By William Sassani

As the judgment continues to reveberate, a Nigerian lawyer with the hash tag IP #TM #UFAIRCOMPETITION had a say on “Trademark and Unfair Competition: how brands can commercialize their IP?”.

U.S. District Judge Gene Pratter | OpenJurist.org

PHILADELPHIA – Tropical Naturals won a copyright lawsuit over the use of a trademark for soap in a decision handed down Sept. 10 in U.S. District Court for the Eastern District of Pennsylvania.

Chinjindu Chris Maduka had brought a claim against the company seeking more than $1 million for profits earned in six years of use of the DUDU OSUN, which he claimed he had been using since 1986, and DUDU OSUM trademarks. The trademarks are used for marketing what’s referred to as “African black soap.” 

These types of soaps and body products are sold to people in West African countries. They are also popular within the immigrant community living in the United States.

Tropical Naturals claimed that DUDU OSUN was its trademark. It sought $29,235.02 from Maduka as well as attorney’s fees. It also wanted Maducka to be permanently barred from using the DUDU OSUN and DUDU OSUM trademarks in the future, as well as to have his patents pulled from the U.S. Patent Office, and for the court to stop Maducka’s claim to patent the DUDU OSUM trademark.

In her 47-page ruling, Judge Gene Pratter said that Maducka’s claim to have used the trademark in the United States could not be verified until 2001, and that Tropical’s “ownership of the DUDU OSUN trademark predated any legally cognizable use in commerce by” Maduka. The company has used the DUD OSUM trademark, but they are “confusingly similar,” thus preventing Maduka from being able to claim ownership of DUDU OSUM as well.

Pratter said Tropical was not entitled to profits earned by Maduka and that the company was entitled to an injunction preventing Maduka from using either trademark in the future. Also, she said that the Patent Office must cancel Maduka’s registration for DUDU OSUM. But she would not cancel his patent application for DUDU OSUM. Additionally, Maduka must pay Tropical’s attorney’s fees.

PENNSYLVANIA RECORD

A Nigerian Lawyer Tweets

ANWIRI@esmeraldo99
Have you ever used or seen this bar soap in a super market/shop/minimart/store “DUDU OSUN”?…Today’s IP discussion is on Trademark and Unfair Competition: how brands can commercialize their IP?

Summary of the case- Mr Chinjindu Chris Maduka v Tropical Natural Ltd The plaintiff Mr Maduka claimed that he had developed a brand of “African black soap” and related body care products which he markets and sells using the marks DUDU OSUN and DUDU OSUM…

ANWIRI@esmeraldo99
And was suing a Nigerian entity called Tropical Natural Ltd (TNL) for trademark infringement of the mark “DUDU OSUN”, Unfair Competition and sought you recover from TNL $1,020,665.68 as alleged profit from the last 6 years of the use of DUDU OSUN…

ANWIRI@esmeraldo99 TNL counterclaims against Mr Maduka that they are the right owner of the DUDU OSUNark and sought to recover $29,235.02 as profit from the use of the DUDU OSUN & DUDU OSUM mark in the last 6 years, attorney’s fees,permanent injunction barring Mr Maduka from using the disputed mark …

@esmeraldo99 And also cancel Mr Maduka’s registration for the application for the DUDU OSUN mark as well as his pending application for the DUDU OSUN mark. Now you may be wondering what is in a name especially with regards to a business and brand?

ANWIRI@esmeraldo99·Nov 19 Every entrepreneur who has intention or is in a business venture would require a name as a badge, origin and identification which may consist of combination of personal names, invented words or descriptive words, to ensure that it is been protected from passing off.

ANWIRI@esmeraldo99·Nov 19 And it does not matter the kind of business he /she wishes to engage in which could either be private or public. This is where Trademark as an IP comes into play; a TM is used to differentiate a product or service from another in order to avoid confusion…

ANWIRI@esmeraldo99·Nov 19 which could be smell, logos, names, colour, numbers, letters, ‘three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances’.

ANWIRI@esmeraldo99·Nov 19 A trademark is protected once it has been registered and if it has goodwill can be protected from infringement.

Function of trademark i. It identifies the commercial/ trade origin of a goods which is applied. In other words, it is seen as a badge of origin as in the case of…

ANWIRI@esmeraldo99·Nov 19 Arsenal Football Club plc v Reed.

ii. It advertises the goods/services sold by the traders in connection with the mark which is known as the ‘Investment Vehicle’. iii. It can be an indication of quality which helps in differentiating between inferior goods. For example, the Christian Louboutin shoes known for its red sole shoes with the signature can be identified anywhere it is seen.

SCOPE OF PROTECTION a. It protects the work to help distinguish between other goods/services

b. Gives monopoly over use of marks in respect to goods and services which has been registered.

c. Names, words and phrases can be protected as trademark as it represents and defines the brand, sends out information and distinguishes the products/services.

d. Once registered it is is valid for an initial period of 7 years and…

ANWIRI@esmeraldo99·Nov 19 Renewable for another 14 years before the expiry dates.

ANWIRI@esmeraldo99·Nov 19 The conclusion of the court which struck me the most was No. 3 in the picture below. Use in commerce could be likened to the principle of first in time and establishment of the right to use a mark which prevents others from using a mark without the permission from the owner

@esmeraldo99 Mr Abiola Ogunride founder & owner of TNL started manufacturing and selling African Black soap in Nigeria using the “DUDU OSUN” mark in 1995. He gave detailed explanation on how he came up with the name of the mark which was gotten from one of the popular languages in Nigeria.

ANWIRI@esmeraldo99·Nov 19 DUDU in Yoruba means “Black”and OSUN means Camwood. He went further to show continuous use of the mark between 2002-2008 (6 years) while Mr Maduka stayed he started using the mark as far back as 1986 which he also called aspire Dudu Raw Black Soap & liquid black soap.

ANWIRI@esmeraldo99·Nov 19 Both Mr Maduka and TNL both sold soap products, including bar soap known as African Black Soap in the Soap Industry popular in Nigeria, West African countries and was also popular in the U. S especially among immigrants from West African nations.

ANWIRI@esmeraldo99·Nov 19 According to Daniel M McClure he was of the opinion that ‘the history of trademark law was seen as playing out the tension between protecting entitlements on the one hand and encouraging free market competition with access to other protected marks’.

ANWIRI@esmeraldo99·Nov 19 In this case you can see the parties tension in protecting their entitlements on the one hand and encouraging free market competition with access to other protected marks’. Same is applicable in every other IP

ANWIRI@esmeraldo99·Nov 19 With invented words, names or phrases it is easier to protect,as it comprises of different combination to create and represent the brand and are not common words or terms and cannot be found in the English dictionary, and in this case DUDU OSUN/OSUM

ANWIRI@esmeraldo99·Nov 19 BRAND NAMES

This can also be referred to as trade names given protection under trademark to control unfair competition and dilution of trademarks. A brand name is an identity to the product and what makes them stand out from other product and services.

ANWIRI@esmeraldo99·Nov 19 It has been said that most brands speaks for itself hence making the product quality and price higher than its inferior. In the U. S, trademarked names are given utmost protection due to the fact that they represent the brand under both state and federal laws.

ANWIRI@esmeraldo99·Nov 19 Under the Supreme Court in the United States, the federal trademark law has two objectives:

1. Protection of consumers’ ability to identify and distinguish products of various manufacturers;

2. Protecting the business goodwill which a mark symbolizes.

ANWIRI@esmeraldo99·Nov 19 In Nigeria, the ‘FERODO CASE’ is referred to as the foundation (“locus classicus”) of trademark law in Nigeria.

b. Niger Chemist v Nigerian Chemist and D.K.Brown on pronunciation thereby causing confusion.

c. Iyke Merchandise v Pfizer Inc and Others where these two words

ANWIRI@esmeraldo99·Nov 19 “Combartrin Plus” and “Combiterin” were the cause of confusion. Cc -DUDU OSUN v DUDU OSUM

In Omnia Nigeria ltd v Dyke trade ltd the issue was on the use of the word/phrases ‘SUPER ROCKET’ and the plaintiff had to obtain an Anton Pillar Order against the defendant.

ANWIRI@esmeraldo99·Nov 19

CHALLENGES IN TRADEMARK

A. Dilution of names: is said to be reducing of a brands values thereby making the consumers think it is unique, particular and singular. It is also being made up of two particular harms namely:

i. Blurring

ii. Tanishment

ANWIRI@esmeraldo99·Nov 19 Blurring is by associating another mark to another while Tanishment is based on the reputation of a famous brand that is now associated with another brand. The United State enacted the Federal Trademark Dilution Act (FTDA) which was established in 1996 to prevent dilution in any

ANWIRI@esmeraldo99·Nov 19 Form.

B. Counterfeiting and piracy: buying of counterfeits products violates the real author’s right but the consumers themselves are vulnerable to some risk for instance poisoning. Every country is affected by counterfeiting and piracy therefore the law enforcements, agencies

ANWIRI@esmeraldo99·Nov 19 and custom officials worldwide should work in tandem and trading laws should be created in other to frustrate the efforts of these impersonators in shipping, distributing and selling of these products.

ANWIRI@esmeraldo99·Nov 19

C. Passing off in relation to pronunciations and similarities: what happens when two products have the same spellings but different pronunciation, which of the owners should be given the right to own the trademark. In the case of Céline SARL v Céline SA it was held that there was

ANWIRI@esmeraldo99·Nov 19 no infringement. However, the Nigerian case of Niger Chemist v Nigerian Chemist and D.K.Brown may beg to differ or don’t you think so

ANWIRI@esmeraldo99·Nov 19 Now let’s look at the claims the parties are seeking to recover a certain amount of profit made in th last 6 years TNL is asking for $1,020,665.68 while Mr Maduka is asking for … $29,235.02

ANWIRI@esmeraldo99·Nov 19 Proof of ownership under the Lanham Act in the US for trademark is based on the first continuous use of the mark which TNL did between 2002-2008, ownership is not acquired by federal or state registration but from prior appropriation and actual use in the market through the sale
ANWIRI@esmeraldo99·Nov 19 of goods and services while use in commerce is defined under the Lanham Act as the bona fife use of snark in the ordinary course of trade and not made merely to reserve a right in a mark. Courts in the circuit also consider the following factors:

ANWIRI@esmeraldo99·Nov 19

1. The volume of sales of the TMed product in this case DUDU OSUN which TNL showed to have I@ported into the US from 2001 over 150,000 bars of TNL’s DUDU OSUN up till 27 April, 2016 and showed a document of another 48,000 bars sold to different distributors in Virginia from

ANWIRI@esmeraldo99·Nov 19 May 2002 and made $28,479.00 while Mr Maduka had less than $3000 and even sold some of TNL’s branded product. Infringing or not…you tell me

ANWIRI@esmeraldo99·Nov 19

2. The growth trends are both +ve and -ve in the area

3. The number of persons actually purchasing the products in relation to the potential number of customers and TNL had the numbers and finally 4. The amount of product advertised in the area

ANWIRI@esmeraldo99·Nov 19 TNL advertises his brand in the African Imports Catalogue in the Fall/Winter 2002 & Summer 2004 edition, Spring 2009 and Spring 2011 editions. Mr Maduka did none of that to meet market penetration. Ownership in Nigeria under Section 18(1) of the TMA is any person claiming

ANWIRI@esmeraldo99·Nov 19 to be the proprietor of a trade mark used or proposed to be used by him who is desirous or registering it but must apply in writing to the Registrar in the prescribed manner for registration either in Part A or Part B of the Register

ANWIRI@esmeraldo99·Nov 19 What is the deemed registerable under Part A and Part B ? What is the difference? Marks registered in Part A MUST be “distinctive” which is defined by Section 9 of the TMA to be that the work is adapted in relation to the goods in which it is registered to distinguish

ANWIRI@esmeraldo99·Nov 19 goods with which the proprietor of the TM is or may be connected in the course of the trade

ANWIRI@esmeraldo99·Nov 19 While registration in Part B the mark must be capable in relation to the goods in respect of which it is registered or proposed to be registered and doesn’t have to be “distinctive” but be capable of being distinctive.

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