Protectable Trademarks In Nigeria And The Scope Of Their Protection: A Rejoinder

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By Ogbu, Blessing
Ekpere Esq.

INTRODUCTION

I read with interest the intenvention of Ujong Okpa Esq. titled
“Protectable Trademarks in Nigeria and the Scope of Their
Protection”. The article was published online on the
30^th of December, 2020. I commend the industry which the
learned author invested in the work. The subject of the
protectability of trade marks is one aspect of intellectual
property law which does not lend itself to facile construction.
Because the law of trade marks has its origin in the common law
doctrines of actions for deceit and, later, passing off, the
earliest judicial determination of the question of trade marks
protection, first, in the United Kingdom in the case of
Southern v. Hou[1] and in the cases
following that[2], in the United States of
America in the cases of Coats v. Holbrook[3]
and Partridge v. Menck[4] and, then, in
Nigeria, the courts had been assailed with the problem of
campartmentalisation of actions for protection of trade marks. In
the early days of trade marks, one of the questions the courts have
had to answer was whether an action for the infringement of trade
marks is one founded on deceit, whether it was merely a case of
passing off, whether an injunction would lie, and whether it was
the court of law or the court of equity that should assume
jurisdiction. The dilemma was so complicated that in the case of
Rodgers v. Nowill,[5] the judge asked
the counsel for the plaintiff, “Is this an action on the case for a
deceit?” and counsel to the plaintiff responded, “There is no other
title under which such an action can be classed.”[6]

This indeterminate state of the law of trade marks in its
formative years defined the United Kingdom Trade Marks Act of 1938
which was applicable to the colonies, including Nigeria. The 1938
Act, though more comprehensive than its predecessors, was however
fraught with legislative unwieldiness that in the case of
Bismag Ltd v Amblins (Chemists) Ltd[7] the
Lord Justice MacKinnon, LJ while ruling on the infringement section
and other sections of the Act declared, out of frustration, that
the 1938 Act was beset with “fuliginous obscurity”. Sadly, in 1965,
when the Nigerian Government decided to enact an indigenous trade
marks law for the first time, it adopted wholesale albeit
mutatis mutandis the 1938 Act with its inherent
legislative awkwardness and ponderousness and enacted the Trade
Marks Act[8]. Interestingly, while the United
Kingdom has amended its Trade Marks legislation severally since
1938 till date, the latest and applicable law on trade marks in the
United Kingdom being the Trade Marks Act 1994[9], the Nigerian Trade Marks Act which followed
with utmost fidelity the text of the United Kingdom Trade Marks Act
of 1938 has not been amended since its enactment in 1965. It is for
this reason that attempts at scholarly evaluation of its provisions
must be commended. For the sake of scholarship and illumination,
however, it is imperative to correct a few misstatements which the
author made in the course of his treatise.

A CRITICAL EXAMINATION OF MR. OKPA’S
TREATISE

Learned Counsel Okpa launched his treatise with the assertion
“In Nigeria, trademarks are afforded legal recognition by
registration and by their status of (sic) well-known
marks. Despite this status, unregistered well-known marks stand a
half chance (sic) of enforcement when infringed no matter
how popular the mark has gone to be over the years.” This is not
entirely correct. In the first sentence, the author gave the
impression that only registered trade marks enjoy legal
recognition by virtue of their registration and status as
well-known marks. In the second sentence, though convoluted as a
result of the author’s use of mixed idioms, the author conveyed the
idea that the owner of an unregistered trade mark has no remedy in
law. Generally, trade marks enjoy legal recognition by virtue of
their registration as trade marks pursuant to the provisions of the
Trade Marks Act. They also enjoy legal recognition when
they are used as trade marks in the course of trade though they may
not be registered. These requirements for legal recognition is not
conjunctive. It is arguable if it is disjunctive. It is, however,
proper to assert that a trade mark enjoys legal recognition by
virtue of registration, its reputation as such in the mind of the
public though it may not be registered, and by virtue of both its
registration and its reputation.

For a trade mark to enjoy legal protection, however, such trade
mark must be registered as a trade mark under the Act. Within the
context of the Trade Marks Act, legal protectability and legal
recognition are two different phenomena and should not be conflated
or otherwise used interchangeably. Section 3 of the Act provides
that “No person shall be entitled to institute any proceeding to
prevent, or to recover damages for, the infringement of an
unregistered trade mark; but nothing in this Acct shall be taken to
affect rights of action against any person for passing off goods as
the goods of another person or the remedies in respect thereof.”
Under the Act, a registered trade mark enjoys both legal
recognition and legal protection. An unregistered trade mark, on
the other hand, enjoys only legal recognition and its owner can
maintain an action for passing off under common law.

“…where a trademark passes the litmus test of registration and
enjoys the protection of the law, the trademark registrant in whose
favour the trademark is protected is bestowed with the exclusive
right to use the trademark to the exclusion of everyone else to a
certain degree and time.” Though the author did not tell us the
extent of the degree and time, we agree with him only to the extent
that the registered proprietor of a trade mark enjoys the exclusive
right to the use of the trade mark in relation to the goods in
respect of which it is registered. That is the import of section
5(1) of the Act. The Act however, subjects the operation of section
5 to the provisions of other parts of the same section 5 and, then,
to sections 7 and 8. Section 7 relates to saving for vested rights
while section 8 deals with saving for use of name, address or
description of goods.

Section 7 provides that “nothing in this Act shall
entitle the proprietor or a registered user of a registered trade
mark to interfere with or restrain the use by any person of a trade
mark identical with or nearly resembling it in relation to goods in
relation to which that person or a predecessor in title of his has
continuously used that trade mark from a date previous to- (a) the
use of the first-mentioned trade mark in relation to those goods by
the proprietor or a predecessor in title of his; or (b) the
registration of the first-mentioned trade mark in respect of those
goods in the name of the proprietor or a predecessor in title of
his, whichever first occurred, or (where such use is proved) to
object to that person being put on the register for that identical
or nearly resembling trade mark in respect of those goods under
section 13(2) of this Act.” Simply put, the right of
the registered proprietor or a registered user of a registered
trade mark to the exclusive use of the trade mark does not extend
to the right to restrain or interfere with a user of identical or
similar trade mark if the user of the identical or similar trade
mark predates the use or registration of the trade mark. This
provision is valid whether or not the earlier trade mark is
registered or not. Secondly, the right of the registered proprietor
or the registered user of a registered trade mark to exclusive use
cannot be invoked to object to the application by the user of
identical or similar trade mark for registration of the identical
or similar trade mark under the provisions of section 13(2).
Section 13(2) allows identical or similar trade marks to be
registered where honest concurrent use is established or where the
existence of special circumstances allows for their
registration.

By virtue of section 8, the exclusive right of a registered
proprietor or a registered user to use a registered trade mark will
not operate to interfere with the right of a person to the bona
fide use of his name or the name of his place of business, or
of the name, or the name of the place of business, of any of his
predecessor in business; or the use by any person of any bona
fide description of the character or quality of his goods, not
being a description that would be likely to be taken as importing
any such reference as is mentioned in section 5(2)(b) or section
43(4)(b) of the Trade Marks Act. The reference mentioned in
sections 5(2)(b) and 43(4)(b) is any use by an unauthorised user of
a trade mark on goods, or in physical relation thereto, or in
an advertising circular or other advertisement issued to the public
which gives the impression that the unauthorised user is the
registered proprietor or the registered user of the registered
trade mark. In other words, as far as a person other than the
registered proprietor or the registered user uses a trade mark
identical with or similar to a registered trade mark
without giving the public the impression that he is the
registered proprietor or a registered user of the registered trade
mark, the registered proprietor or a registered user cannot
interfere with his right to use his trade mark on any goods.

In his definition of trade marks, Mr. Okpa asserted that
“trademark…is not limited to goods and is not necessarily a ‘mark’
in the strict sense of the word… And even though this Act facially
limits the scope of trademark to goods or products, it is a fact
that trademark in Nigeria transcends to services.” This assertion
has no basis in law, in this case, the Trade Marks Act, and in
fact. First, we submit that, contrary to the author’s assertion, a
trade mark must be a mark. Section 67 defines a trade mark
as “a mark used or proposed to be used…” The same section 67
defines a mark to include “a device, brand, heading, label, ticket,
name, signature, word, letter, numeral or any such combination
thereof.” Thus, whether a mark is used in the strict sense of the
word or in the liberal sense, the definition of a mark under the
Trade Marks Act is broad enough to cover both the strict and
liberal construction of the word.

Secondly, at the risk of accusation of hairsplitting, we submit
that there is no place in the Trade Marks Act CAP T13 Laws of the
Federation of Nigeria 2004 that the application of the Act is made
to cover services. Section 67 of the Act, which is the
interpretation section of the Act, defines trade mark to mean
“… except in relation to a certification trade mark, a
mark used or proposed to be used in relation to goods for the
purpose of indicating, or so as to indicate, a connection in the
course of trade between the goods and some person having the right
either as proprietor or as registered user to use the mark, whether
with or without any indication of the identity of that person, and
means, in relation to a certification trade mark, a mark registered
or deemed to have been registered under section 43 of this
Act.” This is not an isolated example: the Act is
suffused with express stipulations that leave no one in doubt that
trade marks must be used in relation to goods only and nothing
more. In Aristoc Ltd v. Rysta Ltd[10], a case that was decided under the United
Kingdom 1938 Act, the House of Lords held that a mark could not be
registered for the services of laundry and mending of stockings
rendered by the defendants because there was no evidence that such
use would indicate a connection in the course of trade.

In asserting that the scope of trade marks transcends goods and
extends to services, the learned author of the treatise under
consideration overlooked one of the principles of statutory
interpretation, to wit, the doctrine of expressio unius est
exclusion alterius, that is, the expression of one thing is
the exclusion of another. This maxim prohibits the importation of
unintended meanings into the clear, unambiguous words of statutes,
or the extension of the application of statutes beyond the scope
contemplated by the draftsman thereof. In Buhari v.
Obasanjo[11], the Supreme
Court held that the words of statutes, when they are clear and
unambiguous, should be given their literal meaning. In
Oluwalogbon v. Government of UK[12], it was stated that, in the construction of
statutory provisions, where specific things are mentioned, the
intention is that those not mentioned are not intended to be
included. If the Trade Marks Act had intended that the Act would
apply to services, or if the draftsman had intended that service
marks would be registrable under the Act, provisions would have
been made to that effect. It is, therefore, misleading for the
author to claim that “it is a fact that trademark in Nigeria
transcends to services.”

We note that the authority for Mr. Okpa’s authoritative
assertion was the 2007 Ministerial Regulation seeking to amend the
Trademark Regulation of 1967. Mr. Okpa further argued that Nigeria
adopted, on the 19^th of April, 2007, vide the
2007 Ministerial Regulation seeking to amend the Trademark
Regulation of 1967, the Nice Classification of Goods and Services
which extended goods to include services in classes 34 – 45.
In making this Regulation, the Minister for Commerce[13] purported to act pursuant to his powers under
section 45 of the Trade Marks Act. Section 45 does not empower the
Minister to amend the Trade Marks Act. Amending the scope of the
application of the Trade Marks Act to include services and the
registrability of service marks, certainly, is tantamount to
amending the Trade Marks Act, a function that is within the
exclusive purview of the National Assembly by virtue of section
4(1) and (2) of the Constitution of the Federal Republic of Nigeria
1999 as amended. To dispel all vestiges of doubt, section 45 of the
Trade Marks Act is reproduced in full hereunder:-

“45. (1) The Minister may make
regulations-

(a) for regulating the practice under this Act,
including the service of documents;

(b) for classifying goods for the purposes of
registration of trade marks;

(d) for securing and regulating the publishing and
selling or distributing, in such manner as he Minister thinks
fit, of copies of trade marks and other
documents;

(e) for prescribing the fees to be paid in respect
of applications, registrations and other matters under this
Act;

(f) for prescribing anything required or authorised
by this Act to be prescribed by regulations;

(g) for extending the time limited by this Act for
the performance of any act, whether generally or in particular
cases and whether at the discretion of the Registrar or
otherwise;

(11) for imposing restrictions as regards the
registration under this Act of the arms, flags, emblems, titles or
other distinctive marks of any country or international
organisation;

(i) generally for regulating the business of the
office of the Registrar and all things by this Act placed under the
direction or control of the Registrar or the
Minister.

(2) Regulations under this section shall not have
effect until published in the Federal Gazette.

Applying the maxim of expressio unius est exclusio
alterius, it can be seen that the provisions of section 45, by
the widest stretch of any rule of statutory construction, does not
vest in the Minister the power to amend the Act, or to use his
regulation-making power to extend the scope of application of the
Act to include services. Indeed scholars of intellectual property
law have contended that the action of the Minister does not enjoy
the force and backing of the law[14]. In his
contribution to the debate, Olugbenga Ajani Olatunji[15] contended that

“Section 42(1) specifically gives the Minister a
discretionary power to make regulations empowering the Registrar of
Trade Marks ‘to amend the register’ so as to be in compliance with
any ‘amended or substituted classification that may be prescribed’.
Section 45(b) gives the Minister the power to make regulations ‘for
classifying goods for the purposes of the registration of trade
marks’.

“It remains unknown how these clear and unambiguous
provisions of the NTMA can be interpreted to confer power on the
Minister to extend the classification of goods to include services.
This is more so the case when ss 42(1) and 45(b) only confer power
on the Minister to classify goods (not services) and s 67 clearly
defines ‘trade mark’ as a mark used on goods (again, not on
services). This article therefore submits that the Minister’s
action is ultra vires, unconstitutional and void since it is the
National Assembly alone which has the power to amend or replace any
of its acts.”

Moreover, the mere fact that Nigeria purported to adopt the Nice
Classification of Goods and Services on the 19^th of
April, 2007 does not translate automatically to an amendment of the
Trade Marks Act so as to vest registrability on service marks.
Section 3 of the Treaties (Making Procedure, etc.) Act[16] provides as follows:-

“(1) Treaties shall be classified
into-

Law-making treaties, being agreements constituting
rules which govern inter-state relationship and co-operation in any
area of endeavour and which have the effect of altering or
modifying existing legislation or which affects the legislative
powers of the National Assembly;
Agreements which impose financial, political and
social obligations on Nigeria or which are of scientific or
technological import;
Agreements which deal with mutual exchange of
cultural and educational facilities.

(2) The treaties or agreements specified
in-

(a) subsection (1) (a) of this section need to be
enacted into law;

(b) subsection (1) (b) of this section need to be
ratified;

There is no gainsaying that the Nice Classification of Goods and
Services is an international treaty which has the effect of
altering or modifying an existing legislation, in this case, the
Trade Marks Act CAP T13 Laws of the Federation of Nigeria 2004. The
Minister’s 2007 Regulation, in so far as it purports to extends the
scope of the application of the Act to include services is a
ministerial action that is ultra vires his ministerial mandate
under the Act as it constitutes a usurpation of the legislative
powers of National Assembly and, therefore, is an infliction of
grave violence on the principles of separation of powers. Moreover,
international agreements or protocols do not become operational in
a sovereignty by mere ‘adoption’. An international instrument
becomes effective and binding on a nation-state through
domestication, ratification or accession.

In his analysis of the powers of the Registrar of Trade Marks
under the Trade Marks Act, learned counsel Okpa Esq. opined thus:
“The power conferred on the Registrar over trade mark
infringement disputes by sec.47, 55 and 57 of Trade Marks Act is
overwhelming and is arguably inconsistent with the provision of
section 251(f) of the Constitution and should be declared null and
void by reason of the inconsistency in accordance with section 3 of
the said Constitution.” This opinion, though plausible, is, a
misapprehension of the provisions cited therein. We shall reproduce
the three sections hereunder for ease of reference:-

Section 47: “In all proceedings before the Registrar
under this Act, the Registrar shall have power to award to any
party such costs as he may consider reasonable, and to direct how
and by what parties they are to be paid, and any such order may, by
leave of the court or a judge thereof, be enforced in the same
manner as a judgment or order of the court to the same
effect”

Section 55: “In any appeal from a decision of the
Registrar to the court under this Act, the court shall have and
exercise the same discretionary powers as under this Act are
conferred upon the Registrar.”

Section 57: “(1) In any proceedings under this Act
before the Registrar, the evidence shall be given by statutory
declaration except in so far as the Registrar otherwise directs;
but in any case where the Registrar thinks it right to do so, he
may take evidence viva voce instead of or in addition to evidence
by statutory declaration.

(2) Where in any such proceedings any evidence has
been given by means of a statutory declaration, that evidence may,
in the case of an appeal, be given before the court by means of
that statutory declaration instead of by affidavit; but any
evidence given by statutory declaration before the court by virtue
of this subsection shall have all the incidents and consequences of
evidence given by affidavit.

(3) The Chief Judge of the Federal High Court may,
with respect to the taking in any proceedings before the Registrar
under this Act of any part of the evidence viva voce, make
rules-

(a) as to the examination of the parties, and of
witnesses, on oath or affirmation; and

(b) as to the procedure of securing the attendance
of witnesses and the production of documents.

(4) Rules made under subsection (3) of this section,
shall not have effect until published in the Federal
Gazette.”

Mr. Okpa’s misapprehension of the afore-quoted provisions
proceeded, understandably, from his construction of “any
proceedings” to include infringement proceedings. It is our
contention that “any proceedings” as used in the Act should be read
within the context of the section it is used and should not,
therefore, be accorded a generic construction. Section 3 of the Act
which specifically provides for the remedies available to the
proprietor of a registered trade mark states that “No person shall
be entitled to institute any proceeding to prevent, or to
recover damages for the infringement of an unregistered trade
mark…” Implicative in the use of the word “institute” is the
presupposition that an action in court is contemplated. While the
Black’s Law Dictionary[17] defines
“institute” among other things as “to inaugurate or commence, as to
institute an action”, the Oxford Advanced Learner’s
Dictionary[18] defines the word to mean,
inter alia, “to introduce a system, policy, etc or start a
process: to institute criminal proceedings against
somebody…”

Elsewhere in the Act, where the expression “any proceeding” is
used with reference to a proceeding before the Registrar, the Act
uses the word “application” as the appropriate mode of invoking the
power of the Registrar under the Act. Such proceedings before the
Registrar are in respect of matters relating to, for instance, the
determination of the registrability of a proposed trade mark,
preliminary advice on distinctiveness, registration of a proposed
trade mark, opposition to registration, renewal of a registered
trade mark, dissolution of associated trade marks, removal from
register on ground of non-use, the registration of a person as a
registered user, and rectification and correction of register among
other things. These are proceedings that are within administrative
competence of the Registrar. The corollary of this administrative
competence is the power to award costs, if need be, at the end of
the proceeding. This is particularly so in an opposition proceeding
where an application challenging the registration of a trade mark
may be frivolous. In such situation, it is only logical that the
applicant is made to pay the cost of the proceeding. After all, it
is trite that cost follows event.

Besides, section 56 of the Act gives the applicant the option,
in some cases, of applying to the Registrar or directly to the
court for address. The court for the purposes of the Act is the
Federal High Court. One of such cases is an application under
section 31 for removal of a registered trade mark from the register
on the ground of non-use. Another is where the Registrar or the
court is invited to determine the question of distinctiveness under
sections 9 and 10. In such cases where an applicant has the option
of applying either to the Registrar or the court for redress, the
Act is careful to use the word “tribunal” in designating the
adjudicatory authority. Whether an application is heard by the
Registrar or by the court, the Registrar or the court must arrive
at its decision after a careful evaluation of evidence adduced
before it by both parties in the proceeding before it. It is
difficult to see how this amounts to usurpation by the Registrar of
the powers of the Federal High Court. Section 57(3) empowers the
Chief Judge of the Federal High Court to make rules regulating the
taking of evidence in any proceeding before the Registrar. By
virtue of section 55 the court, in determining appeals arising from
the decision of the Registrar, enjoys all the discretionary powers
of the Registrar. These provisions cement the fact that the Federal
High Court exercises supervisory powers over the Registrar.

Under Administration Law, administrative agencies are empowered
to exercise quasi-judicial powers which are necessary and
incidental to the effective and efficient discharge of their
administrative responsibilities. Challenging the powers of the
Registrar in this regard is akin to challenging the powers of a
government agency or authority to constitute a Petitions and
Disciplinary Committee in the exercise its disciplinary powers over
its staff on the ground that it is inconsistent with the provisions
of section 2 of the Constitution of the Federal Republic of Nigeria
(Third Alteration) Act 2010 and section 254C (1) (a) of the
Constitution of the Federal Republic of Nigeria 1999 as amended
which vest exclusive jurisdiction on the National Industrial Court
to hear and determine civil causes and matters relating to or
connected with any labour, employment, trade unions, industrial
relations and matters arising from workplace, the conditions of
service, including health, safety, welfare of labour, employee,
worker and matters incidental thereto or connected therewith.

CONCLUSION

The author discusses the element of distinctiveness and the
respective degrees of distinctiveness required for registration
either under Part A or Part B of the Trade Marks Register. We agree
with him on the subject. It is our further submission that the
dichotomy of distinctiveness under the Nigerian Act does not only
raise the spectre of internal contradictions within the Act, it is,
to all intents and purposes, otiose. Section 9 requires that marks
which are inherently adapted to distinguish be registered under
Part A of the register while section 10 stipulates that marks which
are capable of distinguishing be registered under Part B of the
register. Usually, arbitrary and fanciful names, that is, names and
marks that are so unrelated to the goods in respect of which they
are proposed to be used as to be inherently distinctive, are marks
that are inherently adapted to distinguish and do not require
evidence of use. On the other hand, marks, which comprises of names
that ordinarily are common, may acquire distinctiveness as a result
of long use and their association with a particular product. Such
names are capable of distinguishing. The American Trade Mark
Act[1] uses the better expression “acquired
distinctiveness” to describe this category of distinctiveness. Yet,
section 9(3)(b) describes a mark that is inherently adapted to
distinguish as one which is inherently adapted to distinguish by
reason of the use of the trade mark or of any other circumstances.
There is therefore no point for this dichotomy if a mark which is
inherently adapted to distinguish must present evidence of use that
it is, in fact, inherently adapted to distinguish. It is
interesting to note that while the United Kingdom Trade Marks Act
1994 has abolished this unnecessary dichotomy, the Nigerian Act is
still embedded in the bosom of its 1938 forebear.

The Nigerian Trade Marks Act which is a restatement of the text
of the United Kingdom Trade Marks Act of 1938 has not been amended
since its enactment in 1965. Nigerian is still stuck with a
rudimentary legislation whose intendment is the regulation of a
vestigial economy that consists mainly of buying and selling of
goods and conceives trade in terms of commerce in commodities. This
explains the preoccupation and consequent suffusion of the Act with
goods as the only subject of trade marks protection. It is
therefore imperative that the Nigerian act be amended to include
the registrability of service marks. The 2007 Ministerial
Regulations which purports to include service as a protectable
subject is of no moment. There is, therefore, the need for the
National Assembly to amend the Trade Marks Act to bring it into
consonance with twenty-first century economic realities and to cure
it of its legislative prolixity and unwieldiness.

Ogbu, Blessing Ekpere Esq., a legal practitioner,
writes from Abuja and can be reached via
sir_ideology@yahoo.com.

ENDNOTES

[1] The Lanham Act 1946.

[1] (1618) Pop. 143, 79 Eng. Rep. 1243 (KB.).

[2] Such as Blanchard v. Hill(1742) 2 Atk.
484 (Ch.), 26 Eng. Rep. 692.

[3] 7 N.Y. Ch. Ann. 713 (1845).

[4] 5 N.Y. Ch. Ann. 572 (1847).

[5] (1847) 5 C.B. 109, 136 Eng. Rep. 816 (C.P.)

[6] Id. At 116, 136 Eng. Rep. at 819.

[7] (1940) 1 Ch 667.

[8] CAP T13 Laws of the Federation of Nigeria
2004.

[9] The first statute regulating trade marks in the
United Kingdom was the Trade Marks registration Act 1875. Some of
the legislations subsequent to the Trade Marks Registration Act
1875 and which were amended over the years and eventually repealed
were the Trade Marks Registration Amendment Act 1876, the Trade
Marks Registration Extension Act 1877, the Patents, Designs and
Trade Marks Act 1883, the Patents, Designs and Trade Marks Act
1888, the Trade Marks Act 1905, the Trade Marks Act 1919, the Trade
Marks (Amendment) Act 1937, the Trade Marks Act 1938 (which Nigeria
wholly reproduced as her Trade Marks Act 1965 and has not amended
till date) and the Trade Marks (Amendment) Act 1984.

[10] (1945) AC 68.

[11] (2005) 13 NWLR 1, 206 paras C–D.

[12] (2005) 14 NWLR 760 (Pt 946), 787,
paras B–C.

[13] The current designation of the office
is Minister for Trade and Investments.

[14] See, for example, C. Ogunbanjo,
‘Jumping the Gun on Service Marks’. Available at <http://www.chrisogunbanjo.com/files/Jumping_the_Gun_on_Service_Marks ^[1].pdf> accessed 20
May 2015); and Aluko & Oyebode & Co., ‘Regulation on Protection of
Service Marks in Nigeria’ (2008). Available at <http://www.aluko-oyebode.com/files/nl_ipmay07.pdf^[2]> (accessed 18
December 2015).

[15] Olatunji, Olugbenga Ajani,
Fundamentals of the Nigerian Trade Marks Act and Implications for
Foreign Trade Mark Owners, Journal of Intellectual Property Law &
Practice, 2016, Vol. 11, No. 2 <https://www.academia.edu/22322286/Fundamentals_of_the_Nigerian_Trade_Marks_Act_and_Implications_for_Foreign_Trade_Mark_Owners ^[3] >accessed on
06/07/2020.

[16] CAP T20 Laws of the Federation of
Nigeria 2004.

[17] Centennial Edition (1891 – 1991)
(sixth edition, 1990) 800.

[18] International Student’s Edition
(8^th edition. 2015) 779

By Ogbu, Blessing
Ekpere Esq.

INTRODUCTION

I read with interest the intenvention of Ujong Okpa Esq. titled
“Protectable Trademarks in Nigeria and the Scope of Their
Protection”. The article was published online on the
30^th of December, 2020. I commend the industry which the
learned author invested in the work. The subject of the
protectability of trade marks is one aspect of intellectual
property law which does not lend itself to facile construction.
Because the law of trade marks has its origin in the common law
doctrines of actions for deceit and, later, passing off, the
earliest judicial determination of the question of trade marks
protection, first, in the United Kingdom in the case of
Southern v. Hou[1] and in the cases
following that[2], in the United States of America
in the cases of Coats v. Holbrook[3] and
Partridge v. Menck[4] and, then, in
Nigeria, the courts had been assailed with the problem of
campartmentalisation of actions for protection of trade marks. In
the early days of trade marks, one of the questions the courts have
had to answer was whether an action for the infringement of trade
marks is one founded on deceit, whether it was merely a case of
passing off, whether an injunction would lie, and whether it was
the court of law or the court of equity that should assume
jurisdiction. The dilemma was so complicated that in the case of
Rodgers v. Nowill,[5] the judge asked
the counsel for the plaintiff, “Is this an action on the case for a
deceit?” and counsel to the plaintiff responded, “There is no other
title under which such an action can be classed.”[6]

This indeterminate state of the law of trade marks in its
formative years defined the United Kingdom Trade Marks Act of 1938
which was applicable to the colonies, including Nigeria. The 1938
Act, though more comprehensive than its predecessors, was however
fraught with legislative unwieldiness that in the case of
Bismag Ltd v Amblins (Chemists) Ltd[7] the
Lord Justice MacKinnon, LJ while ruling on the infringement section
and other sections of the Act declared, out of frustration, that
the 1938 Act was beset with “fuliginous obscurity”. Sadly, in 1965,
when the Nigerian Government decided to enact an indigenous trade
marks law for the first time, it adopted wholesale albeit
mutatis mutandis the 1938 Act with its inherent
legislative awkwardness and ponderousness and enacted the Trade
Marks Act[8]. Interestingly, while the United
Kingdom has amended its Trade Marks legislation severally since
1938 till date, the latest and applicable law on trade marks in the
United Kingdom being the Trade Marks Act 1994[9], the Nigerian Trade Marks Act which followed with
utmost fidelity the text of the United Kingdom Trade Marks Act of
1938 has not been amended since its enactment in 1965. It is for
this reason that attempts at scholarly evaluation of its provisions
must be commended. For the sake of scholarship and illumination,
however, it is imperative to correct a few misstatements which the
author made in the course of his treatise.

A CRITICAL EXAMINATION OF MR. OKPA’S
TREATISE

Secondly, at the risk of accusation of hairsplitting, we submit
that there is no place in the Trade Marks Act CAP T13 Laws of the
Federation of Nigeria 2004 that the application of the Act is made
to cover services. Section 67 of the Act, which is the
interpretation section of the Act, defines trade mark to mean
“… except in relation to a certification trade mark, a
mark used or proposed to be used in relation to goods for the
purpose of indicating, or so as to indicate, a connection in the
course of trade between the goods and some person having the right
either as proprietor or as registered user to use the mark, whether
with or without any indication of the identity of that person, and
means, in relation to a certification trade mark, a mark registered
or deemed to have been registered under section 43 of this
Act.” This is not an isolated example: the Act is
suffused with express stipulations that leave no one in doubt that
trade marks must be used in relation to goods only and nothing
more. In Aristoc Ltd v. Rysta Ltd[10], a case that was decided under the United Kingdom
1938 Act, the House of Lords held that a mark could not be
registered for the services of laundry and mending of stockings
rendered by the defendants because there was no evidence that such
use would indicate a connection in the course of trade.