Saturday, June 10, 2023
No Result
View All Result
SUBSCRIBE
eNaira Online News
  • Home
  • eNaira
  • Capital Market
  • Business
  • Finance
  • Banking
  • PF
  • Companies
  • Crypto
  • Real Estates
  • Opinion
  • Home
  • eNaira
  • Capital Market
  • Business
  • Finance
  • Banking
  • PF
  • Companies
  • Crypto
  • Real Estates
  • Opinion
eNaira Online News
No Result
View All Result

Trademark Infringement in Nigeria – Analysing the decisions in Fan Milk v. Mandarin Hotels (2)

by e-Naira Online News
June 10, 2022
in Business
Reading Time: 6 mins read
A A
0
Home Business
Share on FacebookShare on Twitter


On 10 March 2022, the Federal High Court sitting in Abuja in Suits No: FHC/ABJ/CS/791/2020: Fan Milk International A/S v. Mandarin Oriental Services BV and The Registrar of Trademarks and FHC/ABJ/CS/792/2020: Fan Milk International A/S v. Mandarin Oriental Services BV and The Registrar of Trademarks, delivered two landmark judgements and established certain principles on the determination of trademark infringement.
The Court also used the opportunity to provide a clear interpretation of the provisions of the Trademarks Act regarding the registration of a trademark that is similar to an existing trademark but registered in a different class.
In Part 1 of this article, published last week Thursday, we discussed the facts of the cases, the appellant’s and the respondent’s arguments. In today’s article, we will focus on the court’s decision and its implication.

The decision of the court
The court formulated three issues after considering the arguments of the parties and resolved each issue as follows:
The first issue was whether the 2nd Respondent was wrong when it held that the 1st Respondent’s trademark was not identical to that of the Appellant nor so nearly resembles the trademark as to be proposed trademark of the 1st Respondent as to be likely to deceive or cause confusion.
Relying on sections 13(1) and (2) of the Trademarks Act and the decision of the Supreme Court in Ferodo Limited & Anor v. Ibeto Industries Limited, the court stated two principles that would serve as a guide in determining whether a proposed trademark is offensive or not as follows:
a) Whether the proposed trademark is identical to a registered trademark belonging to a different proprietor? Or
b) Whether the proposed trademark nearly resembles a registered trademark as to be likely to deceive or cause confusion?

The court disagreed with the argument of the 2nd Respondent on the procedure for comparing both trademarks i.e. looking at both trademarks side by side. The court further stated that the question is not if a person is looking at two trademarks side by side, but whether there would be a possibility of confusion. The question is whether the person who sees the proposed trademark in the absence of the other trademark would be deceived and think that the trademark before him is the same as the other, of which he has a general recollection.

Applying this principle to the case, the court held that both trademarks were not identical or likely to deceive or cause confusion as to be considered oppressive. The court further stated that the words ‘’FanMilk’’ boldly written under the blades of the Appellant’s trademark sets it asides and differentiates it from the 1st Respondent’s proposed trademark. The court also stated that the Appellant’s trademarks have been around for a long period of time and that people are used to what it looks like, particularly with the boldly inscribed Fan and FanMilk and as such, cannot be confused with any other Fan device without these words.
Thus, on the first issue, the court held that the 2nd Respondent was right in holding that both marks were not identical as to cause confusion.

The second issue formulated by the court was whether the 2nd Respondent was correct to determine that the Appellant cannot claim rights over an allegedly conflicting trade trademark, registered in a different class.
On this issue, the Court cited the provisions of section 13(1) of the Trademarks Act and held that there are two instances where a trademark shall not be registered. In addition, the Court also relied on the Ferodo case and held that an action for infringement will lie where a competitor uses a registered trademark in connection with the proprietor’s goods for the purpose of comparing them with his own goods in the same class.

Read also: Biggest Business Challenges for Law Firms in 2022

Flowing from this, the court held that the 1st Respondent’s mark could have only been rejected if it is identical with or it so nearly resembles the trademark of the Appellant which is already on the register and in respect of the same goods or description of goods. The mark of the 1st Respondent which the court held to not be identical to that of the Appellant was not in respect of the same goods or description of goods as the existing registration and the proposed trademark are in different classes. While the Appellant’s trademarks cover goods, the proposed trademark of the 1st Respondent covers services.

Therefore, on this issue, the court held that the 2nd Respondent was right when it held that the Appellant cannot claim rights over an allegedly conflicting trademark registered in a different class.
The third issue formulated by the court was whether the 2nd Respondent was wrong when it held that Section 12 of the 1999 Constitution prevents the Appellant from claiming the benefits afforded to famous and renowned marks on account of the Paris convention and the TRIPS Agreement.

In resolving this issue, the court stated that the Paris Convention and TRIPS Agreement referred to by the Appellant have not been domesticated in Nigeria and by implication cannot be relied on. The court held that the 2nd Respondent was not wrong when it held that section 12 of the 1999 Constitution prevents the Appellant from claiming the benefits afforded to famous and renowned marks where the law they seek to rely on has not been domesticated in the country.
Therefore, this issue was also resolved in favour of the Respondents. Accordingly, the appeal was dismissed for lack of merit.

Implications of the Decision
The decision establishes guiding principles for the determination of an infringing trademark. This decision is to the effect that in determining whether a proposed trademark is similar or identical to an existing one or not, the question is whether the person who sees the proposed trademark in the absence of the existing trademark would be deceived to think that the trademark before him is the same as the other. Where this is not the case, such a proposed trademark cannot be said to be infringing the existing trademark.

From this decision, it is clear that a detailed side by side comparison i.e. putting the two marks side by side, looking for resemblance may not be relevant in determining similarity as an average consumer would not in normal circumstances, analyse every minute detail but would rather perceive the mark as a whole.

Secondly, the decision is instructive on the right of a party to lay claim to an infringement over an allegedly conflicting trademark registered in a different class. Thus this decision reiterates the settled principle of law that a party cannot claim rights over an alleged conflicting trademark registered in a different class. Consequently, a proprietor of a trademark in a particular class cannot maintain an action for infringement against a proposed trademark in another class.

The last issue which the court addressed was the applicability and bindingness of the provisions of undomesticated treaties and conventions in Nigeria. In resolving this issue, the court relied on section 12 of the 1999 Constitution to determine if an unratified or undomesticated treaty prevents a party from claiming the benefits of the fame and renown attributable to its trademarks as allowed under the Paris Convention and the TRIPS Agreement.

The court stated that the Paris Convention and TRIPS Agreement referred to by the Appellant have not been enacted into law in Nigeria and as such cannot be enforced in Nigeria based on the provisions of section 12 of the 1999 Constitution. By this decision, section 12 of the 1999 Constitution prevents parties from claiming the benefits afforded to famous and renowned marks under the Paris Convention and TRIPS Agreement at least till the enactment of both Agreements in Nigeria.

Conclusion
The resolution of the formulated issues by the court, in this case, is a true reflection of the statutory provisions on each issue and represents a good development, especially in the areas of the metrics for the determination of infringing trademarks. By upholding the decision of the Registrar of Trademarks and refusing the Appellant’s opposition, the Federal High Court has succeeded in preventing an absurdity which would have come about by allowing the appeal.

The effect of allowing the appeal would have meant that even where there is no likelihood of confusion, proprietors would be prevented from registering trademarks in different classes from existing ones just because they have similar words. It is our opinion that this was not the intention of the draftsman when the Trademarks Act was being enacted and the decision of the Federal High Court, in this case, has reflected the true position of the law.

Unrep desktop



Source link

Tags: AnalysingdecisionsFanHotelsInfringementMandarinMilkNigeriaTrademark
Previous Post

I’ll carry everyone along, Tinubu promises after meeting Umahi

Next Post

NGX calls on corporates to take positive actions towards sustainability reporting

Related Posts

DSS arrests Nigeria’s central bank governor, Godwin Emefiele
Business

DSS arrests Nigeria’s central bank governor, Godwin Emefiele

by e-Naira Online News
June 9, 2023
BREAKING: Tinubu Indefinitely Suspends Emefiele
Business

BREAKING: Tinubu Indefinitely Suspends Emefiele

by e-Naira Online News
June 9, 2023
How Nigeria can reflate the economy after oil production quota cap at 1.38 m/bpd – Analyst  
Business

How Nigeria can reflate the economy after oil production quota cap at 1.38 m/bpd – Analyst  

by e-Naira Online News
June 9, 2023
Technology transfer and capacity building for renewable energy deployment in Nigeria
Business

Technology transfer and capacity building for renewable energy deployment in Nigeria

by e-Naira Online News
June 9, 2023
AELEX sponsors 7th ICC Africa Conference on International Arbitration
Business

AELEX sponsors 7th ICC Africa Conference on International Arbitration

by e-Naira Online News
June 9, 2023
Next Post
NGX calls on corporates to take positive actions towards sustainability reporting

NGX calls on corporates to take positive actions towards sustainability reporting

Young business lawyer spotlight: Ayodele Ashiata Kadiri

Young business lawyer spotlight: Ayodele Ashiata Kadiri

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

  • Trending
  • Comments
  • Latest
Subsidy Removal: FG, Labour Unions Fail To Reach Agreement

Subsidy Removal: FG, Labour Unions Fail To Reach Agreement

May 31, 2023
World Bank revises Nigeria’s 2023 GDP downwards to 2.8%

World Bank revises Nigeria’s 2023 GDP downwards to 2.8%

June 10, 2023
SEC Bans Binance Operations in Nigeria

SEC Bans Binance Operations in Nigeria

June 10, 2023
Gov Muftwang swears in 17 LG transition chairmen

Gov Muftwang swears in 17 LG transition chairmen

June 10, 2023
Deputy Senate Presidency: What Barau Jibrin will bring to 10th Assembly

Deputy Senate Presidency: What Barau Jibrin will bring to 10th Assembly

June 10, 2023
Binance operations in Nigeria is illegal – Nigeria’s SEC

Binance operations in Nigeria is illegal – Nigeria’s SEC

June 10, 2023
Delta commuter dies in crash, police seek relatives

Delta commuter dies in crash, police seek relatives

June 9, 2023
Nigerian Exchange Weakens by 0.05% Despite Strong Investor Sentiment

Nigerian Exchange Weakens by 0.05% Despite Strong Investor Sentiment

June 9, 2023
Crypto Investor Sentiment Refuses To Budge, But Can The Weekend Change This?

Crypto Investor Sentiment Refuses To Budge, But Can The Weekend Change This?

June 9, 2023

Get the free newsletter

eNaira Online News

Get the latest news and follow the coverage of eNaira, Business & Financial, Stock Market, Analysis, and more from the trusted sources.

CATEGORIES

  • Banking
  • Business
  • Capital Market
  • Companies
  • Crypto
  • eNaira
  • Finance
  • Opinion
  • Personal Finance
  • Real estate
  • Uncategorized
No Result
View All Result

GET THE FREE NEWSLETTER

  • Disclaimer
  • Privacy Policy
  • DMCA
  • Cookie Privacy Policy
  • Terms and Conditions
  • Contact us

Copyright © 2022 e-Naira Online News.
e-Naira Online News is not responsible for the content of external sites.

No Result
View All Result
  • Home
  • eNaira
  • Capital Market
  • Business
  • Finance
  • Banking
  • PF
  • Companies
  • Crypto
  • Real Estates
  • Opinion

Copyright © 2022 e-Naira Online News.
e-Naira Online News is not responsible for the content of external sites.