Trade Marks, Trade Names and Designs

• Pages: 6-31

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TRADE MARKS, TRADE NAMES AND DESIGNS.

(1)CERTIFICATE OF TRADE MARK AND CERTIFICATE OF DESIGN.

Can possession of certificate of design confer right to use registered trade mark?

“The possession of certificate of Design does not confer the right to use a mark registered as trade

mark. Consequently the contention of the appellant that the use of the respondents trade mark was

covered by a certificate of design is of no moment.” – Per Jauro, J.C.A., in A. Int’l Ltd. v. S.K.

Int’l Ent. Ltd. Suit No. CA/L/147/2003; (2010) 13 N.W.L.R. (Pt. 1211) 270 at 301.

Status and function of certificate of trade mark and certificate of design.

“Learned counsel for the appellant had submitted that a certificate of Design is superior to a trade

mark certificate. I must state, that of the two certificates non is superior to the other, but that they

are rather issued for different purposes or they perform different functions. The certificate of trade

mark protects the integrity of the product while a design certificate protects the creativity in the

design of the product.” – Per Jauro, J.C.A., in A. Int’l Ltd. v. S.K. Int’l Ent. Ltd. Suit No.

CA/L/147/2003; (2010) 13 N.W.L.R. (Pt. 1211) 270 at 301.

(2)DISTINCTIVENESS IN RESPECT OF TRADE MARK OR DESIGN.

How distinctiveness of trademark or design is acquired.

(1)“The element of distinctiveness is consonant to or predicated on some age by way of long or

extensive user. What constitutes long or extensive user is a question of fact to be determined in the

light of the circumstances of the case. It is certainly not the ageof Methuselah. Once the trade

mark, by frequent use, has acquired a notoriety in the trade to the common knowledge and common

and easy identification of persons in the trade, it will be said to have acquired the character of

distinctiveness. In other words, the trade mark has no hiding place so much so that to the eyes of

the public, people say in chorus or union, “of course that is the trade of mark XYZ, as it identifies

their goods.” – Per Tobi, J.S.C., in Ferodo Ltd. v. Ibeto Ind. Ltd. Suit No. S.C. 95/1999; (2004) 5

N.W.L.R. (Pt. 866) 317 at 367 – 368.

(2) “The learned Justice then went on to positinter alia: - “In the law of trademarks, the element

of distinctiveness comes before that of passing off in the way the number 1 (one) comes before the

number 2. In other words, the plaintiff must first prove to the satisfaction of the Court that the

trademark has a distinctive cha racter or nature, before he can prove the movement of the trademark

of the defendant in business circles byway of passing-off. The element of distinctiveness is

consonant to or predicated on some age byway of long or extensive user. What constitutes long or

extensive user is a question of fact to be determined in the light of the circumstances of the case.

It is certainly not the age of Methuselah. Once the trademark, by frequent use, has acquired

notoriety in the trade to the common and easy knowledge and common identification of persons

in the trade. It will be said to have acquired the character of distinctiveness. In other words, the

trademark has no hiding place so much so that to the eyes of the public, people say in chorus or

union, of course that is the trademark of XYZ, as it identifies their goods.” Going by this authority,

the learned trial Judge from the totality of the evidence of the witnesses and in particular the

documentary exhibits tendered, has in my view correctly held that the Benson and Hedges

Trademark has been extensively used for the past thirty-three years to the extent that it has acquired

more than enough notoriety.” – Per Agube, J.C.A., in I.T. (Nig.) Ltd. v. B.A.T. (Nig.) Ltd. Suit No.

CA/IL/54/2007; (2009) 6 N.W.L.R. (Pt. 1138) 577 at 625.

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Meaning of “distinctiveness” as it relates to trade marks anddesigns.

(1) “In the said case ofFerodo Ltd. v. Ibeto Industries Ltd.(2004) 5 N.W.L.R. (Pt. 866) 317, Tobi,

J.S.C. at page 367 paragraphs E-F quoted with approval the definition of “distinctiveness” as it

relates to the law of trademarks, from Black’s Law Dictionary (Sixth Edition) at page 473 as

follows:- “An essential element of a device claimed to be a trademark is that it identify the goods

of a particular merchant and distinguish them from the goods of others. A word, symbol, shape or

colour serving this purpose is said to be distinctive. Certain marks are inherently distinctive while

others only acquire distinctiveness over time … A distinctive mark may lose its distinctiveness

overtime and become generic.”– Per Agube, J.C.A., in I.T. (Nig.) Ltd. v. B.A.T. (Nig.) Ltd. Suit

No. CA/IL/54/2007; (2009) 6 N.W.L.R. (Pt. 1138) 577 at 624.

(2) “In the light of the claim, I should examine the meaning of the word “distinctiveness”, as it

relates to the law of trade marks. Black’s Law Dictionary provides an answer at page 473 as

follows: “An essential element of a device claimed to be a trademark is that it identify the goods

of a particular merchant and distinguish them from the goods of others. A word, symbol, shape or

colour serving this purpose is said to be distinctive. Certain marks are inherently distinctive while

others only acquire distinctiveness over time...A distinctive mark may lose its distinctiveness over

time and become generic.” See Black M. A. Black’s Law Dictionary (Sixth edition).” – Per Tobi,

J.S.C., in Ferodo Ltd. v. Ibeto Ind. Ltd. Suit No. S.C. 95/1999; (2004) 5 N.W.L.R. (Pt. 866) 317 at

367.

(3) “The word’s distinctiveness when used means generally an essential element of the trade mark

which distinguishes it from other marks. It is a mark that consumers immediately and consistently

associate with specific goods and services. It may be a word symbol, shape or colour in the trade

mark.” – Per Nwodo, J.C.A., in Virgin Ent. Ltd. v. R. Bev. (Nig.) Ltd. Suit No. CA/L/550/05;

(2009) 12 N.W.L.R. (Pt. 1156) 498 at 523.

Test for determining distinctiveness of a trademark or design.

“InRe: Cadbury Brothers Ltd’s Application(1915) 1 Ch.331 it was decided that to satisfy the test

of distinctiveness, “when one sees the mark, one’s mind should immediately go to the person or

company who sells or manufactures the article, and to no other’s.” See the evidence of the PW2 to

PW5 tothe effect that the gold pack is synonymous with Benson and Hedges.” – Per Agube,

J.C.A., in I.T. (Nig.) Ltd. v. B.A.T. (Nig.) Ltd. Suit No. CA/IL/54/2007; (2009) 6 N.W.L.R. (Pt.

1138) 577 at 624.

(3)FEDERAL HIGH COURT

Extent of jurisdiction of Federal High Court in matters relating to trademarks and passing

off.

(1) “By virtue of section 251(l)(f) of the 1999 Constitution of the Federal Republic of Nigeria, the

Federal High Court was conferred with exclusive jurisdiction in matters relating to any Federal

enactment on copyright, patent, designs etc.” – Per Mukhtar, J.S.C., in Omnia (Nig.) Ltd. v.

Dyktrade Ltd. Suit No. S.C. 176/2003; (2007) 15 N.W.L.R. (Pt.1058) 576 at 601.

(2) “Let me examine the provision of section 251(1)(f),© section 315 of the Constitution, which

states thus: “251(1) Notwithstanding anything to the contrary contained in this Constitution and in

addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly,

the Federal High Court shall have and exercise jurisdiction to the exclusion of any other Court in

civil causes and matters:- (f) any Federal enactment relating to copyright, patent, designs, trade

marks and passing-off, industrial designs and merchandise marks, business names, commercial