UNIMAID JOURNAL OF PRIVATE AND PROPERTY LAW UNIVERSITY OF IBADAN LIBRARY UNIMAID JOURNAL OF PRIVATE AND PRO PERTY LAW (UJPPL) ISSN: 2534-6181 PUBLISHED BY The Department o f Private Law Faculty o f Law University o f M aiduguri P. M. B. 1069 M aiduguri - Nigeria Privatelaw@ unimaid.edu.ng This journal is also available online at www.unimaid.edu.ng UNIVERSITY OF IBADAN LIBRARY C o n ten ts 1. An analysis of the rights of herdsmen under nigerian law and 1-8 the obligation of the state in promoting their secured existence. By Ibrahim Abclulkarim Muhammad Tukur Jibril and Dalhat A. Idris 2. Customary Arbitration: An Effective Way of Managing Child 9-17 Maintenance Cases in Law Clinics Unconnected with Courts By Afolasade A. Adewumi, Ph.D and Stella Uju, Ojuade, LL.M, B.L. 3. Promoting Access to Assisted Reproductive Technology in 18-30 Nigeria Through the Rights to Benefits of Scientific Progress: an Appraisal By Folakemi O. Ajagunna 4. Taxation of Employment Income in Nigeria: Granted 31-45 Allowances Begging for Review BySabit Abosede Lawal 5. D em ocracy , R ule o f L aw and the C on stitu tion o f th e F ederal 46-63 R epublic o f N igeria , (1999) A s A m ended: A p p ra isin g the Jou rn ey so F ar BY Dr. Muhammad Musa Saleh Yahaya Alhaji Dunoma Musa Alkali Lawan 6. Assessnment of the Federal High Court as A Court Of 64-71 Summary Criminal Jurisdiction By Okanyi Don Onuora 7. A Comparative Appraisal of Wife’s Right of Maintenance 72-84 under patrim onial Causes Act 1970 and Islamic Law By Ahmad Haruna Danmaigauta 8. Land Owners’ Exclusive Right to Land and the Use of 85-99 Remotely Piloted Vehicles in Nigeria: Looking Ahead of the Law By Taiwo Ajala, Ph.D 9. A Comparative Appraisal of Tradem ark Infringement in 100-115 Nigeria and United Kingdom BY Dr. Ibijoke P. Byron 10. Examination of the implementation of subsidies and 116-122 countervailing measures agreement (sema) in nigeria: a reflection on the proposed countervailing and antidumping bill, 2010. By Auwal Ya ’u, Esq and Bashir Sale, Esq 11. Cyber Crime and Policing in Nigeria: Issues, Challenges and 123-135 Prospects Adedeji Akeem Z. Okemuyiwa & Ibraheem Ohinoyi Akeem 12. Analysis of Human Rights Issues: Women and Male 136-151 Primogeniture Rule in Benin City, Nigeria Bv Sumaina Yesufu, PhD 13. Legal Analysis on Prohibition of Force M arriage in Nigeria 152-163 Dr. Mohammed Amin Umar And Mallam Ibrahim Abdullahi 14. Legal regimes on decommissioning and their applicability to 164-187 onshore and offshore wind power installations: the Ospar Treaty Convention as Guiding Principles for Nigeria By Kabiru Adamu 15. Analysis of the Regulatory Framework for Curbing Cyber- 188-198 iv UNIVERSITY OF IBADAN LIBRARY Crim es and Money L aundering in Nigeria By Appolos Dimas & Dewan, Dauda U 16. Tow ards A Realisation of Property Rights in H um an Bodily 199-215 M aterials in Nigeria: Developing the Law as F urthering the Rights of Victims By Olusola Babatunde Adegbite 17. The Global Legal Regime for the Control and Fight Against 216-228 Narcotics in The 21s* Century by dr. Y. A. Fobur 18. Corporate Social Responsibility for Corporate Sustainability and 229-242 Development: a Revisit Based on Perception of Nigerian Stakeholders B y Bethel Uzoma Ihugba 19. An Old Issue of Implication of the TRIPS Agreem ent on 243-256 Patents: A New Insight from the Context of a R ecurring Problem By Temitope O. Oloko 20 . Exam ination of the Legal F ram ew ork of Nigerian National 257-267 Tax Policy As a Tool For Revenue G row th and Economic Development By Mohammed Alhaji, IYA and Mohammed S. JAJERE 21 . A ppraising the Laws Regulating the New T rends of Crim es in 268-274 Social M edia Com m unications By Dr. Muawiya Dahiru Mahmud and Muhammad Nuhu 22 . Enforcing the Principles of Independence of the Lower 275-281 courts: a Review of the Power of the Inspectorate By Abdul Yusuf Kayode 23 . A Discourse On Reliable Views And Books In Maliki School 282-291 Prof. Ibrahim Ahmad Aliyu, Ibrahim Barkindo and Hafsatu Sulaiman 24 . Peaceful- Secured Nigeria Among W estern Nations: A Re - 292-303 Focussed Legal F ram e W ork of M oderate Renewal Policy on Conflict Resolution in Common Law and Sharia By Zuhairjibir (Ph.D) and Abduljeleeladeyemo UNIVERSITY OF IBADAN LIBRARY Unimaid Journal of Private And Properly Law A COM PARATIVE APPRAISAL OF TRADEMARK INFRINGEM ENT IN NIGERIA AND UNITED KINGDOM B Y Dr. Ibijoke P. Byron1 A bstract A tradem ark perform s certain functions such as identifying a seller’s goods and distinguishing them from others, associates the goods with the provider, it serves as a representation of a certain level of quality. A tradem ark could be a m ark, logo, letter, smell, sound, but it is anything tha t is able to distinguish and identify the goods of a trad e r from all o ther traders. The substantive law on tradem ark is the T rade M arks Act 1965 which regulates tradem ark in Nigeria today. The Nigerian T rade M arks Act^NTMA) 1965 is based substantially on the old United Kingdom Trade M ark Act (UKTMA) 1938, and replaced with the UKTMA 1994, but the NTMA has rem ained un­ reviewed till date. The NTMA excludes o ther types of infringement such as com parative advertising, dilution and parallel im portation, get-up/trade dress, and this is contrary to what obtains in other jurisdictions such as the United Kingdom. T radem ark law is an aspect of intellectual property which is in need of urgent reform s in Nigeria but it is nevertheless, deficient in areas as it has not given due recognition to other types of tradem ark infringement. Nigeria has, over the years, incorporated commerce into the Act but this is still premised on the UKTMA 1938 which does not reflect new trends on tradem arks. A problem tha t could arise is where another person, not being the proprietor of the m ark, uses the advertising techniques of the owner of the m ark. Thus, when a tradem ark is being advertised, it could lead to infringement especially where the product is used adversely against the intention of the owner and the result is tha t it will harm the business of the proprietor irreparably. This paper will examine the ways in which an infringement of tradem ark can occur and also, o ther types of infringement which the NTMA has not provided legislative protection. Keywords: Nigerian Trade Marks Act, United Kingdom Trade Mark Act, Comparative advertising, Dilution, Parallel Importation 1 Lecturer, Department o f Private and Property Law, Faculty o f Law, University o f Ibadan, Ibadan, Nigeria. Telephone number: 08072731313. Email Address: ibiiokenat@vahoo.com 100 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom I. Introduction An important aspect o f trademark is that it is able to distinguish one person’s goods from :ther persons and consumers are drawn to those goods because o f the consistent quality and '-hey also serve as a strong advertising instrument in which the consuming public depend : n.2 The different functions o f a trademark is that it could enhance the economic efficiency :f the marketplace by “ lessening consumer search costs; by making products and producers easier to identify in the open market,” and “encouraging producers to invest in quality by insuring that the owners, and not their competitors, reap the rewards o f that investment.”3 A trademark is a mark which is regarded as an insignia of “dependable source and jperiority” by consumers. 4 The essence o f a trademark system is therefore designed to rrotect the repute o f a natural person or a legal entity by providing incentives for investments m the value o f products sold to the public.5 For a trademark to be registered, it has to be situated in the country where it is found as the rationale behind every registration is that the owner o f the trademark has the right to protect its property from persons who do not have the right to use that mark.6 It prevents the s imultaneous existence o f similar trademarks which are confusing and serves as proof of wnership, especially in cases o f infringement. Registration o f a trademark ensures the wners, the exclusive right to commercially use the protected names or symbols, including censing them to third parties. These exclusive rights are enforced by a country’s judicial • stem. For example, in order to immediately stop infringing activities, such as the sale of counterfeit products, trademark holders can request seizures or preliminary injunctions enough the court system.7 Registers containing trademark registrations are found in virtually every country but national -egimes often differ as to particular signs which qualify as trademark, the scope of rrotection, guidelines for avoiding confusing marks, registration costs, legal means available a? fight infringement and other important details.8 Under the NTMA, to own a trademark, it must be for seven years which can be renewed in accordance with the provisions o f this Act rom time to time.9 When the right to use the trade mark has expired, an owner can renew for a further period o f fourteen years.10 As such, where a trademark is registered, the owner -s able to build goodwill and reputation in its enterprise and to prevent others from Thomas McCarthy, ‘McCarthy on Trademarks and Unfair Competition’. 4 th Edition. Section 26: 1-4,29: 1- (2004) cessed 12 August 2013 3arton Beebe, ‘The Semiotic Analysis ofTrademark Law’ [1995] 51 UCLA L. REV. 621 ,623; Qualitex Co. Jacobson Prods. Co., 514 U.S. 159, 163-64 Robert N Klieger, ‘Trademark Dilution: The Whittling Away o f the Rational Basis forTrademark Protection', 997] 58 U. o f PITT. L. REV. 789, 790; cf. Mark A. Lemley, and Mark P. McKenna, ‘Irrelevant Confusion' 72010] 62 STAN. L. REV. 413, 414 William M. Landes, and Richard A. Posner, Trademark Law: An Economic Perspective, [1987] 30 Journal Law and Economics, 265 ,271 -73 ’William M. Landes and Richard A. Posner ‘Trademark Law: An Economic Perspective’ [1987] 30 Journal o f Law and Economics, 265, 271-73 Eugenia Baroncelli and others. The Global Distribution o f Trademarks: Some Stylized Facts. Blackwell ’ jblishing Ltd. World Economy. (2005) Volume 28, Issue 6. Pages 765-782. -!tp://dx.doi.org/10.1111/i. 1467-9701.2005.00706.x> accessed 20 August 2013 ' Eugenia Baroncelli, ibid. ' Section 23(1), Nigerian Trade Marks Act, Laws o f the Federation 2004 * Ibid. 101 UNIVERSITY OF IBADAN LIBRARY Unimaid Journal o f P rivate And Property Law misleading consumers by false association with an enterprise, with which they are not connected.11 Trademark rights are, like all other intellectual property rights, characteristically territorial.12 The territorial nature o f these rights means that each state or region determines, for its own territory and independently from any other state or country, what is to be protected as trademark; who should benefit from such protection and for how long the protection should be enforced.13 That is, each nation protects its intellectual property rights only insofar as these rights are exercised under domestic laws. Where a person seeks to register a trademark in another country apart from where the person is situated, the territorial nature of trademark is brought to the forefront and such a person would have to pay the required procedural fees in each country where such protection is required and the probabilities o f its success differs in each country.14 The current legislation on trademarks is the NTMA 1965 but it is in need o f an over-haul because the Act is based and fashioned after the English Trade Marks Act o f 1911 which later became the 1938 United Kingdom Trade Marks Act.15 II. Infringement of Trademarks in Nigeria Trademark infringement occurs whereby a registered mark is used without the consent of the trademark owner and such use must be in connection with goods or services but its use must be in a manner which is likely to cause confusion, deception, or mistake about the originating source o f the goods and/or services.16 An infringement o f trademark is when an identical or similar mark, which is known but used on a different package is put on display amongst people who are aware of the trade mark but may be confused, when the original and fake goods are put side by side. There is the mistaken belief on the part of the populace that the similarities between the marks are so alike, and that they belong to same trader.17 In Oladipo & Tinuola v. Thawardas,18 the Plaintiffs were the registered proprietors o f a mosquito coil trade mark and an action was instituted against the Defendant for infringement of their mark. The Plaintiffs’ contention centered on the fact that the Defendant imported and sold some quantities of mosquito coils in boxes which carried the device o f an elephant’s head, and which said symbol, is an essential feature of their trade mark as shown in boxes which carry the device o f an elephant’s head. This symbol was used in marketing their product and also advertised in the newspapers/posters. It was alleged that the defendant’s mark was similar to that of the 11 Eugenia Baroncelli and others, ‘The Global Distribution o f Trademarks: Some Stylized Facts’. Blackwell Publishing Ltd. World Economy, (2005) Volume 28, Issue 6: 765-782. accessed 20 August 2013 12 Miles J Alexander and James H Coil, ‘Geographical Rights in Trademark and Service Marks’ [1978] 6i Trademark Rep. 101, 102 13 Z Slovakova, ‘Protection o f trademarks and the Internet with respect to the Czech Law’. (2006 < www.iiclt.com/index.nhp/iiclt/article/ViewFile/9/8> accessed 29 March 2014 Stephen Pericles Landas. Patents, Trademarks & Related Rights: National and International Protection. (Harvard University Press, 1975) 3,4 15 John Asein, ‘Consumer Literacy and Confusing Similarity o f Pictorial Trademarks in Nigeria’. (1994) 84 Trademark Rep. 64. < http://heinonline.org> accessed 2 February 2015 6 United States Patent, Trademark Office (USPTO). Trademark Infringement. < www,usoto.gov/page/about- trademark-infringement> accessed 1 February 2016 Intellectual Property Office. Infringement: What is trade mark infringement? < www.wino.int > accessed 1 January 2015 18 [1917-1976] 1, l.P.L.R. 196, 198 102 UNIV RSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom plaintiffs and it was apt to mislead consumers into thinking that the goods o f the claimant iook like that o f the respondent. Hence, it could lead to a misconception o f surrounding facts m relation to the goods o f the plaintiff and the defendant. It was however held that it is the duty o f the court to determine likelihood o f deception based on any factual situations.19 In the United States, to establish a violation o f the Lanham Act,20 the Court considers the rollowing before the case can be determined. It could therefore be premised for either a -egistered mark,21 or an unregistered mark,22 *or where the plaintiff has to establish that it has i valid and legally protectable mark; or that the use o f the mark by the defendant would kely amount to confusion in the identification between such goods or services.22 A standard -hich the court uses in analysing infringement cases is viewed as the “ linchpin” of rademark infringement tests. Hence, the test measures the "likelihood that a number of rudent purchasers are likely to be misled, or indeed simply confused, as to its origin or therwise o f the goods. In assessing the public's likelihood o f confusion, the courts have :eveloped a multi-factor test that considers: the strength o f the mark, the degree o f similarity etween the two marks, the proximity o f the products, the likelihood that the prior owner - i l l bridge the gap, actual confusion, and the reciprocal o f defendant's good faith in adopting as own mark, quality o f the defendant's product, and the sophistication o f the buyers.24 The essence o f this test is to ensure that both sides are treated fairly in the determination o f each :ase. Therefore, the test focuses primarily on consumer confusion and a trademark owner - ho is unable to demonstrate such confusion may not prevent the unauthorised use and ibsequent weakening o f a mark through an infringement action.25 in the landmark case o f Patkum Industries Ltd. v. Niger Shoes,26 the Plaintiff, a registered rroprietor o f trade mark described as “NISHMACO ” and registered as No. 17229 in Nigeria n respect o f shoes, slippers (Foot wears) and all goods included in the Class. The Plaintiff leged that the Defendant sold, distributed, and imported goods in particular, Slippers, not :f the Plaintiffs manufacture but for goods o f the Plaintiffs manufacture and said acts zonstitute an infringement o f their Trade Mark, namely “NISHMACO ” and passing off same hereof. The Plaintiff prayed for an injunction restraining the Defendant and those claiming -nder him from passing off his goods as their own. It was held that the Federal High Court :as jurisdiction to hear cases o f alleged infringement o f registered marks that are not mmoral under the NTMA.27 * I imilarly, in Dyktrade Ltd. v. Omnia Nigeria Ltd.,2S the Court held that registration o f a rademark will entitle the proprietor to sue or institute an action for any infringement o f such -rark. In Bell Sons & Co. v. Godwin Aka & A nor.29 the Appellant was the registered Oladipo & Timtola v. Thawardas [1917-1976] 1 l.P.L.R. 196, 198 The Lanham Act is the Federal Law for all the states in the United States o f America This provision is contained under 15 U.S.C. Sections 1114, Lanham Act o f 1946 ■ This is under 15 U.S.C. Sections 1125(a) o f the Lanham Act, 1946 Legal Information Institute (LII). Trademark Infringement. :tps://w ww.law.comell.edu/wex/trademark in fringem ent accessed 1 February 2016 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Katherine B McCabe, ‘Dilution-by-Blurring: A Theory Caught in the Shadow o f Trademark Infringement’ 1000) 68 Fordlutm L. Rev. 1827. < http://ir.lawnet.fordham.edu/flr/vol68/iss5/13 > accessed 4 October 2016 [1977-1992] 2 l.P.L.R. 373 Section 3, Nigerian Trade Marks Act, Laws o f the Federation 2004 3 [1997-2003] 4 l.P.L.R. 250 ‘ Bell Sons & Co v. Godwin Aka & Anor [1917-1976] 1, l.P.L.R.,.287 103 UNIVERSITY OF IBADAN LIBRARY Unimaid Journal o f Private And Property Law proprietor of a Trade Mark Exhibit AMF 1 registered in Class 3 of the Register in respect ot castor oil and other pharmaceutical products on 19 April, 1958. The Respondent sought to register Exhibit AMF 2 in the same class and in respect of castor oil. The Appellant filed a Notice of Opposition before the Registrar o f Trade Marks. The grounds for the objection/opposition is that the Mark sought to be registered by the Respondents is in al material respects identical to the Appellant’s mark and clearly intended to or calculated to deceive and is not entitled to registration as a trade mark. The Respondents as Applicants applied to the High Court for an order that notwithstanding the opposition, the registration be proceeded with by the Registrar of Trade Marks. It was held that the ears as well as the eyes have to be employed with reference to the comparison between the two marks. Also, whether a Mark is potentially capable o f being so mistaken for another one is a question of fact to be decided after a comparison o f the two products. The law o f Trade Marks is aimed at the subtle as well as to the obvious infraction o f it and both the ears and eyes must be together in the exercise o f comparison.30 The likelihood o f confusion is the central focus o f any trademark infringement claim in Nigeria and it exists when consumers view the mark as similar and that the product or service it represents is associated with the source o f a different product or service. In determining this, the courts would apply two different standards to directly competing goods as opposed to non-competing goods. Where therefore, the alleged infringer and the trademark owner deal with such goods or services, which are deemed to be competitive and similar, they will be compared side by side to determine whether consumers would be confused when they come into contact with such goods. On the other hand, where the goods in question are completely unrelated, confusion is unlikely and infringement will generally not be found.31 In the popular case o f Nigeria Distillers Ltd. v. Gybo and Sons & Anor 32 it was held that the question which is crucial in determining whether or not a name is so similar as to constitute an infringement of the plaintiffs trade mark, “Bacchus” is whether the person who sees the word, “Cacchus” in the absence o f the Plaintiffs mark, “Bacchus” would be deceived as to conclude that the defendant’s mark is similar to that of the plaintiff. The mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion.33 An infringement of a trade mark would thereby occur where a person, not being the owner uses a mark identical to an already existing trademark to cause confusion amongst consumers, who would have the belief that there is a connection between the two parties.34 Trade mark’s registration is meant to protect the proprietor or assignee in the exclusive use o f the trade mark in connection with its goods. Therefore, infringement can occur, whereby an identical mark which closely resembles the original mark is used adversely to the interest o f the owner and persons coming into contact with it, may be confused into thinking that it belongs to the infringer.35 Any invasion o f right is therefore actionable if this were to arise. 50 Ibid., 289 Legal Information Institute (LI1). Trademark Infringement. s://w w w .law.comell.edu/wex/trademark infringem ent accessed 1 February 2016 32 [1997-2003] 4 , 1.P.L.R. 464 33 Alban Pharmacy Ltd. v. Sterling Products International Ltd. (1968) 1 All N.L.R. 300 14 British American Tobacco (Nig.) Ltd. & Anor v. International Tobacco Company Ltd (2003-2007) 5, I.P.L.R. 272, 285, 280. Section 5(2) Nigerian Trade Marks Act, Cap. T13, Laws o f the Federation 2004 35 Section 5(2) ibid. 104 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom An infringement o f an unregistered mark or trade name may be actionable as a passing off.36 .An action for infringement will therefore lie where a competitor uses registered Trade Mark in connection with the proprietor’s goods for the purpose o f comparing them with his own goods in the same class.37 The classic case o f Rodgers and Sons v. Rodgers & Company,38 * brought to light the need why a trade mark ought to be registered in the first instance. The learned judge, Romer J. stated thus, “[No] man is entitled to carry on his business in such a way as to represent that it is the business o f another, or is in any way connected with the business o f another.” Thus, every person is entitled to have business relationships but it must be within lawful boundaries. Depending on the circumstances o f each matter, the Court has to determine if there is an infringement o f a mark and whether it is calculated to deceive. In P.Z. v. C h a m if the two competing marks were an elephant pulling fruits from a palm tree with its trunk and a caparisoned elephant with two palm trees on each side o f it with a rider in a howdah on its cack. The appellants objected on the ground that the marks were identical and that the ■espondent’s mark was likely to deceive or confuse. The objection was rejected in the High Court and the appellants later applied to the Supreme Court. The Supreme Court rejected ±e appeal stating that the said competing marks were not similar in that the two devices were dissimilar.40 The Court therefore, in an action on a trade mark infringement, the question whether the defendant’s trade mark is likely to deceive or confuse is a matter on which the judge alone must decide. The judge in deciding this issue must be guided by the evidence brought by the parties and he cannot abdicate his decision to witnesses.41 For every infringement of trade mark, evidence should be produced to show that consumers are or could be deceived.42 Where however, both marks are the subject o f pending applications, there is no exclusive right to protect.43 The owner o f a trademark, otherwise referred to as a proprietor, has locus standi to sue. likewise, proprietors, who are foreigners also have locus standi but may have to post a bank ?ond or security for costs.44 The exclusivity right takes effect from the date o f registration *hich is invariably, the date o f filing.45 The trade mark proprietor, is thereby entitled to the -emedies and reliefs if any infringement were to occur.46 The burden is on the Plaintiff to prove an infringement o f a trade mark which is registered so as to have a cause o f action. In Gbadamosi & Anor. V. J.T. Chanrai & Anor,47 the ’ laintiffs were the original registered proprietors o f a Trade Mark known as “Cock Device Brand Mosquito Coil” ‘Orire Goodluck’. The Plaintiffs alleged that the Defendants infringed Folarin Shyllon, Intellectual Property Law in Nigeria. (Max Planck Institute for Intellectual Property Jornpetition and Tax Law, Munich 2003) 212 See the case o f Bismag Ltd. v. Amblins (Chemists) Ltd. (1940) Ch. 667. Ferodo Ltd. & Anor. v. Ibeto Ind. Jd. [2003-2007] 5 J.P.L.R. 136 [1914] 41 R.P.C. 277, 291 * (1971) 2 N.C.L.R. 376 * Ibid. Oladipupo v. Thwardas (1970) 2 ALR. Comm. 179 at 184. Shyllon, F., op.cit. at p. 219 c Ibid. « Ibid. “ Tawa Petroleum Products v. Ownerof M.V. Sea Winner (1980)-F.H.C.R. 101 ' C Colston, Principles o f Intellectual Property Law. (Cavendish Publishing Ltd., London 1999) ’ Section 14, United Kingdom Trade Marks Act 1994 r [1917-1976] 1 I.P.L.R. 428 105 UNIVERSITY OF IBADAN LIBRARY Unimaid Journal o f Private And Properly Law their Trade Mark by selling Cock Brand Mosquito Coils with the Cock Device on the label between 1972 and 1074 June at Lagos. The Plaintiffs’ contention is that the 1st Defendant Company is wrongfully selling the Mosquito coils under a name similar and in packets similar to that o f the Plaintiffs and so closely resembling as to mislead the public into the belief that they are purchasing the Plaintiffs’ goods. An action was thereby instituted against the Defendant claiming damages and injunction to restrain the Defendants by themselves or their Agents from selling or offering for sale ‘Cock Brand Mosquito Coil’ not belonging to the Plaintiffs. The onus to prove that there had been an infringement is on the plaintiff and he need not prove any other thing except that the trade mark complies with all the rules of its registration. On appeal to the court, the plaintiff sought an order to restrain the defendant from infringing its registered trade mark. However, the Plaintiff in any case, must ascertain that indeed, there is an infringement and the award of damages need not arise.48 III. Infringement of Trademarks in the United Kingdom In the United Kingdom, when a trademark has been infringed, proceedings are i k , . . —iiy brought by the owner o f the mark but it is also possible for an action to be brought by an exclusive licensee.49 Where the licensees are however not entitled to bring proceedings in their own right, they can call on the proprietor to take proceedings on their behalf.50 It is pertinent to note that before an action can be brought before the court, the trade mark must be registered. Therefore, the rights o f the proprietor are enforceable against third parties with regard to acts done after the date o f registration (which is the date o f filing).51 The rights continue for ten (10) years from registration and may be renewed for further ten-year periods possibly indefinite.52 There is no requirement for knowledge, intention, or derivation on the part of the defendant as regards infringement cases in the United Kingdom. The trade mark owner need not show damage and is able to commence an action for infringement even though the mark has not been used. However, it must be shown that the defendant used the mark in the course of trade.53 In determining whether there is trade mark infringement, it is necessary to compare the registered mark with the alleged infringing sign with a degree o f care. The circumstances in which a mark may be infringed are in terms o f marks which are identical with goods and services or closely resembling such goods,54 which includes the likelihood o f association, with the earlier registered mark,55 and such association could give rise to confusion with the marks and lead to the public being m isled.56 When a registered trade mark has been in use for a long time, in the United Kingdom for instance, it is said to have gained some form of popularity among its specified consumers who are used to the product. Where therefore, the plaintiffs known mark is used in a way by the infringer, which is the defendant in this case, it would destroy the essence or the uniqueness of the mark. Therefore, the United Kingdom looks at similar or closely 48 Gbadamosi & Anor v. J.T. Chanrai & Anor [1917-1976] 1 l.P.L.R. 428 49 This is under Sections 23(5) and 31, UKTMA 1994 50 Section 30, United Kingdom Trade Marks Act 1994 51 Section 9(3), United Kingdom Trade Marks Act ibid. 52 Sections 42 and 43, United Kingdom Trade Marks Act ibid. 53 Sections 42 and 43, United Kingdom Trade Marks Act ibid 54 Section 10(1) - (3) United Kingdom Trade Marks Act ibid. 55 Section 10(2) (a). United Kingdom Trade Marks Act ibid. 56 Section 10 (2) (b) ibid. 106 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom resembling products which could take undue advantage o f the plaintiffs trademark and ensures that the proper penalties are laid down if an action for infringement arises.57 The above has almost the same characteristics with the Nigerian counterpart but the difference is that trade mark is only in relation to goods. A registered trade mark can therefore be infringed if the goods or services are identical or closely resemble an earlier registered trade mark which could lead the consumers to confusion. Hence, where a person takes undue advantage o f the status and reputation o f a trade mark by selling products illegally bearing the name or logo o f another person, and misleading consumers into thinking otherwise, such will be termed an infringement on the guilty persons.58 However, it is pertinent to note that the concept o f trademark is only in relation to goods in Nigeria. The test to know whether there is an infringement, is to identify the scope o f the proprietor’s right in the trade marie and this can be done where there evidence o f a Certificate of Registration issued by the Registrar. Thereafter, the court will ascertain the defendant's mark by assessing its liability to the specific use o f the mark, that is, whether or not, it has used it m the course o f trade and to what extent it has been used. To establish infringement, the nark must be used in the course o f trade and the relevant territory in which the mark must re sold should not be ignored and finally, the importance o f the function o f the mark.59 IV. Requirements in the determination of the scope of infringement 1. The Claimant’s Trade Mark The trade mark register is a way to assess whether or not a proposed mark is conflicting with m earlier registered trade mark.60 Where registration is more than five (5) years, the specification o f goods and services may need to be reformulated. Under the UK law, it is common for an alleged infringer to challenge the scope o f the registration, especially if it is more than five years old, through a counter-claim for revocation for non-use.61 In evaluating mfringement therefore, the court may be concerned with how the mark has been used. In peesavers International Healthcare Ltd. v. Asda Stores Ltd.,62 the claimant’s mark comprised two intersecting oval shapes and had been registered in black, which, under, the : revailing conventions was assumed to confer rights irrespective o f the colour in which the shape is used by the defendant. The mark, nevertheless, had been used primarily in a rarticular shade o f green. The Court held the ‘colour’ was relevant and further held that the rarticular shade o f green would likely create confusion.63 2. - The Defendant’s Sign Then a person infringes a registered trade mark, it is necessary to compare the ‘original’ -egistered sign with the ‘fake’ sign used by the defendant. The question as to what constitutes ie defendant’s sign is of vital importance when considering whether or not the goods and ervices are identical or not. Furthermore, the UK provision states that if the marks and goods - services are identical, then a defendant will be considered to have infringed irrespective : any confusion.64 In LTJ Diffusion case,65 the owners o f a figurative mark including the Section 10 (3) ibid. Lionel Bently and Brad Sherman. Intellectual Property (4 ,h Edition, Oxford University Press) 1039 Lionel Bently and Brad Sherman. Intellectual Property (4 ,h Edition, Oxford University Press) 1039 ■ Ibid, at p. 1039 Ibid, at p. 1039 c [2013] Case C-252/12 * Ibid. “ This is contained under Section 10(1) United Kingdom Trade Marks Act, Cap. 26, 1994 Case C -291/100 [2003] ECR 1-02799 107 UNIVER ITY OF IBADAN LIBRARY Unimaid Journal o f Private And Property Law word, “Arthur” in handwritten form for clothes brought infringement proceedings against a company selling children’s clothing under the name, “Arthur Et Felicie.” V. Types of use The UKTMA provides a non-exhaustive list o f situations where a person uses a sign in the course o f trade.66 Instances where an infringer affixes the sign to the goods or to the packaging has been said to be the most common form of trademark infringement.67 68 This would occur for example, when a counterfeiter were to place scented liquid in bottles to which have been attached the ‘Chanel Label.” In Frisdranken Industrie Winters BV v. Red Bull GmbH b% the defendant, a Dutch company, filled cans on behalf o f Smart Drinks, a firm based in the British Virgin Islands. Smart Drinks supplied the drink extract, as well as the empty cans and lids (which bore marks that were said to infringe the claimant’s trade marks). After filling the cans with the made-up drink, the defendant placed the filled cans at the disposal of Smart Drinks, which then exported them to countries outside the Benelux region. The Dutch appellate court had held that filling the cans was akin to affixing a mark to the goods, reasoning that in relation to a liquid, a sign cannot be affixed in any other way than by placing it in packaging that already bears the sign. The Dutch Supreme Court referred that issue to the Court of Justice. It was further held in this case that a party such as the defendant was not using the mark because it merely executes a technical part o f the production process o f the final product without having any interest in the external presentation o f the cans and in particular, in the signs thereon.69 It was held in the above case that there were no infringing acts on the plaintiffs goods. Therefore, in Trebor v. Football Association,70 there was an infringement action involving the Fpotball Association’s “three lions’ logo.” The action arose when a sweet manufacturer, ‘Trebor’, included photographs o f footballers in packets of sweets that it sold. The Football Association argued diat, because some o f the footballers were wearing the English team strip, which had the ‘three lions’ logo attached to it, this amounted to an infringement o f its mark. Dismissing this action, it was held that Trebor was not really using the logo in any real sense o f the word. Thus, Infringement could take place in different forms. A person could be liable for using a material which had initially gained recognition among consumers and the infringer now uses the same material by putting his own mark and consumers would believe that it is the product o f the plaintiff. The plaintiffs trade mark will be harmed in so many ways and would invariably affect the business venture o f the claimant. Hence, where a mark is deliberately used on material meant for labelling or packaging o f goods, and the colour is the same, or it is exploited on business paper or when goods or services are advertised in a way to mislead consumers, such a person could be accused o f infringement.71 A person can be said to use a sign where goods are offered for sale, or puts them on the market and stock them for these purposes under the sign, or offer or supply services under the sign. This simply suggests that although a sign may not be physically attached to the goods in question, a sign may nonetheless still be “used” where it is placed in proximity to, or is connected with the goods.72 A sign is also used when there are imports and exports of 66 Section 10(4) United Kingdom Trade Marks Act, Cap. 26, 1994 67 Ibid. 68 Case C -l 19/10 [2011]ECR 1-13179, [2012] ETMR (16) 340 (ECJ, First Chamber) 69 Ibid. 70 [1997] FSR 211 71 Lionel Bently and Brad Sherman, ibid.at 1044,1045; Section 10(5), United Kingdom Trade Marks Act 1994 72 Ibid, at p.1044, 1045 108 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom goods under the sign. The importance of this provision is that a trade mark owner can prevent the importing of goods that bear the mark into the United Kingdom. This right can sometimes be used even where those goods have been marketed elsewhere with the trade mark owner’s :onsent. Therefore, the end result is that a trade mark owner is empowered through this right :o divide up markets on a territorial basis, and set prices differently for each territory.73 On he other hand, while a person need not have title to the goods to be treated as an importer but merely transporting a product bearing a trade mark through a territory (especially where he destination is somewhere else) is said not to be an infringing act.74 A sign can also be used on business papers75 or in advertising.76 In relation to business capers, the court has to determine whether such uses are in relation to goods or merely to the rackaging.77 Use in advertising includes a wide range of promotional activity, such as •dvertisement at the cinema, on television, on billboards, and in magazines; another respect s that advertising also consists of comparative advertising.78 In 02 Holdings Ltd. v. Hutchison 3G UK Ltd., the Hutchison 3G Ltd. (H3G), in 2004, ran a television advertisement :omparing the cost of its pay-as-you-go service with that of 02. The advert featured moving mages of bubbles, together with visual and spoken references to the 02 name. 02 thereafter . jed H3G, alleging trade mark infringement. 02 alleged infringement under the Trade larks, Act where it was held by the court that it is an infringement to use an identical or jnilar service in such a way as to give rise to a likelihood of confusion. 79 Use therefore, f a third party’s Trade Marks to generate advertising has been held to amount to use, even - here the trade mark is typed into a search engine by a third party and the advertisement rpears in a set of the search results designated ‘sponsored links’.80 has been further held that use on publicly accessible websites counts as “use” under that "rade Marks Act.81 It should be noted that “use” simply implies that the third party uses the gn in its own commercial communication.82 It was held that the act of a search engine rrovider in suggesting the mark as a keyword and generating the adverts in response to the iey words is not guilty of using the mark.83 *In other words, where an internet market service rrovider, such as eBay or Jumia, which provides a service that allows its customers to offer roods for sale under signs that may correspond to trade marks, does not itself ‘use’ those Ibid, at pg.1045 Section 10 (4) (c) United Kingdom Trade Marks Act 1994 See the case o f Broad v. Graham (No. 2) [1969] RPC 295, 298. Section 10(4), United Kingdom Trade Marks 1ct ibid. Section 10 (4) (d) United Kingdom Trade Marks Act ibid. Lionel Bently and Brad Sherman, ibid. David I. Ba inbridge, ibid, at p. 777-778, 791-796 02 Holdings Ltd. v. Hutchison 3G UK Ltd., Case C-533/06 [2008] ECR 1-4231 (ECJ, First Chamber), [32]- 36]. See also P Miskolczi-Bodnar, ‘Definition o f Comparative Advertising’. European Integration Studies, vliskolc, (2004). Volume 3, N o .l, pp.24-44. < www.uni- ~i skolc.hu/uni/res/kozlemenvek/2004/Definition.doc> accessed 12_May_2016 02 Holdings Ltd. v. Hutchison 3G UK Ltd., Case C-533/06 [2008] ECR 1-4231 (ECJ, First Chamber), [32]- ■36]. Section 10(4) United Kingdom Trade Marks Act Cap. 26, 1994 : Louis Vuitton v. Google, Case C-236/08 [2010] ECR 1-2417, [56] Ibid. “ L 'Oreal SA v. eBay International AG, Case C-324/09 [2011], ECR 1-6011, [102] 109 UNIVERSITY OF IBADAN LIBRARY Uninmid Journal o f Private And Property Law An infringement will only occur when the sign is used in the course o f trade in a manner thai is inconsistent with the owner o f the mark.85 To reiterate the fact that any sign that is infringed is in the course o f trade, the Court o f Justice in Arsenal v. Reed, stated that a sign is used in the course of trade where it is used ‘in the context of commercial activity with a view to economic advantage and not as a private matter’. To sustain an action o f a British trade mark, the act must take place in the United Kingdom and it must be in respect o f the goods for which there is an infringement in the course of trade.86 Problems may arise however, where foreign sites are easily assessed by consumers from the United Kingdom; and the Court o f Justice has indicated that mere accessibility is insufficient to constitute use o f a mark in a particular territory and that the assessment of whether such use exists depends on whether consumers are targeted in that particular territory.87 In an infringement, the defendant must have used a sign in relation to goods and services covered by the claimant’s rights (that is, which is identical, similar to, or dissimilar to the claimant’s goods).88 The general consensus on the concept of ‘use’ is whether there is an infringement and whether the use affects or is liable to affect the functions o f the trade mark particularly its essential function o f guaranteeing to consumers the origin o f the goods.89 The ‘origin' function has been described as the guaranteeing o f goods or services bearing a registered mark having been placed on the market with the authority o f the proprietor and thus, third parties’ use affects the value of trademarks.90 VI. Other types of Trademark Infringement in Nigeria In Nigeria, infringement o f trademark is only recognized when there are identical or similar products resembling each other. The non-recognition of current trends on trademarks could lead to unrecognized cases o f infringement. Due to industrialization and globalization as a result o f commerce and industry, there are in existence other categories o f trademark infringement which Nigeria ought to make legislative provision for, under the Trade Marks Act. They include comparative advertising, get-up, dilution and parallel im p o rta tio n VII. Get-Up/Trade dress Get-up seems to be recognized only under passing off in Nigeria and it is majorly found in the Law of Tort. This includes copying the packaging o f the plaintiff to be similar to that of the defendant in a manner that is likely to confuse the public. Therefore, it includes the general appearance, package, label, or design o f the product.91 Get-up is however not recognized under the NTMA and hence, there is no legislative protection for it. Thus, deceit would occur when a registered mark is imitated by an individual or company in relation to the goods or services which has acquired a distinctive reputation in the market and is known as belonging to a product by such individual or company only.92 In U.K. Tobacco Co. v 85 Under Section 103(1) United Kingdom Trade Marks Act, ibid. 86 Section 9(1), United Kingdom Trade Marks Act ibid 87 L 'OrealSA v. eBav International AG, Case C-324/09 [2011] ECR 1-6011, [66] !8 Ibid. 89 Arsenal v. Reed, op.cit. 90 Hoffman-La Roche v. Centrafarm, Case C_102/77 [1978] ECR 1-1139 91 Ese Malemi, Law o f Tort. (Revised Edition. Princeton Publishing, 2013) 638 92 Mondaq T &A Legal. Nigeria: An Appraisal o f Passing o ff Actions under Nigerian Law. (2018) Nigeria>Trademark> accessed 16 October 2018 110 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom Carreras Ltd.,93 the defendants were marketing cigarettes called “Barrister”, and the packet showed a white man wearing a barrister’s wig and gown. It was similar to that of the plaintiff s product which was called “Band Master” on which the packet o f cigarettes also included a man in a band master’s uniform. The external packaging o f a person’s product in Nigeria is known as get-up and another name is for it is trade dress. Trade dress is what is used in the United States o f America to describe product packaging. Trade dress refers to the visual appearance o f a product that may include features such as size, shape, packaging, colour or combination o f colours and this is considered the overall get-up o f the product.94 Trade dress is an important asset and it is generally described as the total overall impression which is created by a package design or label or the decor o f a business.95 It is the total image o f a product or business which is reflected in features such as size, shape, colour or colour combinations, designs o f a label, texture, graphics or sales techniques.96 Thus, it can occur when one company uses a package similar to another person to cause a likelihood o f confusion in a buyer’s mind. This however is not recognized under the NTMA which could invariably lead to endless cases o f unrecognized infringement. Under the current Trade Mark Act, the shape or the form of presentation or packaging o f a product is not recognized in Nigeria. A proprietor therefore, cannot prevent competitors from copying these elements through an infringement action.97 This is in contrast with the United kingdom Act where it protects product packaging, and other types o f trade mark which are made use o f in business practices.98 Trade dress is an increasingly important asset as it is :escribed as the total overall impression created by a package design or label or the decor o f * business.99 In addition, it could be referred to as the visual appearance o f a product, which 3 used in most cases to signify the source o f the product to consumers.100 * The non­ recognition o f packaging has been brought forth in different case laws. A classic case is that rf Ferodo Nigeria Ltd. v. Ibeto Industries Ltd.,m where packaging o f a product was not mcognized as an infringement o f trademark. The development o f commerce over the past recades accounts for the increased relevance and importance o f trademarks; hence, the need :or an updated Act. Law as an instrument o f social engineering and economic development ught to suit the society in which it functions and hence, the urgent need for an updated “rade Mark Act.102 The UKTMA on the other hand, recognises shapes and packaging as contained in the Act.103 provides that a trade mark may consist o f any signs capable o f being represented 1931) 16 NLR 1. See also De Facto Works Ltd. v. Odumotun Trading Co. Ltd. [1959] LLR 33 Trade Dress Protection under Trademark Regime: An Analysis, < http://www.ficpi.org/news/trade-dress- - Mextion-under/> accessed 21 September 2017 Folarin Shyllon, ibid, at 194 ' JW Reese, Defining the Elements o f Trade Dress Infringement under Section 43(A ) o f the Lanham Act. 994) accessed 10 February 2018 Folarin Shyllon,ibid. 194 Section 1, United Kingdom Trade Marks Act Cap. 26, 1994 Folarin Shyllon, ibid. 194 * Ibid. [2004] 5 NWLR, part 866 at p 317 c Ayoyemi Lawal-Arowolo, 'Ferodo Limited and Ferodo Nigeria Limited v. Ibeto Industries Limited: nother Critical R eview ’ (2012) NIALS Journal o f Intellectual Property [NJIP] Vol. 1 No. 2 Section 1, United Kingdom Trade Marks Act Cap. 26, 1994 111 UNIVERSITY OF IBADAN LIBRARY Unimaid Journal o f Private And Property Law graphically, particularly words, including personal names, designs, letters, numerals, the shape o f goods or the packaging provided that such signs are capable o f distinguishing the goods or services o f one undertaking from those o f other undertaking.104 Hence, packaging as recognised under the UKTMA indicates that it could lead to infringement if it is not adequately protected. To avoid infringement, a trader may need to design different packaging or shapes for goods.105 VIII. Dilution Dilution is an infringement under trademark law which can occur when a person uses a well- known name which would inadvertently destroy the uniqueness and originality o f that particular mark. This would affect the value o f the product in currency especially if the reputation o f the mark was extended across a diverse range o f products.106 It is to be noted that under the Trademark Act in Nigeria, the term, ‘infringement” is not defined unlike the Trademark law in the United Kingdom where infringement and infringement materials are well-defined.107 Infringement by dilution is not recognized under the Trade Marks Act in Nigeria while it is recognized under the Trade Marks Act in the United Kingdom.108 A trademark infringement occurs where a protected trademark is used in connection with entirely different products or services. For instance, if the trademark “Coca-Cola” is used by a manufacturer o f blue jeans and such use gives the impression that this product draws on the reputation o f “Coca-Cola” as a drink for dynamic young people, interests of the “Coca- Cola” company would be at stake.109 Traditionally, under the doctrine o f dilution, there are two types. The two types are dilution by blurring and dilution by tamishment. The multiple uses o f the same mark on different products is likely to dilute die distinctive quality o f the mark which would make it difficult for consumers to recall the original product. To illustrate, suppose a firm names its soap "Tiffany Soap;" a car company names its new car "The Tiffany;" a restaurant opens under the name "Tiffany;" and so on. These uses of the TIFFANY mark may not confuse anyone about a possible connection with the jewellery company, but they could clutter the signal sent by the mark and make it more difficult for consumers to link it to Tiffany jewellery or so the blurring theory supposes. That is, Dilution by blurring occurs when a mark is used by a different manufacturer in an unrelated line of business. For example, the trademark ‘Xerox’ (this is the known name of photocopier machines) would be diluted if it were by a manufacturer o f chairs. This thereby prevents consumers from identifying a trademark with a particular good or collection of goods and the end result being that the effectiveness o f a trademark is diminished.110 Dilution by tamishment on the other hand, occurs where the trademark is used by a different seller in unrelated goods of lower quality than those o f the trademark holder. Where a trader uses someone else’s well-known trade mark for different goods or services, hoping to capture some o f the goodwill attaching to the trademark, such person will be guilty o f dilution lw Section 1, United Kingdom Trade Marks Act ibid. 105 Lionel Bently and Brad Sherman, ibid. 813 106 Folarin Shyllon, ibid., at 241-242. Though cases abound in Nigeria o f dilution, there is the need to have a well-defined Federal Law for Trademark Dilution Act. See the case o f Nigeria Distillers Limited v. Gybo and Sons and A nor, ibid. 107 Sections 16-18, United Kingdom Trade Marks Act, Cap. 26, 1994 108 Section 10(3) United Kingdom Trade Marks Act, ibid. 109 Folarin Shyllon, ibid. 240, 241 110 Folarin Shyllon, ibid., 241 112 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom Tamishment covers cases where the defendant uses a similar mark in a way that severely clashes with the meanings that consumers associate with the plaintiffs mark.111 This therefore does not allow the information about the level of quality for such trademarked good or collection of goods to be correctly inferred. In essence, dilution interferes with the proper economic function of trade marks.112 IX. Parallel Importation Another form of trademark infringement is referred to as parallel importation. Parallel importation refers to a situation where the owner of the trademark has not given its consent to import its trademarked goods to a certain area.113 Currently, in Nigeria, no statutory prohibition on parallel importation exists. Parallel importers operate outside the distribution network set up by the manufacturer or his or her authorized distributor. Parallel imports are not fake or counterfeit goods114 but they occur when products are imported cheaply without die owner’s consent having a trademark or other intellectual property in the goods, thereby aiming to compete with the owner’s own products which had originally been marketed abroad at a lower price.115 The United Kingdom infringement categories is wider than what is found in Nigeria. A deficiency in the Trade Marks Act of Nigeria is that it does not define infringement or infringing materials in the statute. This is unlike the United Kingdom where infringement and infringing materials are defined. In addition, infringement in Nigeria is still related to closely resembling goods likely to cause confusion or deception.116 In order to ensure that Nigeria moves in modem times, the categories of trademark cifringement which might occur other than identical or similar marks should be addressed. X. Comparative Advertising In Nigeria, the law on comparative advertising depends on whether the trademark concerned is registered under Part A or B of the trademark register. The Trade Marks Act lays emphasis nat the mark must be registered which would give the owner the exclusive right to use the trademark in relation to the goods.117 Comparative advertising is used to describe advertisements in which the goods or services f one trader are compared with the products of another trader.118 Hence, it is defined as idvertising that compares alternative brands on the price, value or quality and identifies the iltemative brand by name, illustration or any other distinctive information that is attributable so the brand.119 *It can be referred to as contrast ads, negative ads, attack ads, or knocking Daniel M Klerman, ‘Trademark Dilution, Search Costs, and Naked Licensing’, [2006J74 FORDHAM L. *EV. 1759, 1762 ' Folarin Shyllon, ibid., 241 I Avgoutis, ‘Parallel Imports and Exhaustion o f Trademark Rights: Should steps be taken towards an international Exhaustion Regime’? [2012] European Intellectual Property Review, Vol. 34, No. 2, 108-121 1 O Agaba, ‘The Parallel Importer and the Nigerian Trademark Jurisprudence: A Critical Analysis'. [2013] ''IALS Journal o f Intellectual Property, Vol.2, No. 1 Folarin Shyllon, ibid., 255 Section 13(1) Nigerian Trade Marks Act, Laws o f the Federation 2004 Section 5(1) , Nigerian Trade Marks Act, ibid ! Lionel Bently and Brad Sherman, ibid., 1072 !S Ibid., 1072 MT Moore, ‘Campaigns enter Phase 1 o f ad war’. USA Today, October 27, 16 A. (1999). See also, K illiams, A Robert, ‘Comparative advertising as a Competitive Tool’. (2013) Journal o f Marketing Development and Competitiveness. Vol. 7(4), 47 113 UNIVERSITY OF IBADAN LIBRARY Uni maid Journal o f Private And Property Law Comparative advertisement through honest practices does not amount to trademark infringement but where a rival competitor intentionally harms the product of another through advertisement strategy, this can lead to an infringement of a trademark. Hence, comparative advertising can be an act of unfair competition where it is misleading, and unjustifiably discredits the competitor or his trademark. The objective is usually to gain an advantage ovei the goods of the competitor.121 In order to ensure that traders do not practice misleading advertisement, there are specific laws that guard against negative comparative advertisements. For instance, in the European Union, there is the Directive on Misleading and Comparative Advertising that deals with circumstances in which it is permissible and those in which it should be prevented. The essence of this directive is to ensure that in advertising goods, it does not take unfair advantage of another person’s trade name.122 In Nigeria, there is also no specific legislation that governs comparative advertising in Nigeria but some legislation over the years have been interpreted as indicating that the use of a company’s registered trademark in comparative advertising could constitute trademark infringement in Nigeria.123 For example, the Nigerian Communications Commission Guidelines on Advertisement and Promotions provides that advertisements must not unfairly discredit, disparage or attack other products, services, advertisements or companies.124 In addition, it further states that no licensee shall imitate the slogans or illustrations of another advertiser in such a manner as to mislead the consumer.125 Under the Nigerian Trade Marks Act (NTMA), the position of the law on comparative advertising depends on whether such mark is registered under Part A or B of the trademark register. In order for a trade mark to fall within the requirements of being registrable and having capacity, it must be in Parts A and B of the Register.126 Therefore, for marks to be registered under Part A, the owner is given the exclusive right to use the trademark in relation to those goods.127 The Act further states that the exclusive right granted shall be deemed to be infringed by any person who, not being the proprietor of the trademark or what is known as a registered user, uses a mark identical with it or resembles it nearly as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered and in such manner as to reduce the use of the mark likely to be taken either as being used as a trademark;128 or in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or their advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trademark or to goods with which such a person as aforesaid is connected in the course of trade.129 121 Adejoke Oyewunmi, Nigerian Law of Intellectual Property. (University ot Lagos Press and Bookshop Ltd Nigeria, 2015)267 122 Lionel Bentley and Brad Sherman, ibid. 1072-1073 123 Comparative Advertising in Nigeria: Keep your improvements to Yourself. a 124 Article 3, The Nigerian Communications Commission Guidelines on Advertisements and Promotions 2003 125 Article 3(d), Nigerian Communications Commissions Guidelines, ibid. 126 Sections 9 and 10, Nigerian Trade Marks Act, Laws o f the Federation 2004 127 Section 5, Nigerian Trade Marks Act, ibid. 128 Section 5(2)(a), Nigerian Trade Marks Act, ibid l2<) Section 5(2)(b), Nigerian Trade Marks Act, ibid 114 UNIVERSITY OF IBADAN LIBRARY A Comparative Appraisal o f Trademark Infringement In Nigeria And United Kingdom s sv'-fc\ ■ It can be seen therefore that the use of a trademark registered under Part A of the NTMA by another in its advertisements, constitutes trademark infringement regardless of the content of the advertisement.130 Furthermore, the NTMA deals with rights conferred by, and infringement of trademarks registered under Part B of the trademark register.131 This section132 grants similar rights as those ..nder Section 5133 which states that in any action for infringement, there will be no relief for the plaintiff if the defendant is able to establish to the satisfaction of the court that the use of which he plaintiff complains is not likely to deceive or cause confusion or to lead to the belief in a connection in the course of trade between the goods and some person entitled either as proprietor or as a registered user to use the trademark.134 In other words, the plaintiff must be able to prove hat the defendant is advertising the goods of the plaintiff in a manner likely to cause confusion :o the consuming public. It can also be noted from the above provisions under the NTMA, that -hen a mark has been duly registered and included in the Register, no-body else has the right to idvertise in like manner as this could amount to an infringement. The NTMA, has failed to recognise other categories of trademark infringement which is essential jo the development of the international trademark system. Also, the Act also ignores the fact that he world has moved from where it is and in its place, some marks have acquired reputation over c long period of time. The United Kingdom’s coverage of trademark infringement for instance, s wid$r and hence, it has been noted that as a result of globalization, other marks have been corded the relevant recognition. The UKTMA, thereby makes provision for the differen -.stances on how trademark infringement can occur.135 XI. Conclusion 'rademark is important in any society and the knowledge to be able to distinguish the goods ~om other goods and undertakings is very crucial. In Nigeria, there is the need for trademarks so be registered so that infringement of trademarks are protected in order to deter infringement recurrences. For a trademark to be recognised, it must be affixed on products as it would be mfficult for the product to be easily identified without the symbol representing such a product. Once a trademark has been identified, and in order for the owner to retain consistent quality, .ere will be the greater need to protect the trademark. This can only be done by registering the -ark. Without legal protection, it would be difficult for the user of a mark to appropriate the full alue that the mark represents. Thus, Nigeria can benefit from the United Kingdom by adopting i new trademark legislation that is up-to-date to suit new trends in the trademark law. As a result f globalization and fast growing technological economy, the United Kingdom updated its rademark laws to protect owners’ goods from infringement. It has also made provisions for afferent types of trademark infringement under the UKTMA. The NTMA does not make any rrovision or special section of how trademark infringement could occur. The UKTMA however, rrovides extensively for how trademark infringement can occur. Nigeria therefore, in an extreme - easure of urgency has to reform its trademark law as intellectual property continues to play rrominent role in global policy and economic development. Section 5(1) (b), Nigerian Trade Marks Act, ibid. Section 6, Nigerian Trade Marks Act ibid. - Section 6, ibid. ' Nigerian Trade Marks Act, ibid J Section 6(2) ibid. Section 10, United Kingdom Trade Marks Act Cap. 26, 1994 115 UNIVERSITY OF IBADAN LIBRARY