of which it is registered”.
It is submitted that the goods for which a mark is registered forms the qualification or basis upon which an action for infringement must be brought. In other words, where the goods for which the mark was registered is distinct from the goods of the proposed trade mark, the registered proprietor cannot successfully bring an action of infringement against the proposed trade mark. From a practical case study, if ‘A’ registered his trade mark “ELEC” in respect of importation and sales of electronics and “B” proposes to register similar trade mark “ELEC” for the sales of shoes, which is not connected to the goods registered by “A” in respect of the trade mark; “A” cannot successfully bring an action for the infringement of his trade mark. This is because the goods which is connected with the registration of ‘As’ trade mark differs objectively from that of ‘B’, notwithstanding the similarities of the trade marks. So, such application for registration should be approved and registered by the Registrar. Therefore, for an action of infringement against a registered trade mark to succeed, the plaintiff must establish that the course of trade in respect of which the mark is sought to be registered or registered is the same. The rights under the Trade Marks Act are limited to what is registered. The right of the proprietor of a registered trade mark is limited to the goods or class of goods indicated in the registration. The proprietor lacks the power over goods not covered by the registration of his trade mark. See section 4 of the Trade Mark Act, 1967. In the case of Seven-up Company Ltd &Anor.v. Warri Bottling Company Limited,Belgore J. ( As he then was)stated inter alia; “In considering infringement, the goods to which they are to be applied must be considered.”
In view of the above, the goods for which the mark is registered forms part of the considerations in determining if infringement has occurred. It is pertinent to state here that distinctiveness in respect of the goods for which the mark was registered is fundamental. Notwithstanding that two marks are identical, if they are used in distinctive goods, both marks can be registered and no infringement would occur.
In section 9(2) and 10(1) of the Trade Marks Act, particularly section 9(2) which states as follows: “For the purposes of this section, “distinctive” means adapted, in relation to the goods in respect of which the trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or maybe connected in the course of trade from goods in the case of which no such connection subsist, either generally or where the trade mark is registered or proposed to be registered subject to limitations, in relation to the use within the content of the registration”.
It is therefore safe to say that the concept of distinctiveness in the registration of trade mark is in respect of goods connected, with close resemblance or similar trade marks.
From the aforementioned, the proof that a trade mark is infringed upon, requires three (3) basic elements summarized below:
- That the newly registered or proposed to be registered trade mark is similar or nearly resembles an existing registered mark.
- That the first in time of the registration or user of the trade mark is the plaintiff or the defendant
- That the goods connected to the registered trade mark of the proprietor or registered user is in relation to the goods of the proposed trade mark.
Once these three elements or propositions are satisfied, the court or the Registrar of trade marks can exercise the powers in respect of the infringement of the mark. The concept of distinctiveness in the registration of trade mark is founded on the aforementioned.
It has been submitted that the use of the mark must be restricted to the designed product, the agreed location and in the prescribed manner. It should be noted that infringement, only occurs where the mark is used in the cause of trade, business or commerce. This may be either as a mark on the products of the rival business or in advertisement issued to the public, (even where such latter use is to link the proprietor of the mark or a registered user to his own goods. Thus, the use of trade mark registered in part A of the register by a rival business in its advertising constitutes trade mark infringement under the Act in advertising.
It is pertinent to state here, that the provision of the Trade Marks Act, 1967, with respect to infringement of trade marks is based on the likelihood of the proposed mark deceiving the recollection of the customers. It does not necessarily relate to the intent to defraud. Fraud could be absent yet the court will hold that a mark has infringed the proprietary right of the registered owner. The absence of fraud on the part of the infringer cannot be a defense. Unlike in criminal casse where the mensrea of the offence must be established, no mental element of fraud is required to establish the infringement of trade mark. As aforementioned, the intention of the defendant need not be fraudulent or deliberate. In Re Egg product Ltd.’s Applications, the court held that the phrase, “likely to deceive” does not necessary imply fraud, or anything of that kind on the part of the defendant. Once the customers who buy the product from the market are likely to be deceived; the defendant will be liable for the infringement of the proprietary right of the registered owner or user of the mark. This is an exception to the general rule of the intent to commit an offence or constitute a wrong. Therefore, the defendant cannot rely on the defence of lack of fraud under the infringement of trade marks.
Remedies for the Infringement of Trade Marks
The Trade Mark Act, 1967, did not make any specific provision for remedies entitled to a person who complains that his trade mark has been infringed. However, inferences can be made from section 6(2) which states as follow:
“In any action for infringement of the right to the use of trade mark given by such registration as aforesaid in part B of the register, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to lead to the belief in a connection in the course of trade between the goods and some person entitled either as proprietor or as a registered user to use the trade mark”.
Therefore, the remedies that readily come to mind in view of infringement of trade mark are injunction and other reliefs. Other reliefs entail; Damages, Anton Piller Order, Delivery-Up of Goods and Account of Profit, as well as the stated injunction. A proprietor of trade mark who feels or knows that his right in trade mark has been infringed in respect of similar class of goods can apply to court for the following remedies:
Damages could be general or special, exemplary or punitive and nominal damages. Damages are sought when as a result of the infringement the proprietor of the trade mark suffered some measurable lost. The lost thus suffered, forms the basis for his application to the court for the award of damages in his favour. In the case of CPL Ind. Ltd. v. Morrison Ind. Plc., the Court held inter alia: “Mere proof of infringement entitles the plaintiff to damages and when passing-off is proved, the Court will infer some damages to the plaintiff and may award more than nominal damages without proof of special damages”.
An injunction is an order of Court which restrains a person from beginning or continuing an action threatening or invading the legal right of another person. A proprietor of a trade mark can during the pendency of a suit, apply to court for an order restraining the infringer of his trade mark from further infringing the registered trade mark. The applicant must give sufficient facts proving that his registered trade mark is infringed or threatened by an unauthorized user for the court to grant same. Such application is known as an interlocutory injunction. In the case of Beijing Cotec.v. Greenlife Pharm. Ltd & 5 Ors, the court held inter alia; “The grant of interlocutory injunction in action of infringement is governed by the same principles as in other actions and therefore sufficient facts must be available to the court in order to determine whether to grant or refuse the injunction sought”.
- Anton Piller Order
Anton Piller order can be made by the Court in an application, for the infringement of a proprietor’s registered trade mark to allow the applicant to enter the respondent’s premises to inspect, search and seize the infringing product in order to preserve evidence and prevent the destruction of incriminating evidence. An Anton Piller order can be made against ascertained respondents and unknown or unascertained respondents or a class of them. Certain conditions abound which must be established by the applicant for the court to grant the Anton Piller order. The conditions have been laid out in the 2015 case of Gallaher Ltd. v. B.A.T (Nig.) Ltd., where the court held inter alia: “The antonpiller order is a unique order. It is granted only in extreme cases, and the three essential pre-conditions which must be met before it is granted are:
- There must be an extreme strong prima facie case
- The damage, potential or actual, must be very serious for the applicant
- There must be clear evidence that the defendants have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such materials before any application inter partes can be made”.
Accordingly, antonpiller order if granted by the court, binds respondents when there is a strong evidence of an act of infringement/passing off against them. The onus is on the applicant to adduce strong case before the court, for it to be granted. An application for Anton piller order can be made ex-parte. See the case of Group Danone&Anr. v. Voltic Nigeria Ltd.
- Delivery Up
Delivery up is the remedy other than monetary remedy, where the court orders that all infringing products of the trade mark in possession of the infringer are delivered to the registered trade mark proprietor (applicant), for the purpose of destroying the products. In delivery up, the order is made in respect of the goods in possession of the infringer and not the ones in possession of a third party.
- Account of Profit
Account of profit is the remedy opened to an applicant whose trade mark has been infringed to seek the order of court for the defendant to give account of the profit accrued during the pendency of the infringement of his registered trade mark. This remedy is based on the ground that a wrong doer cannot be allowed to benefit from his wrong doing. Therefore, the applicant can urge the court to order and thus order that the infringer of the trade mark to give account of the proceeds or profit from the sales of the goods or product using the trade mark of the from applicant. The order is given in favour of the applicant whose trade mark has been infringed, for the infringer to give financial account of the sales of the goods and the applicant can recover the profit from the infringer.
CHRIS UWAKINA ESQ.
IG / FB: @chrisuwakinaesq
 Dyktrade Ltd. v. Omnia Nig. Ltd (2000) 12 NWLR (part 680) 1.
 JO Odion and NEO Ogba, Essays on Intellectual Property Law (1sted, Ambik Press 2010) 84
 (1984) FHCL 183
 A.O Oyewunmi, Nigerian Law of Intellectual Property (University of Lagos Press and Bookshop Ltd., 2015) 283-284; See the case of Bismag Ltd. v. Amblins (chemists) Ltd. (1940) Ch 667
 (1922)39 R.P.C 155
 Trade Mark Act
 FO Babafemi, Intellectual Property 286
 (2003 – 2007) 5 IPLR(Federal High Court Lagos) p 324para. C-E
 (2003 – 2007) 5 I.P.L.R. (Federal High Court, Lagos) 76
 (2015) 13 NWLR 355
 (2008) 7 NWLR (Pt. 1087) 637