Introduction
Trademarks are one of the core facets of intellectual property (“IP”). They are at the very foundation of business and competitive marketing at all levels, serving as the unique identifiers that distinguish the goods and services of one entity from those of another.1 The more patronage the goods and services of an entity enjoy, the more popularity the brand gains, which could mean the brand eventually becomes “well-known”. In countries like Egypt, Kenya, Mauritius, and South Africa,2 this status is so crucial because it provides broader protection against unauthorized use, even in cases where the trademark is not registered in the jurisdiction. However, this is not the case in Nigeria. While the protection offered is admittedly wider for well-known trademarks, it is not that extensive and falls short of international standards. This article explores the key indicators of well-known trademark status and evaluates the current legal framework in Nigeria, ultimately calling for reforms to enhance protection for well-known marks in the growing Nigerian market.
Understanding Well-Known Status
The concept of a well-known trademark is not explicitly defined under Nigerian law or any of the international treaties to which Nigeria is a party. However, we find Section 32 of the Trademarks Act, 1967 (the “Trademarks Act”) to be instructive on the point. From the section, it can be deduced, essentially, that a mark becomes well-known when its use with goods naturally creates the impression of a connection between those goods and the owner of the mark, even though the mark is not registered in respect of the goods. Simply put, a trademark attains well-known status when it is widely recognized by the public or a substantial segment of the relevant consumer base. Common examples are Coca-Cola, Google, Nike, Toyota, etc.
The recognition of a trademark as well-known is based on a combination of factors. An inexhaustive list of these factors is provided in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks of 19993 (the “WIPO Recommendation”), to wit:
- the degree of knowledge or recognition of the mark in the relevant sectors of the public, including, but not limited to: (i) actual and/or potential consumers of the type of goods and/or services to which the mark applies; (ii) persons involved in channels of distribution of the type of goods and/or services to which the mark applies; and (iii) business circles dealing with the type of goods and/or services to which the mark applies4 ;
- the duration, extent and geographical area of any use of the mark;
- the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
- the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
- the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; and
- the value associated with the mark.5
It is as commendable as it is apt that the WIPO Recommendation notes that these factors are merely guidelines to assist the competent authority to determine whether a mark is a well-known mark, as opposed to pre-conditions for reaching that determination. Marks are to be considered on a case-bycase basis. In any given case, each, some, or none, of the six (6) factors could be relevant, and regard can always be had to possible additional factors.6
It is imperative to note that a claim for well-known trademark status must be substantiated with evidence. Mere assertion or belief that a mark has attained a certain level of renown would obviously not suffice, even though there is truth in it. Evidence may take the form of surveys, market studies, consumer feedback,7 internet search appearances, social media engagement and following, etc.
Protection of Well-Known Trademarks under Nigerian Law
There is no doubt that Nigerian trademark law recognizes the existence of well-known marks. However, the protection offered is largely on par with that which is available for every other mark. For instance, registration remains a condition precedent for trademark protection. Whether a mark is wellknown or not, it must be registered for the exclusive rights to use and enforce infringement to accrue. 8 The decision of the Trademarks Tribunal in Duravit Aktiengesellschaft v. Royal Castle Group of Companies Limited9 aptly demonstrates the point. In that case, it was held:
“One of the vital positions to point out at this juncture is that registered trademarks grant protection in the country they are registered in, and it is territorial. It has effect only within the territorial boundaries of that country. In other words, having your trademarks registered in one country does not prevent others from registering the exact same trademark in other countries or territories. Whereas the Opponent undisputedly submitted in the processes filed before the Tribunal that it has used its DURAVIT Trademark worldwide in the last 200 years, no evidence is led before this Tribunal of a registered application in Nigeria…. [B]y virtue of Article 6bis of the Paris Convention, the concept of well-known marks cannot be imposed on Nigeria save the Nigerian local legislation permits same…. [T]he Opponent has not demonstrated by way of evidence that TRIPS Agreement has been domesticated in Nigeria to convince the Tribunal to agree with its contentions.”
In Nigeria, there are no apparent legal advantages conferred by well-known status save for the following:
1. Defensive Registration. Generally, when a trademark is registered in respect of any class of goods or services, it must be used in relation to those goods or services. A trademark may be removed from the trademark register for non-use, if the person applying for its removal can show that:
- the trademark was registered without any bona fide intention, on the part of its proprietor, for use in relation to the registered class of goods or services, and that up to the date one (1) month preceding the application for removal, there had, in fact, been no bona fide use of the trademark by any proprietor thereof for the time being, in relation to those goods or services; or
- up to the date one month preceding the application for removal, a continuous period of five (5) years or longer had lapsed during which the trademark was a registered trademark but there was no bona fide use of it in relation to the registered class of goods or services by any proprietor for the time being.10
Defensive registration is an exception to the rule, available only to well-known marks. Through defensive registration, a well-known mark can be registered across multiple classes without actual or intended use in those classes, and it will not be liable to removal from the register.11 The aim is to ensure that no other person can register a mark that is identical or similar to the well-known mark so as to profit, intentionally or otherwise, from the brand's reputation.
2. Passing Off. The tort of passing-off, from a
trademark perspective, can be said to be the law's way of
catering to unregistered but well-known trademarks –
compensation of sorts for withholding enforcement rights in respect
of trademark infringement12. Indeed, no party is better
placed to relish the benefits of the common law right to sue for
passing off than the owner of an unregistered wellknown mark. The
reason goes without saying. The cause of action quite literally
rests on goodwill and reputation. Hence, where the owner of a
well-known mark demonstrates that a third party is using an
identical or similar mark, in a manner that creates or has the
tendency to create a false impression of some association with the
well-known mark, a claim for passing-off will
succeed.13
It is important to note that proving the wrongdoing is enough, even
if no actual damages were suffered. It is sufficient that the
action in court was intended to prevent some foreseeable damage. In
Niger Chemists Limited v. Nigeria Chemists14,
the Court, quoting with approval the words of Lord Cozens Hardy MR
in Ewing v. Buttercup (1917) 2 Ch 1, held:
“I know of no authority, and I can see no principle, which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the plaintiff or are carrying on a branch of the plaintiff's business.”
While the two options above offer some comfort to well-known brands, it may be time for Nigerian Trademark law to fully align with various international agreements, such as the Paris Convention for the Protection of Industrial Property, 1883 (the “Paris Convention”) and the Agreement on TradeRelated Aspects of Intellectual Property Rights, 1994 (the “TRIPS Agreement”), which provide frameworks for the protection of well-known trademarks across member countries15.
Statutory protection for unregistered well-known marks will attract greater foreign investment and foster economic growth, as foreign brands are more likely to enter markets where their trademarks are secure, even without local registration.16 Such formal protection will encourage more partnerships with local businesses through franchising and collaborations and, consequently, boost Nigeria's reputation as a viable business hub for international economic engagement.17 Additionally, it will prevent unchecked free-riding, counterfeiting, and unfair competition, fulfilling a core objective of trademark protection.18
Indeed, in ProcterGamble Co. v. G.S.D. Ind. Ltd.19 , Ogunwumiju, JCA (now JSC) underscored the importance of aligning Nigerian trademark law with international standards when she held, albeit obiter, as follows:
“Appellant's counsel argued that Nigeria as a treaty member of the World Trade Organization (WTO) has, by reason of its membership, agreed to shape its domestic laws and policies in a manner consistent with ‘Agreement on Trade-Related Aspects of Intellectual Property Rights' (TRIPS Agreement 1994). As such, there is a presumption of a national will to align with the provisions of the Agreement. Section 2 of the Agreement which deals with trademarks, counsel reinforced, requires in general terms that member countries protect well-known marks. Without being able to confirm executive or legislative ratification of this TRIP agreement as binding on Nigeria it is difficult to interpret the law in that record. However, the jurisprudence that seems to run through our case law in Nigeria has favoured liberalism in interpreting trade mark Act to favour a proprietor of a named brand. I am persuaded by that approach. I feel that Nigerian courts must align with the comity of nations to protect well known trademarks. We must enforce the Trade Marks Laws and understand the raison d'etre of the laws which ensures protection of brand names from imitation and the like.”
Obiter dicta may not be legally binding, but they carry significant weight and persuasive power, 20 making them useful catalysts for legislative reform. 21 The insights of the distinguished jurist must no longer lay inert on the pages of our law reports as they have for nearly twelve (12) years. They certainly were meant to serve a purpose beyond mere decoration. It is time to recognize their value and advocate for reforms in the protection of well-known trademarks in Nigeria. By adopting these changes, Nigeria can strengthen its legal framework and enhance its competitiveness in the global market, allowing both local and international brands to flourish.
Conclusion
The path forward for Nigeria's trademark law is clear: it must evolve to reflect the realities of the global marketplace and the needs of both local and international businesses. By formally recognizing and protecting well-known trademarks, even those that are unregistered, Nigeria can create a more robust legal framework that not only safeguards the interests of brand owners but also attracts foreign investment and stimulates economic growth. This necessary reform would position Nigeria as a competitive player in the global economy, enabling it to harness the full potential of its rich market opportunities. It is time for stakeholders, including policymakers and legal practitioners, to unite in advocating for these changes, ensuring that Nigeria's trademark laws serve not just the present, but also the future of its business landscape.
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