By Ogbu, Blessing Ekpere Esq.
I read with interest the intenvention of Ujong Okpa Esq. titled “Protectable Trademarks in Nigeria and the Scope of Their Protection”. The article was published online on the 30th of December, 2020. I commend the industry which the learned author invested in the work. The subject of the protectability of trade marks is one aspect of intellectual property law which does not lend itself to facile construction. Because the law of trade marks has its origin in the common law doctrines of actions for deceit and, later, passing off, the earliest judicial determination of the question of trade marks protection, first, in the United Kingdom in the case of Southern v. Hou[1] and in the cases following that[2], in the United States of America in the cases of Coats v. Holbrook[3] and Partridge v. Menck[4] and, then, in Nigeria, the courts had been assailed with the problem of campartmentalisation of actions for protection of trade marks. In the early days of trade marks, one of the questions the courts have had to answer was whether an action for the infringement of trade marks is one founded on deceit, whether it was merely a case of passing off, whether an injunction would lie, and whether it was the court of law or the court of equity that should assume jurisdiction. The dilemma was so complicated that in the case of Rodgers v. Nowill,[5] the judge asked the counsel for the plaintiff, “Is this an action on the case for a deceit?” and counsel to the plaintiff responded, “There is no other title under which such an action can be classed.”[6]
This indeterminate state of the law of trade marks in its formative years defined the United Kingdom Trade Marks Act of 1938 which was applicable to the colonies, including Nigeria. The 1938 Act, though more comprehensive than its predecessors, was however fraught with legislative unwieldiness that in the case of Bismag Ltd v Amblins (Chemists) Ltd[7] the Lord Justice MacKinnon, LJ while ruling on the infringement section and other sections of the Act declared, out of frustration, that the 1938 Act was beset with “fuliginous obscurity”. Sadly, in 1965, when the Nigerian Government decided to enact an indigenous trade marks law for the first time, it adopted wholesale albeit mutatis mutandis the 1938 Act with its inherent legislative awkwardness and ponderousness and enacted the Trade Marks Act[8]. Interestingly, while the United Kingdom has amended its Trade Marks legislation severally since 1938 till date, the latest and applicable law on trade marks in the United Kingdom being the Trade Marks Act 1994[9], the Nigerian Trade Marks Act which followed with utmost fidelity the text of the United Kingdom Trade Marks Act of 1938 has not been amended since its enactment in 1965. It is for this reason that attempts at scholarly evaluation of its provisions must be commended. For the sake of scholarship and illumination, however, it is imperative to correct a few misstatements which the author made in the course of his treatise.
- A CRITICAL EXAMINATION OF MR. OKPA’S TREATISE
Learned Counsel Okpa launched his treatise with the assertion “In Nigeria, trademarks are afforded legal recognition by registration and by their status of (sic) well-known marks. Despite this status, unregistered well-known marks stand a half chance (sic) of enforcement when infringed no matter how popular the mark has gone to be over the years.” This is not entirely correct. In the first sentence, the author gave the impression that only registered trade marks enjoy legal recognition by virtue of their registration and status as well-known marks. In the second sentence, though convoluted as a result of the author’s use of mixed idioms, the author conveyed the idea that the owner of an unregistered trade mark has no remedy in law. Generally, trade marks enjoy legal recognition by virtue of their registration as trade marks pursuant to the provisions of the Trade Marks Act. They also enjoy legal recognition when they are used as trade marks in the course of trade though they may not be registered. These requirements for legal recognition is not conjunctive. It is arguable if it is disjunctive. It is, however, proper to assert that a trade mark enjoys legal recognition by virtue of registration, its reputation as such in the mind of the public though it may not be registered, and by virtue of both its registration and its reputation.
For a trade mark to enjoy legal protection, however, such trade mark must be registered as a trade mark under the Act. Within the context of the Trade Marks Act, legal protectability and legal recognition are two different phenomena and should not be conflated or otherwise used interchangeably. Section 3 of the 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 Acct 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.” Under the Act, a registered trade mark enjoys both legal recognition and legal protection. An unregistered trade mark, on the other hand, enjoys only legal recognition and its owner can maintain an action for passing off under common law.
“…where a trademark passes the litmus test of registration and enjoys the protection of the law, the trademark registrant in whose favour the trademark is protected is bestowed with the exclusive right to use the trademark to the exclusion of everyone else to a certain degree and time.” Though the author did not tell us the extent of the degree and time, we agree with him only to the extent that the registered proprietor of a trade mark enjoys the exclusive right to the use of the trade mark in relation to the goods in respect of which it is registered. That is the import of section 5(1) of the Act. The Act however, subjects the operation of section 5 to the provisions of other parts of the same section 5 and, then, to sections 7 and 8. Section 7 relates to saving for vested rights while section 8 deals with saving for use of name, address or description of goods.
Section 7 provides that “nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date previous to- (a) the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or (b) the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, whichever first occurred, or (where such use is proved) to object to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under section 13(2) of this Act.” Simply put, the right of the registered proprietor or a registered user of a registered trade mark to the exclusive use of the trade mark does not extend to the right to restrain or interfere with a user of identical or similar trade mark if the user of the identical or similar trade mark predates the use or registration of the trade mark. This provision is valid whether or not the earlier trade mark is registered or not. Secondly, the right of the registered proprietor or the registered user of a registered trade mark to exclusive use cannot be invoked to object to the application by the user of identical or similar trade mark for registration of the identical or similar trade mark under the provisions of section 13(2). Section 13(2) allows identical or similar trade marks to be registered where honest concurrent use is established or where the existence of special circumstances allows for their registration.
By virtue of section 8, the exclusive right of a registered proprietor or a registered user to use a registered trade mark will not operate to interfere with the right of a person to the bona fide use of his name or the name of his place of business, or of the name, or the name of the place of business, of any of his predecessor in business; or the use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in section 5(2)(b) or section 43(4)(b) of the Trade Marks Act. The reference mentioned in sections 5(2)(b) and 43(4)(b) is any use by an unauthorised user of a trade mark on goods, or in physical relation thereto, or in an advertising circular or other advertisement issued to the public which gives the impression that the unauthorised user is the registered proprietor or the registered user of the registered trade mark. In other words, as far as a person other than the registered proprietor or the registered user uses a trade mark identical with or similar to a registered trade mark without giving the public the impression that he is the registered proprietor or a registered user of the registered trade mark, the registered proprietor or a registered user cannot interfere with his right to use his trade mark on any goods.
In his definition of trade marks, Mr. Okpa asserted that “trademark…is not limited to goods and is not necessarily a ‘mark’ in the strict sense of the word… And even though this Act facially limits the scope of trademark to goods or products, it is a fact that trademark in Nigeria transcends to services.” This assertion has no basis in law, in this case, the Trade Marks Act, and in fact. First, we submit that, contrary to the author’s assertion, a trade mark must be a mark. Section 67 defines a trade mark as “a mark used or proposed to be used…” The same section 67 defines a mark to include “a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any such combination thereof.” Thus, whether a mark is used in the strict sense of the word or in the liberal sense, the definition of a mark under the Trade Marks Act is broad enough to cover both the strict and liberal construction of the word.
Secondly, at the risk of accusation of hairsplitting, we submit that there is no place in the Trade Marks Act CAP T13 Laws of the Federation of Nigeria 2004 that the application of the Act is made to cover services. Section 67 of the Act, which is the interpretation section of the Act, defines trade mark to mean “… 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 and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 43 of this Act.” This is not an isolated example: the Act is suffused with express stipulations that leave no one in doubt that trade marks must be used in relation to goods only and nothing more. In Aristoc Ltd v. Rysta Ltd[10], a case that was decided under the United Kingdom 1938 Act, the House of Lords held that a mark could not be registered for the services of laundry and mending of stockings rendered by the defendants because there was no evidence that such use would indicate a connection in the course of trade.
In asserting that the scope of trade marks transcends goods and extends to services, the learned author of the treatise under consideration overlooked one of the principles of statutory interpretation, to wit, the doctrine of expressio unius est exclusion alterius, that is, the expression of one thing is the exclusion of another. This maxim prohibits the importation of unintended meanings into the clear, unambiguous words of statutes, or the extension of the application of statutes beyond the scope contemplated by the draftsman thereof. In Buhari v. Obasanjo[11], the Supreme Court held that the words of statutes, when they are clear and unambiguous, should be given their literal meaning. In Oluwalogbon v. Government of UK[12], it was stated that, in the construction of statutory provisions, where specific things are mentioned, the intention is that those not mentioned are not intended to be included. If the Trade Marks Act had intended that the Act would apply to services, or if the draftsman had intended that service marks would be registrable under the Act, provisions would have been made to that effect. It is, therefore, misleading for the author to claim that “it is a fact that trademark in Nigeria transcends to services.”
We note that the authority for Mr. Okpa’s authoritative assertion was the 2007 Ministerial Regulation seeking to amend the Trademark Regulation of 1967. Mr. Okpa further argued that Nigeria adopted, on the 19th of April, 2007, vide the 2007 Ministerial Regulation seeking to amend the Trademark Regulation of 1967, the Nice Classification of Goods and Services which extended goods to include services in classes 34 – 45. In making this Regulation, the Minister for Commerce[13] purported to act pursuant to his powers under section 45 of the Trade Marks Act. Section 45 does not empower the Minister to amend the Trade Marks Act. Amending the scope of the application of the Trade Marks Act to include services and the registrability of service marks, certainly, is tantamount to amending the Trade Marks Act, a function that is within the exclusive purview of the National Assembly by virtue of section 4(1) and (2) of the Constitution of the Federal Republic of Nigeria 1999 as amended. To dispel all vestiges of doubt, section 45 of the Trade Marks Act is reproduced in full hereunder:-
“45. (1) The Minister may make regulations-
(a) for regulating the practice under this Act, including the service of documents;
(b) for classifying goods for the purposes of registration of trade marks;
(c) for making or requiring duplicates of trade marks and other documents;
(d) for securing and regulating the publishing and selling or distributing, in such manner as he Minister thinks fit, of copies of trade marks and other documents;
(e) for prescribing the fees to be paid in respect of applications, registrations and other matters under this Act;
(f) for prescribing anything required or authorised by this Act to be prescribed by regulations;
(g) for extending the time limited by this Act for the performance of any act, whether generally or in particular cases and whether at the discretion of the Registrar or otherwise;
(11) for imposing restrictions as regards the registration under this Act of the arms, flags, emblems, titles or other distinctive marks of any country or international organisation;
(i) generally for regulating the business of the office of the Registrar and all things by this Act placed under the direction or control of the Registrar or the Minister.
(2) Regulations under this section shall not have effect until published in the Federal Gazette.
Applying the maxim of expressio unius est exclusio alterius, it can be seen that the provisions of section 45, by the widest stretch of any rule of statutory construction, does not vest in the Minister the power to amend the Act, or to use his regulation-making power to extend the scope of application of the Act to include services. Indeed scholars of intellectual property law have contended that the action of the Minister does not enjoy the force and backing of the law[14]. In his contribution to the debate, Olugbenga Ajani Olatunji[15] contended that
“Section 42(1) specifically gives the Minister a discretionary power to make regulations empowering the Registrar of Trade Marks ‘to amend the register’ so as to be in compliance with any ‘amended or substituted classification that may be prescribed’. Section 45(b) gives the Minister the power to make regulations ‘for classifying goods for the purposes of the registration of trade marks’.
“It remains unknown how these clear and unambiguous provisions of the NTMA can be interpreted to confer power on the Minister to extend the classification of goods to include services. This is more so the case when ss 42(1) and 45(b) only confer power on the Minister to classify goods (not services) and s 67 clearly defines ‘trade mark’ as a mark used on goods (again, not on services). This article therefore submits that the Minister’s action is ultra vires, unconstitutional and void since it is the National Assembly alone which has the power to amend or replace any of its acts.”
Moreover, the mere fact that Nigeria purported to adopt the Nice Classification of Goods and Services on the 19th of April, 2007 does not translate automatically to an amendment of the Trade Marks Act so as to vest registrability on service marks. Section 3 of the Treaties (Making Procedure, etc.) Act[16] provides as follows:-
“(1) Treaties shall be classified into-
- Law-making treaties, being agreements constituting rules which govern inter-state relationship and co-operation in any area of endeavour and which have the effect of altering or modifying existing legislation or which affects the legislative powers of the National Assembly;
- Agreements which impose financial, political and social obligations on Nigeria or which are of scientific or technological import;
- Agreements which deal with mutual exchange of cultural and educational facilities.
(2) The treaties or agreements specified in-
(a) subsection (1) (a) of this section need to be enacted into law;
(b) subsection (1) (b) of this section need to be ratified;
(c) subsection (1) (c) of this section may not need to be ratified.”
There is no gainsaying that the Nice Classification of Goods and Services is an international treaty which has the effect of altering or modifying an existing legislation, in this case, the Trade Marks Act CAP T13 Laws of the Federation of Nigeria 2004. The Minister’s 2007 Regulation, in so far as it purports to extends the scope of the application of the Act to include services is a ministerial action that is ultra vires his ministerial mandate under the Act as it constitutes a usurpation of the legislative powers of National Assembly and, therefore, is an infliction of grave violence on the principles of separation of powers. Moreover, international agreements or protocols do not become operational in a sovereignty by mere ‘adoption’. An international instrument becomes effective and binding on a nation-state through domestication, ratification or accession.
In his analysis of the powers of the Registrar of Trade Marks under the Trade Marks Act, learned counsel Okpa Esq. opined thus: “The power conferred on the Registrar over trade mark infringement disputes by sec.47, 55 and 57 of Trade Marks Act is overwhelming and is arguably inconsistent with the provision of section 251(f) of the Constitution and should be declared null and void by reason of the inconsistency in accordance with section 3 of the said Constitution.” This opinion, though plausible, is, a misapprehension of the provisions cited therein. We shall reproduce the three sections hereunder for ease of reference:-
Section 47: “In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may, by leave of the court or a judge thereof, be enforced in the same manner as a judgment or order of the court to the same effect”
Section 55: “In any appeal from a decision of the Registrar to the court under this Act, the court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.”
Section 57: “(1) In any proceedings under this Act before the Registrar, the evidence shall be given by statutory declaration except in so far as the Registrar otherwise directs; but in any case where the Registrar thinks it right to do so, he may take evidence viva voce instead of or in addition to evidence by statutory declaration.
(2) Where in any such proceedings any evidence has been given by means of a statutory declaration, that evidence may, in the case of an appeal, be given before the court by means of that statutory declaration instead of by affidavit; but any evidence given by statutory declaration before the court by virtue of this subsection shall have all the incidents and consequences of evidence given by affidavit.
(3) The Chief Judge of the Federal High Court may, with respect to the taking in any proceedings before the Registrar under this Act of any part of the evidence viva voce, make rules-
(a) as to the examination of the parties, and of witnesses, on oath or affirmation; and
(b) as to the procedure of securing the attendance of witnesses and the production of documents.
(4) Rules made under subsection (3) of this section, shall not have effect until published in the Federal Gazette.”
Mr. Okpa’s misapprehension of the afore-quoted provisions proceeded, understandably, from his construction of “any proceedings” to include infringement proceedings. It is our contention that “any proceedings” as used in the Act should be read within the context of the section it is used and should not, therefore, be accorded a generic construction. Section 3 of the Act which specifically provides for the remedies available to the proprietor of a registered trade mark states that “No person shall be entitled to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered trade mark…” Implicative in the use of the word “institute” is the presupposition that an action in court is contemplated. While the Black’s Law Dictionary[17] defines “institute” among other things as “to inaugurate or commence, as to institute an action”, the Oxford Advanced Learner’s Dictionary[18] defines the word to mean, inter alia, “to introduce a system, policy, etc or start a process: to institute criminal proceedings against somebody…”
Elsewhere in the Act, where the expression “any proceeding” is used with reference to a proceeding before the Registrar, the Act uses the word “application” as the appropriate mode of invoking the power of the Registrar under the Act. Such proceedings before the Registrar are in respect of matters relating to, for instance, the determination of the registrability of a proposed trade mark, preliminary advice on distinctiveness, registration of a proposed trade mark, opposition to registration, renewal of a registered trade mark, dissolution of associated trade marks, removal from register on ground of non-use, the registration of a person as a registered user, and rectification and correction of register among other things. These are proceedings that are within administrative competence of the Registrar. The corollary of this administrative competence is the power to award costs, if need be, at the end of the proceeding. This is particularly so in an opposition proceeding where an application challenging the registration of a trade mark may be frivolous. In such situation, it is only logical that the applicant is made to pay the cost of the proceeding. After all, it is trite that cost follows event.
Besides, section 56 of the Act gives the applicant the option, in some cases, of applying to the Registrar or directly to the court for address. The court for the purposes of the Act is the Federal High Court. One of such cases is an application under section 31 for removal of a registered trade mark from the register on the ground of non-use. Another is where the Registrar or the court is invited to determine the question of distinctiveness under sections 9 and 10. In such cases where an applicant has the option of applying either to the Registrar or the court for redress, the Act is careful to use the word “tribunal” in designating the adjudicatory authority. Whether an application is heard by the Registrar or by the court, the Registrar or the court must arrive at its decision after a careful evaluation of evidence adduced before it by both parties in the proceeding before it. It is difficult to see how this amounts to usurpation by the Registrar of the powers of the Federal High Court. Section 57(3) empowers the Chief Judge of the Federal High Court to make rules regulating the taking of evidence in any proceeding before the Registrar. By virtue of section 55 the court, in determining appeals arising from the decision of the Registrar, enjoys all the discretionary powers of the Registrar. These provisions cement the fact that the Federal High Court exercises supervisory powers over the Registrar.
Under Administration Law, administrative agencies are empowered to exercise quasi-judicial powers which are necessary and incidental to the effective and efficient discharge of their administrative responsibilities. Challenging the powers of the Registrar in this regard is akin to challenging the powers of a government agency or authority to constitute a Petitions and Disciplinary Committee in the exercise its disciplinary powers over its staff on the ground that it is inconsistent with the provisions of section 2 of the Constitution of the Federal Republic of Nigeria (Third Alteration) Act 2010 and section 254C (1) (a) of the Constitution of the Federal Republic of Nigeria 1999 as amended which vest exclusive jurisdiction on the National Industrial Court to hear and determine civil causes and matters relating to or connected with any labour, employment, trade unions, industrial relations and matters arising from workplace, the conditions of service, including health, safety, welfare of labour, employee, worker and matters incidental thereto or connected therewith.
The author discusses the element of distinctiveness and the respective degrees of distinctiveness required for registration either under Part A or Part B of the Trade Marks Register. We agree with him on the subject. It is our further submission that the dichotomy of distinctiveness under the Nigerian Act does not only raise the spectre of internal contradictions within the Act, it is, to all intents and purposes, otiose. Section 9 requires that marks which are inherently adapted to distinguish be registered under Part A of the register while section 10 stipulates that marks which are capable of distinguishing be registered under Part B of the register. Usually, arbitrary and fanciful names, that is, names and marks that are so unrelated to the goods in respect of which they are proposed to be used as to be inherently distinctive, are marks that are inherently adapted to distinguish and do not require evidence of use. On the other hand, marks, which comprises of names that ordinarily are common, may acquire distinctiveness as a result of long use and their association with a particular product. Such names are capable of distinguishing. The American Trade Mark Act[1] uses the better expression “acquired distinctiveness” to describe this category of distinctiveness. Yet, section 9(3)(b) describes a mark that is inherently adapted to distinguish as one which is inherently adapted to distinguish by reason of the use of the trade mark or of any other circumstances. There is therefore no point for this dichotomy if a mark which is inherently adapted to distinguish must present evidence of use that it is, in fact, inherently adapted to distinguish. It is interesting to note that while the United Kingdom Trade Marks Act 1994 has abolished this unnecessary dichotomy, the Nigerian Act is still embedded in the bosom of its 1938 forebear.
The Nigerian Trade Marks Act which is a restatement of the text of the United Kingdom Trade Marks Act of 1938 has not been amended since its enactment in 1965. Nigerian is still stuck with a rudimentary legislation whose intendment is the regulation of a vestigial economy that consists mainly of buying and selling of goods and conceives trade in terms of commerce in commodities. This explains the preoccupation and consequent suffusion of the Act with goods as the only subject of trade marks protection. It is therefore imperative that the Nigerian act be amended to include the registrability of service marks. The 2007 Ministerial Regulations which purports to include service as a protectable subject is of no moment. There is, therefore, the need for the National Assembly to amend the Trade Marks Act to bring it into consonance with twenty-first century economic realities and to cure it of its legislative prolixity and unwieldiness.
Ogbu, Blessing Ekpere Esq., a legal practitioner, writes from Abuja and can be reached via [email protected].
ENDNOTES
[1] The Lanham Act 1946.
[1] (1618) Pop. 143, 79 Eng. Rep. 1243 (KB.).
[2] Such as Blanchard v. Hill(1742) 2 Atk. 484 (Ch.), 26 Eng. Rep. 692.
[3] 7 N.Y. Ch. Ann. 713 (1845).
[4] 5 N.Y. Ch. Ann. 572 (1847).
[5] (1847) 5 C.B. 109, 136 Eng. Rep. 816 (C.P.)
[6] Id. At 116, 136 Eng. Rep. at 819.
[7] (1940) 1 Ch 667.
[8] CAP T13 Laws of the Federation of Nigeria 2004.
[9] The first statute regulating trade marks in the United Kingdom was the Trade Marks registration Act 1875. Some of the legislations subsequent to the Trade Marks Registration Act 1875 and which were amended over the years and eventually repealed were the Trade Marks Registration Amendment Act 1876, the Trade Marks Registration Extension Act 1877, the Patents, Designs and Trade Marks Act 1883, the Patents, Designs and Trade Marks Act 1888, the Trade Marks Act 1905, the Trade Marks Act 1919, the Trade Marks (Amendment) Act 1937, the Trade Marks Act 1938 (which Nigeria wholly reproduced as her Trade Marks Act 1965 and has not amended till date) and the Trade Marks (Amendment) Act 1984.
[10] (1945) AC 68.
[11] (2005) 13 NWLR 1, 206 paras C–D.
[12] (2005) 14 NWLR 760 (Pt 946), 787, paras B–C.
[13] The current designation of the office is Minister for Trade and Investments.
[14] See, for example, C. Ogunbanjo, ‘Jumping the Gun on Service Marks’. Available at <http://www.chrisogunbanjo.com/files/Jumping_the_Gun_on_Service_Marks.pdf> accessed 20 May 2015); and Aluko & Oyebode & Co., ‘Regulation on Protection of Service Marks in Nigeria’ (2008). Available at <http://www.aluko-oyebode.com/files/nl_ipmay07.pdf> (accessed 18 December 2015).
[15] Olatunji, Olugbenga Ajani, Fundamentals of the Nigerian Trade Marks Act and Implications for Foreign Trade Mark Owners, Journal of Intellectual Property Law & Practice, 2016, Vol. 11, No. 2 <https://www.academia.edu/22322286/Fundamentals_of_the_Nigerian_Trade_Marks_Act_and_Implications_for_Foreign_Trade_Mark_Owners >accessed on 06/07/2020.
[16] CAP T20 Laws of the Federation of Nigeria 2004.
[17] Centennial Edition (1891 – 1991) (sixth edition, 1990) 800.
[18] International Student’s Edition (8th edition. 2015) 779
