In this article, we discuss a recent Nigerian court judgment that deals with a trade mark dispute: Sanofi S.A. v Sanofi Integrated Services Ltd, Sanofi Nigeria Enterprises Limited, Mrs Susan Namiji t/a Sanofi Nigeria Enterprise, and Corporate Affairs Commission.
The judgment is unfortunately not always easy to follow, but it is important. Firstly, because Nigeria is Africa's largest economy and secondly, because Nigerian IP judgments are rare.
In this case, the French healthcare company, Sanofi S.A., was in a dispute with various Nigerian entities that had used the name Sanofi in their corporate and/or trading names. The court ruled in favour of Sanofi S.A. We would imagine that foreign companies doing business in Nigeria are likely to approve of the judgment.
Sanofi S.A. was founded in 1973. The company has Nigerian trade mark registrations for the trade mark SANOFI in classes 3 and 5 that date back to 1987.
When Sanofi S.A. became aware of the fact that there were subsequent (1992 and 2011) company and business name registrations featuring the name Sanofi, namely:
- Sanofi Integrated Services Ltd
- Sanofi Nigeria Enterprises Limited
- Sanofi Nigeria Enterprise
it applied for these registrations to be cancelled, and/or for these businesses to be compelled to change their names. Sanofi S.A. alleged that these Nigerian entities were creating "the false impression that they are associated with the plaintiff".
THE LEGAL ISSUES
Judge Omotosho described the issues facing the court as follows:
- Were the local companies/entities infringing Sanofi S.A.'s trade mark registrations?
- Could the local companies/entities be obliged to change their names by the Corporate Affairs Commission ("CAC")?
- Could the local companies/entities legally conduct business using the name Sanofi?
- Did the CAC have the power under the Companies and Allied Matters Act to make the orders sought by Sanofi?
The judge then went on to say that the issues were "quite straightforward" and could be summarised as follows: Was it the plaintiff or the defendants who were entitled to the use of the name SANOFI?
THE LEGAL BASIS FOR THE ATTACK
Sections 30(1)(2) and (4) of the Companies and Allied Matters Act (1990) provide that if a name conflicts with a trade mark registered prior to the registration of the company, the CAC can require a change of name.
Judge Omotosho found for Sanofi S.A. The judge held that the three company and business name registrations featuring the name Sanofi – Sanofi Services Ltd, Sanofi Nigeria Enterprises Limited, and Sanofi Nigeria Enterprise – should be cancelled and/or compelled to change their names.
In support of this finding the judge said that the "documents reveal that the plaintiff had registered SANOFI as its trade mark long before the 3rd Defendant registered the business name of SANOFI NIGERIA." All three entities were "violating the Plaintiff's existing trade mark being SANOFI and therefore unlawful."
EVEN GREATER DETAIL
These aspects of the judgment are, we think, important:
The CAC's powers
The judge said that it is clear that the CAC "is vested with powers to refuse to register a company bearing similar names with an existing company or to order a company to change its name from a conflicting name."
The rights of a trade mark owner
The judge described a trade mark as "a proprietary right vested in a person over a distinctive mark, name or sign." Before going on to say that in Nigeria, the right to a trade mark is limited to the class covered by the registration.
The judge then described a trade mark registration as an absolute right (seemingly with no limitation as to goods): "The owner of a trademarked name enjoys exclusive use and ownership of such name to the exclusion of any other person. In fact, where a trademarked name is used without consent of the original owner it constitutes the tort of passing off which entitles the owner to damages and some other reparative measures."
A slam dunk
The judge said that in this case "all the facts are in favour of the Plaintiff. I daresay that a trademarked name takes precedence over a business name...the Plaintiff has established the infringement of its trademark under the Trademarks Act."
The judge said that "the trademark of the Plaintiff if used in any other industry could create the impression that the products or services in that industry are linked to the Plaintiff."
The judge added: "A trademark applies across the board and cannot be used except with the consent of the owner of such a trademark." All three companies, said the judge, were "violating the Plaintiff's existing trade mark being SANOFI and therefore unlawful."
Sanofi S.A. will obviously be happy with the outcome, but this is not a great judgment. It may, however, make Nigerian businesses wary of adopting the trade marks of foreign brand owners.
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