By M.O.Idam, Esq.
‘RATEL’ TRADE NAME REGISTRATION: WHO HAS THE RIGHT TO SUE FOR INFRINGEMENT—THE ANIMAL THAT ORIGINALLY OWNED THE NAME, THE UNREGISTERED USER OR THE REGISTERED USER?
What is Ratel?
A Ratel is another name for a Honey Badger. A small but very tough animal found in Africa and some parts of Asia.
What is Trade Mark?
Under the Trade Marks Act (Cap. T13, Laws of the Federation of Nigeria), a “trade mark” is defined (in essence) as:
A mark used or proposed to be used in relation to goods for the purpose of indicating, or 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.
A Trademark is any distinctive sign, word, logo, design, sign or colour, or even smell that identifies your services, product and separates it from competitors.
A mark may qualify for registration if it is unique, not deceptive, scandalous, or illegal.
However, an animal name that is common or popular—such as cow, goat, or horse—may not be registrable as a trademark for certain goods or services because of its generic nature and lack of distinctiveness.
Conversely, names of animals such as Jaguar, Tiger, Ratel and Leopard may qualify for registration where they are distinctive, uncommon, and not identical or confusingly similar to an existing registered mark.
Interestingly, once a mark—whether relating to an animal or an inanimate object—is registered in respect of particular goods or services, it becomes unavailable for subsequent registration in respect of the same or similar goods or services. This principle was illustrated in Niger Chemists Ltd v Nigeria Chemists Ltd (1961) All NLR 171, where two companies dealing in pharmaceutical products bore similar names. The court restrained the latter company, Nigeria Chemists Ltd, on the ground that its name was confusingly similar to Niger Chemists Ltd and likely to mislead the public.
In Fredo (Ferodo) Ltd v Ibeto Industries Ltd (2004) 5 NWLR (Pt. 866) 317, Ferodo Ltd was the registered proprietor of a trademark in respect of brake linings. Ibeto Industries later used a confusingly similar mark on identical products. The Supreme Court held that registration confers exclusive rights on the proprietor, and that no other person may register or use an identical or deceptively similar mark in respect of the same or similar goods.
However, while the Trade Marks Act confers on a registered proprietor the exclusive right to use and maintain legal control over a registered mark or name, the Act also preserves the right of an unregistered user who has built goodwill in a mark or name to maintain an action for passing off against an unauthorised user.
To succeed, such a claimant must prove that he has acquired goodwill in the mark or name, that there has been a misrepresentation by the defendant, and that such misrepresentation has caused or is likely to cause him damage. See section 3 of the Act, which 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.
CONCLUSION:
Ratel may be registered as a trade name for other goods and services, provided it is not confusingly similar to an existing mark in the same or related class and is sufficiently distinctive to identify the applicant’s goods or services.
M.O.Idam
