30/05/2022
WHY OGA SABINUS’ LAWSUITS AGAINST PEAK MILK AND UAC (GALA) FOR TRADEMARK INFRINGMENT MAY NOT SUCCEED.
Chikodi Okeorji
A Trademark is a mark, name, word, phrase, image or combination of marks, names, words, phrases and images 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 and some person having the right, either as proprietor (that is: original user or owner) or as registered user to use the mark, whether with or without any indication of the identity of that person.
Basically, a trademark right is deemed to be infringed by any person who, not being the proprietor of the trade mark 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. See, s.5(2) Trademarks Act, 2004.
In the case under reference, the only way Mrfunny_ aka Oga Sabinus, may stand a chance in his rumoured lawsuits against Peak Milk and UAC (Gala) is if he had indeed, prior to the alleged use by the companies, registered the marks under all the 45 Trademark Classes at the Registry of Trademarks. For instance, if Oga Sabinus had registered the mark ‘Something Hooge’ under Class 25 alone, which class is strictly meant to protect marks registered for the trading of goods relating to “Clothing, footwear, headgear”, he cannot successfully maintain an action against the makers of Peak milk for using the same phrase/words/marks to sell milk, other beverages or goods not protected under Oga Sabinus’ registration.
Assuming even the Claimant (like Oga Sabinus) registered the mark under all the classes, he may still not succeed in his case for infringement of his right to the exclusive use of trade mark, if the Defendant (Peak milk or UAC in this case) establishes to the satisfaction of the court that the Defendant’s use of the mark(s) (of which the Claimant complains) is not likely to deceive or cause confusion or to lead the public into believing that there is a connection, IN THE COURSE OF TRADE, between the Defendant’ goods and those of Claimant – who is indeed the proprietor or registered user of the trade mark.
There have been arguments that even if he cannot succeed in his claims in trademark, he will most likely succeed under the common law tort of Passing-off. It is true that the common law tort of passing-off protects unregistered trademarks in situations where owners/proprietors of such marks have been unable to formally register them as trademarks. In fact, s.3 of the Trademarks Act provides that: “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.”
The implication of the foregoing is that even where a proprietor or owner of a mark, or phrase or name used for business has not formally registered same as trade mark, he could still leverage the common law tort of passing-off to protect the mark and seek compensation in law where another person infringes on the mark.
Unfortunately, however, claims in the tort of passing-off are not granted as a matter of course, or for the mere asking. There are ingredients to the tort and for a Claimant to be successful, he must prove and demonstrate 3 things to the Court: -
i. That the mark or name alleged to be passed off has attained some goodwill (in the legal parlance, goodwill in the context means the benefit and advantage of the good name, reputation and connection of business; and also the attractive force which draws customers to the Claimant's product or services) in the eyes and perception of the public who patronise that class of goods or services;
ii. That the Defendant (Peak milk or UAC-Gala) has presented his own goods, name or marks in a manner as to misrepresent those of the Claimant and that said misrepresentation has caused, has the potential of causing, or is likely to cause the members of the public to believe that the goods, name or mark of the Defendant emanated from, or are the same as those of the Claimant; and that
iii. the Claimant has suffered or is really likely to suffer losses (EITHER DIRECT OR INDIRECT FINANCIAL LOSSES OR LOSSES OCCASIONED OR LIKELY TO BE OCCASIONED BY DEFENDANT’S MISUSE OF CLAIMANT’S NAME, GOODS, OR MARK) by the reason of Defendant’s said misrepresentation.
In my opinion, the facts and circumstances of Oga Sabinus’ case as already disclosed, are most likely unfitting to the required elements of the tort of passing-off. Even if he succeeds in proving goodwill, can he possibly prove that by the use of the phrase ‘Something hooge’ to sell its milk, Peak Milk has, in any way, presented its milk in a manner as to make the public believe that the milk product are emanating from Oga Sabinus or are one and the same product/brand for which Oga Sabinus is known for? Put differently, is the use of the word ‘something hooge’ by Peak Milk, in relation to the sale of its milk, likely to make the unsuspecting members of the public believe that Peak milk is imitating Oga Sabinus’ brand of milk which is usually sold with the bluff ‘Something hooge’? I think not! Oga Sabinus does not sell milk or any product related to milk with the mark ‘Something hooge’. Not to my knowledge.
Whereas I agree that it may be morally wrong for the companies to use Oga Sabinus’ creations or ‘intellectual property’ to advertise their goods without seeking for, and obtaining his permission and/or paying him for such use; I am afraid the legal regime in intellectual property in Nigeria today does not help him.
I only hope the companies would be honest enough to admit the obvious truth and do the needful.
EDIT:
From the trademark acceptance of application I have seen, Oga Sabinus only applied to register the mark under class 36 which covers financial services, real estate, building society services, banking, stockbroking, financial services, etcetera.
He didn't register it under class 29 which protects goods like fish, eggs, milk products, etc.
I remember a company that took step to register it's mark under all the classes in Nigeria to ensure exclusive usage of the name.
Do you wonder why Laboratories and other businesses can use the word Zenith to carry-on their science laboratory businesses even though Zenith Bank may have long registered the name in another class relating to banking? Yes. You may likely be allowed to use the mark 'Zenith' to produce table water, but not be allowed to use it to carry-on the business of banking or financial services of any sort. Law may not be as you may think it in your mind. Law is fluid and nebulous.
Note: Words in caps are for emphasis.
