By Aluma, Chukwuebuka Harmony
![image](/2020/10/lawreport.jpg")
INTRODUCTION
![image](/2021/01/payne-alex.jpg")
The 43 year old Nollywood movie icon, singer, philanthropist and
former model Omotola Jalade-Ekeinde MFR, broke the news on
Thursday, 18th February, 2021 as she launched
‘Omotola’ as her new trademark with registration
number 2018-08-26 NG/TM/O/2018/134992 under CLASS 41- Education and
Entertainment Services. This brings one to an intellectual voyage
as to what a Trade mark entails in the legal frontier and whether
or not a person’s name could actually be registered as a trademark
considering the fact that the name Omotola is generic and not
distinct in anyway.
What is a Trademark?
Ordinarily, a trademark can be defined as a mark used by a
trader in the course of trade, to distinguish the goods on which it
is applied from other goods of the same description.[1]It is a type of Intellectual Property right
consisting of a recognizable sign, design, or expression which
identifies products or services of a particular source from those
of others.[2] The trademark owner can be an
individual, business organization or juristic personality, and such
trademark maybe located on a package, label, voucher or on
the product itself.
However, Nigeria once followed the 1965 Trademarks Act[3] and the 1967 Trademarks Regulations which are
outdated and lack the rules to meeting the existing needs of local
and foreign trademark owners within the jurisdiction.[4] Hence the enactment of the Trade Marks Act, Cap
T 13, Laws of the Federation of Nigeria 2004 (TMA) and the
Trademark Regulations 1990, which brought a new wave and ushered in
a new hope for Nigeria Trademark, copyright and patent law.
Section 67 defines a trademark as: 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 a
registered user to use the mark whether with or without any
indication of the identity of that person.[5]
What qualifies a mark as a Trade Mark in
Nigeria
To qualify for a trade Mark in Nigeria, a trade mark must
contain or consist of at least one of the following
particulars:[6]
- The name of a company, individual or firm represented in a
special or particular manner; - The signature of the applicant for registration or his
predecessor in business - An invented word or words
- A word or words having no direct reference to the character or
quality of the goods and not being, according to its ordinary
signification, a geographical name or a surname - Any other distinctive mark[7]
- Must be capable of distinguishing goods in relation to which it
is registered or proposed to be registered[8]
NON REGISTRABLE TRADEMARKS
Certain Trademarks can be rejected and not registered under the
Trademarks Act of Nigeria for public policy considerations,
consumer protection reasons and to safeguard the interest of
businesses. Examples of such marks are marks that are deceptive and
scandalous, marks that falsely imply official patronage, marks that
seek to appropriate commonly known or generic designation and marks
that are capable of causing confusion among consumers[9].
According to Terry Lane, it is not illegal for the U.S. Patent
and Trademark Office to register a person’s name as part of a
trademark, but it only grants this level of protection to names
that are widely used in commerce or are unique.[10] In most cases, a person can’t trademark his
name, but other protections can help business owners protect the
use of their names if it is used in association with business.
For a person’s name to be used as a Trademark, distinctiveness
must be visibly seen because a mark should seem to differentiate
ones goods from that of other substitute. This is why the USPTO
warns applicants that it is unlikely to register surnames or an
individual’s name or likeliness for trademark protection unless
certain conditions are met. The individual must likely file a
statement of consent for the trademark, unless in the case of a
coined name. He must prove that the name has a secondary meaning by
being part of a unique brand that is used in marketing and commerce
and is widely recognized. In some cases, a name can be trademarked
when it is one of a kind, but it requires substantial evidence to
prove this.[11]
Whether or not Mrs. Omotola Jalade-Ekeinde can use the
trademark ‘OMOTOLA’ as her trade name
on whether or not Mrs. Omotola Jalade-Ekeinde can successfully
have OMOTOLA as her trademark has fanned an
inferno among legal theorists. Reacting to this legal issue, an
international entertainment Lawyer, Akinyemi Ayinoluwa, stated that
the name Omotola is too generic and not distinct in any way.[12] According to him, the name is not a generic
name and cant be reserved only for one person. She (Omotola
Jalade-Ekeinde) needs to add her surname such as Mohammed Ali, Mike
Tyson, Michael Jackson, Bob Marley etc, for one of the conditions
you must fulfill when seeking a Trademark is that the mark and name
sought to be protected must be distinct and distinguishable from
many other names and marks. Hence, there is nothing distinct about
a common name like Omotola.
According to US- Small Business Administration, Entrepreneurs
can use their personal name as part of a business name that can be
registered with either the State or Local Government, a registered
business name such as ‘Jane Doe Consulting”, can help secure the
business owners right to a trademark and demonstrates commercial
use of the name when applying for a trademark protection. In this
case, it is legally considered as a fictitious name, according to
SBA. This still goes down to the view of Barr. Akinyemi Ayinoluwa
who opinionated that Omotola’s surname be added to make it distinct
from other Omotola bearers.
Some other scholars argued in favour of Omotola’s decision of
making her first name her brand name on the notion that she have
been using the name for decades now, hence, has become famous with
the name Omotola. While others argued that since the gist of a
Trademark is the taking of a name, label, symbol etc to the
exclusion of every other person, what becomes the fate of other
bearers of the name Omotola, who might want to adopt same as their
Trademark? This Omotola Jalade-Ekeinde answered on her Instagram
handle, “hey namesake, you can bear with pride and enjoy our
special name, however, you can’t have a business in Entertainment
with the Name Omotola…”[13]
CONCLUSION
The legal puzzle as to whether a name can be used as a Trademark
was deciphered by the U.S Federal Trademark Law, January 2, 2021,
when it provided that a mark that is primarily merely a name
cannot be protected without proof that it has acquired
distinctiveness. Generally, the law provides for five factors that
will be considered to determine if acquired distinctiveness must be
shown:
- Whether the name is rare
- Whether the term is the surname of anyone connected with the
applicant - Whether the term has any recognized meaning other than as
surname - Whather it has the look and feel of a surname
- Whether the stylization of letters is distinctive enough to
create a separate commercial impression.
In conglomeration, if the name is considered primarily a surname
then acquired distinctiveness must be proved. If the name is a
personal name you may use it as a trademark, as long as other users
do not beat you to the punch, meaning that the proposed personal
name would not cause a likelihood of confusion with a similar name
already registered. Note also that the United State Federal Trade
Law affords protection for a celebrity’s name even if the celebrity
is selling only himself his personality and not goods.
Hence Mrs. Omotola Jalade-Ekeinde trademark ‘Omotola’ has
acquired the status of distinctiveness because of her long years of
use within the entertainment industry which has bought her
popularity in terms of name use. Therefore, she acted within the
legal confines by registering her personal name as a Trademark.
Aluma, Chukwuebuka Harmony, 08130391994
(chukwuebukaaluma11@gmail.com) FACULTY OF
LAW EBONYI STATE UNIVERSITY ABAKALIKI
[1] M.C. Okani, Nigerian Law of Property (Enugu:
Fourth Dimension Publishers, 2000) p.333
[2] https://en.m.wikipedia.org/wiki/Trademark
accessed on February 27[1], 2021 by 12:01aM
[3] No. 29 of 1965
[4] I.M. Alves, “Nigeria: Pending Trademark
Regulations in Nigeria” Inveta International. 08 July, 2020
[5] Section 2 of the Trade Marks Act, 1914.
[6] Section 2 T.M.A., 1965.
[7] Section 9(1) of the T.M.A. 1965 and Section 10
of the T.M.A, 1914
[8] Section 10(1) of T.M.A. 1965
[9] F. O. Dawodu, “Registration of Trademarks in
Nigeria”.
[10] https://smallbusiness.chron.com/legal-trademark-persons-name-61523.html[2]
accessed on Saturday, 27th February, 2021 by 12:59am
[11] ibid
[12] J. Augoye, “Actress Omotola
Jalade-Ekeinde trademarks first name”, Premium Times, Thursday,
February 18, 2021.
[13] O. Odogwu and G. Odah, “OMOTOLA”- A
Registered Brand?”
By Aluma, Chukwuebuka Harmony
INTRODUCTION
The 43 year old Nollywood movie icon, singer, philanthropist and
former model Omotola Jalade-Ekeinde MFR, broke the news on
Thursday, 18th February, 2021 as she launched
‘Omotola’ as her new trademark with registration
number 2018-08-26 NG/TM/O/2018/134992 under CLASS 41- Education and
Entertainment Services. This brings one to an intellectual voyage
as to what a Trade mark entails in the legal frontier and whether
or not a person’s name could actually be registered as a trademark
considering the fact that the name Omotola is generic and not
distinct in anyway.
What is a Trademark?
Ordinarily, a trademark can be defined as a mark used by a
trader in the course of trade, to distinguish the goods on which it
is applied from other goods of the same description.[1]It is a type of Intellectual Property right
consisting of a recognizable sign, design, or expression which
identifies products or services of a particular source from those
of others.[2] The trademark owner can be an
individual, business organization or juristic personality, and such
trademark maybe located on a package, label, voucher or on
the product itself.
However, Nigeria once followed the 1965 Trademarks Act[3] and the 1967 Trademarks Regulations which are
outdated and lack the rules to meeting the existing needs of local
and foreign trademark owners within the jurisdiction.[4] Hence the enactment of the Trade Marks Act, Cap T
13, Laws of the Federation of Nigeria 2004 (TMA) and the Trademark
Regulations 1990, which brought a new wave and ushered in a new
hope for Nigeria Trademark, copyright and patent law.
Section 67 defines a trademark as: 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 a
registered user to use the mark whether with or without any
indication of the identity of that person.[5]
What qualifies a mark as a Trade Mark in
Nigeria
To qualify for a trade Mark in Nigeria, a trade mark must
contain or consist of at least one of the following
particulars:[6]
- The name of a company, individual or firm represented in a
special or particular manner; - The signature of the applicant for registration or his
predecessor in business - An invented word or words
- A word or words having no direct reference to the character or
quality of the goods and not being, according to its ordinary
signification, a geographical name or a surname - Any other distinctive mark[7]
- Must be capable of distinguishing goods in relation to which it
is registered or proposed to be registered[8]
NON REGISTRABLE TRADEMARKS
Certain Trademarks can be rejected and not registered under the
Trademarks Act of Nigeria for public policy considerations,
consumer protection reasons and to safeguard the interest of
businesses. Examples of such marks are marks that are deceptive and
scandalous, marks that falsely imply official patronage, marks that
seek to appropriate commonly known or generic designation and marks
that are capable of causing confusion among consumers[9].
According to Terry Lane, it is not illegal for the U.S. Patent
and Trademark Office to register a person’s name as part of a
trademark, but it only grants this level of protection to names
that are widely used in commerce or are unique.[10] In most cases, a person can’t trademark his name,
but other protections can help business owners protect the use of
their names if it is used in association with business.
For a person’s name to be used as a Trademark, distinctiveness
must be visibly seen because a mark should seem to differentiate
ones goods from that of other substitute. This is why the USPTO
warns applicants that it is unlikely to register surnames or an
individual’s name or likeliness for trademark protection unless
certain conditions are met. The individual must likely file a
statement of consent for the trademark, unless in the case of a
coined name. He must prove that the name has a secondary meaning by
being part of a unique brand that is used in marketing and commerce
and is widely recognized. In some cases, a name can be trademarked
when it is one of a kind, but it requires substantial evidence to
prove this.[11]
Whether or not Mrs. Omotola Jalade-Ekeinde can use the
trademark ‘OMOTOLA’ as her trade name
on whether or not Mrs. Omotola Jalade-Ekeinde can successfully
have OMOTOLA as her trademark has fanned an
inferno among legal theorists. Reacting to this legal issue, an
international entertainment Lawyer, Akinyemi Ayinoluwa, stated that
the name Omotola is too generic and not distinct in any way.[12] According to him, the name is not a generic name
and cant be reserved only for one person. She (Omotola
Jalade-Ekeinde) needs to add her surname such as Mohammed Ali, Mike
Tyson, Michael Jackson, Bob Marley etc, for one of the conditions
you must fulfill when seeking a Trademark is that the mark and name
sought to be protected must be distinct and distinguishable from
many other names and marks. Hence, there is nothing distinct about
a common name like Omotola.
According to US- Small Business Administration, Entrepreneurs
can use their personal name as part of a business name that can be
registered with either the State or Local Government, a registered
business name such as ‘Jane Doe Consulting”, can help secure the
business owners right to a trademark and demonstrates commercial
use of the name when applying for a trademark protection. In this
case, it is legally considered as a fictitious name, according to
SBA. This still goes down to the view of Barr. Akinyemi Ayinoluwa
who opinionated that Omotola’s surname be added to make it distinct
from other Omotola bearers.
Some other scholars argued in favour of Omotola’s decision of
making her first name her brand name on the notion that she have
been using the name for decades now, hence, has become famous with
the name Omotola. While others argued that since the gist of a
Trademark is the taking of a name, label, symbol etc to the
exclusion of every other person, what becomes the fate of other
bearers of the name Omotola, who might want to adopt same as their
Trademark? This Omotola Jalade-Ekeinde answered on her Instagram
handle, “hey namesake, you can bear with pride and enjoy our
special name, however, you can’t have a business in Entertainment
with the Name Omotola…”[13]
CONCLUSION
The legal puzzle as to whether a name can be used as a Trademark
was deciphered by the U.S Federal Trademark Law, January 2, 2021,
when it provided that a mark that is primarily merely a name
cannot be protected without proof that it has acquired
distinctiveness. Generally, the law provides for five factors that
will be considered to determine if acquired distinctiveness must be
shown:
- Whether the name is rare
- Whether the term is the surname of anyone connected with the
applicant - Whether the term has any recognized meaning other than as
surname - Whather it has the look and feel of a surname
- Whether the stylization of letters is distinctive enough to
create a separate commercial impression.
In conglomeration, if the name is considered primarily a surname
then acquired distinctiveness must be proved. If the name is a
personal name you may use it as a trademark, as long as other users
do not beat you to the punch, meaning that the proposed personal
name would not cause a likelihood of confusion with a similar name
already registered. Note also that the United State Federal Trade
Law affords protection for a celebrity’s name even if the celebrity
is selling only himself his personality and not goods.
Hence Mrs. Omotola Jalade-Ekeinde trademark ‘Omotola’ has
acquired the status of distinctiveness because of her long years of
use within the entertainment industry which has bought her
popularity in terms of name use. Therefore, she acted within the
legal confines by registering her personal name as a Trademark.
Aluma, Chukwuebuka Harmony, 08130391994
(chukwuebukaaluma11@gmail.com) FACULTY OF
LAW EBONYI STATE UNIVERSITY ABAKALIKI
[1] M.C. Okani, Nigerian Law of Property
(Enugu: Fourth Dimension Publishers, 2000) p.333
[2] https://en.m.wikipedia.org/wiki/Trademark accessed on
February 27[1], 2021 by 12:01aM
[3] No. 29 of 1965
[4] I.M. Alves, “Nigeria: Pending Trademark
Regulations in Nigeria” Inveta International. 08 July, 2020
[5] Section 2 of the Trade Marks Act, 1914.
[6] Section 2 T.M.A., 1965.
[7] Section 9(1) of the T.M.A. 1965 and Section
10 of the T.M.A, 1914
[8] Section 10(1) of T.M.A. 1965
[9] F. O. Dawodu, “Registration of Trademarks
in Nigeria”.
[10] https://smallbusiness.chron.com/legal-trademark-persons-name-61523.html[2]
accessed on Saturday, 27th February, 2021 by 12:59am
[11] ibid
[12] J. Augoye, “Actress Omotola Jalade-Ekeinde
trademarks first name”, Premium Times, Thursday, February 18,
2021.
[13] O. Odogwu and G. Odah, “OMOTOLA”- A
Registered Brand?”