Nigeria has enjoyed relatively strong economic growth over the past seven years with the Federal Government creating opportunities for SMEs and entrepreneurs, thereby sparking creativity and action across the different sectors. With this growth in commercial activities, there is undoubtedly a corresponding increase in the introduction of new products into the market. Therefore, it is expected that conflicts relating to similarity of trademarks are bound to arise.
This conflict was the subject of the recent judgement in the case of Ignatius Okoye & Anor V. the Registrar of Trademarks, 2022, one of the issues for determination before the Federal High Court was the legitimacy of registering similar and/or nearly resembling trademarks in the same class to different applicants considering the provisions of Section 5 and other provision of the Trademarks Act. The Section in subsections (1) and (2) grants exclusive right to proprietor of a trademark for the use of the trademark in relation to the specified goods and ensures that the rights of the Proprietor are protected in the case of infringement
In this case, five separate persons applied to register trademarks similar to that of the plaintiffs in the same class. Their applications were accepted and registered regardless of the close similarity to the prior registered trademark of the Plaintiff. As a result, the Plaintiff approached the courts for determination of his rights and sought for the removal of the conflicting trademarks from the Register.
In interpreting the above section, the Court stated that the Plaintiff being the first to file has acquired "exclusive right to the use of those trademarks in relation to those goods" and ".solely have the power or right over the trademarks to perform any action, acquire any benefit or deny others the right to perform the same action or business or acquire the same benefit with respect to the trademarks."
The Court further relied on Section 13 (1) of the Act, which prohibits the registration of identical and resembling trademarks to a prior registered trademark.
The Court reemphasized that the registration identical or similar trademarks was a clear violation of the rights of the proprietor and amounts to an infringement. Therefore, the court ruled that ".the registration and issuance of the five trademarks. to different persons not being the plaintiffs, is an infringement of the exclusive right or use of the said registered trademarks of the plaintiffs" and that ".it is unlawful for the Defendant to register the five other trademarks which are identical and/or nearly resembling the already registered trademarks of the Plaintiffs without the permission of the said Plaintiffs first sought and obtained."
In this judgement, the Court did not create any room for doubt on the rights vested by the law on Proprietor of a registered trademark in Nigeria. Though, the Registrar maintains both administrative and quasi-judicial powers over the administration of trademarks in the country, the right of the Proprietor cannot be altered by the Registrar regardless of the powers vested by the Act.
This judgment is indeed a good development for stakeholders in Nigeria. As there has been multiple acceptance and registration of identical and similar trademarks by the Registry over the years. This anomaly has continued unabated especially where the first Applicants are unable or delay in raising objections within the statutory two months opposition period. Hopefully, the Registry will now implement the ruling in subsequent examination of trademarks in Nigeria.
