CHAPTER TWOLITERATURE REVIEW AND THEORETICAL FRAMEWORK
This chapter reviewed various literatures relating to the following areas such as; Definition and history of Trade Marks Law, Compliance of the Nigerian Trade mark Laws to the TRIPS Agreement in Nigeria, use and review of available literature that explains some specific areas of this study.
The concept of Trademarks have been in use in several countries and identified as an important commercial asset. Trademarks are signs that identify goods or services offered on a market. Though marks are used in different forms, Trade marking as an important aspect of intellectual property (IP) has been in existence in Nigeria. Its use ranges from commerce by traders who marked their goods for identification of its source of origin to identification of the place of origin of persons to their status in the society. Although, there hasn’t been a revision of the Trade Marks Act of 1965, there is however the need for protection of intellectual property rights (IPRs) based on economic and social considerations. The impact and implementation of the TRIPS Agreement in relation to trade marks should also be examined having not gotten much attention as copyrights and patents. Also, considering the recent proliferation of trademarks on consumer goods in Nigeria, it is important to examine the law in order to determine its effectiveness and the impact of the TRIPS Agreement on the existing law.
The English Law of Patents, Designs and Trade Marks Act, 1883 introduced on the 1st of January 1900 as the Trade Marks Proclamation Ordinance of 1900 was the first trademark law. Its application was strictly restricted to the Southern Nigeria but became public after the amalgamation in 1914. There has been succession of Trademark Acts such as the United Kingdom Trade Marks Act of 1919 introduced in April 1920 and enforced in Nigeria in 1923 as an extension of the British colony. Further succession occurred in 1926 with the Trade Marks Ordinance 11 replacing that of 1923 later followed by the 1958 Ordinance to amend and implement the law relating to Trade Marks.
The 1965 Act repealed the Trade Mark Act of 1958 and its regulation and became the first indigenous Trade Marks Act. It was enforced in 1967 upon its institution for administration, incorporated into the Laws of the Federation of Nigeria 2004 as Chapter T13 and remains presently active.
2.3Trade Mark Protection
The provision of protection of trade marks in respect of goods has been extended to service marks, certification marks, defensive marks, associate trademarks and series of trade marks with no preferential provision on collective and well-known marks. The Federal Ministry of Commerce, Trade and Investment also referred to as the Registry is in charge of all trade mark application processes in Nigeria.
2.3.1 Definition of a Mark
There have been variations in defining a “mark” with consideration to include colour, scent, shape, sound, pattern, product packaging and any combination thereof or features of a product that can indicate source however, the definition as stated in section 67 remains as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.
The seemingly addition to the margins of a mark have had the courts seek caution in its protection and registration but the mark owners would rather than the law stretch the boundaries beyond what the law covers in order to include the extension to other attributes such as colour, scent, shape, sound pattern and product packaging. Countries like the US, UK and Japan have adopted the inclusion of these extensions into their practices with decision such as in 1986, the House of Lords unequivocally held in Re Coca-Cola Co. Application that:
It is not enough for the Coca-Cola bottle to be distinctive as Coca-Cola Co. must succeed in the proposition that a bottle is a trade mark. If so, any other container or any article of a distinctive shape is capable of being a trade mark. This raises the spectre of a total and perpetual monopoly in containers and articles achieved by means of the Act of 1938. Once the container or article has become associated with the manufacturer and distinctiveness has been established, with or without the help of the monopolies created by the Patents Act, the Registered Designs Act or the Copyright Act, the perpetual trade mark monopoly in the container or article can be achieved. The Act of 1938 was not intended to confer on the manufacturer of a container or on the manufacturer of an article a statutory monopoly on the ground that the manufacturer has in the eyes of the public established a connection between the shape of the container or article and the manufacturer. A rival manufacturer must be free to sell any container or article of similar shape provided the container or article is labelled or packaged in a manner which avoids confusion as to the origin of the goods in the container or the origin of the article.
The UK sought to protect three-dimensional trademarks to ensure its law compliance with the TRIPS Agreement and obligation to the WTO though the three-dimensional trade marks were not recognised in the Japanese Trade Mark Law till 1996.
The consideration for the protection of unconventional marks, such as packaging or trade dress have been under review in the Nigerian law, as case laws have begun to examine the issue of trade dress without provision for it under the law. Shapes are however not deemed part of a mark and not registered Nigeria though considered unique elsewhere and this has led to diverse opinions in the application for the recognition and protection for shapes such as protection under the Patent and Designs Act by design laws but can only hold for 15years (Laws of Federation of Nigeria, 2004) from the date of application unlike trade mark protection which is indefinite in as much the mark exists.
The case of Ferodo Ltd v Ibeto Industries Ltd is a cited example where Ferodo as the appellant in the Court of Appeal presented an attractive trade mark with other colorations and devices though not fanciful but with ornamental characters as part of the trade mark. The court was of the opinion that in the absence of registration of a trade dress, a statutory action for infringement or statutory passing off cannot be sustained over the use of the colour combination hence, the action failed. The Supreme Court did not allow the consideration of a break in the trade mark law by accepting a traditional word, mark or logo (Phillips, 2003) to rule that the packaging of Ferodo was distinct enough to allow trade mark infringement could go beyond infringing the words registered to include product package.
The reverse was the case in the Court of Appeal in International Tobacco (NIG.) Ltd.v British American Tobacco (NIG.) Ltd. as decision of the Federal High Court was upheld that though the gold colour of the Benson ; Hedges cigarette pack had not been registered but its colour distinctiveness had stood out since inception and the gold colour adaptation for a similar product by International Tobacco is an infringement of the proprietary rights of British American Tobacco.
2.3.2 Definition of a Trade Mark
A trade mark is defined under section 67 of the Act:
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 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 definition has been criticised and as classified limited as the trademarks may only be affixed to goods traded by a proprietor and not easily applicable. There are classes of trade marks which are categorised as:
Defensive Trade Marks: These are usually registered as a cover for the well-known trademarks such as familiar goods and services that can be substituted for other goods or as an indicator during trade and only applicable to well-known trademarks. The owner may apply as deemed fit provided it’s registered as a trade mark in his name in respect of nay goods and as such can neither be challenged for non-use nor taken off the register.
Associated Trade Marks: These are individual trademarks registered by the same proprietor who is solely exclusive to their rights and use either as parts or wholly. Though registered as separate entities, they must satisfactorily meet all conditions of an independent trade may be substituted for each another in certain cases. Its amendment or dissolution might be requested by the proprietor upon approval by the registrar without deception or confusion of it being utilised by another user in terms of the goods to which it is registered.
Series Trade Marks: These are made up of several trademarks alike in respect of the same goods or description of goods on one application and are registered as associated trade marks in one application. In order to be registered, their similarities must differ in the following ways:
i. statements of the goods in relation to which they are respectively used or proposed to be used; or
ii. statements of number, price, quality or names of places; or
iii. other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
2.4Application and Requirements
In order for a trademark to be registered, the following requirements are considered:
i. a mark
ii. use or proposed use
iii. service in relation to goods
iv. in the course of trade
Other conditions to be met for registration to be valid are:
i. the name of a company, individual, or firm, represented in a special or particular manner;
ii. the signature of the applicant for registration or some predecessor in his business;
iii. an invented word or invented words;
iv. 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;
v. any other distinctive mark.
2.4.1Examination Procedure for Trade Mark Application
The preliminary examination of an application on the distinctiveness of a proposed trademark is dependent on the proprietor though has advantages to determine validity but optional with refund to applicant within stipulated time for withdrawal.
An application is subjected to a search when submitted without a request for a preliminary examination This allows the conduct a search amongst the registered marks and pending applications to ensure no description of goods and any marks identical with the mark applied for after which applicant may be required to furnish requirements to determine the status of the application (accepted, objected to or accepted by the registrar subject to such conditions, amendments, disclaimer, modifications or limitations as the registrar may think right to impose) or an appeal in court if rejected.
2.4.2Effects of Registration
One of the advantages of registration as in section 3 of the Act provides a person who registers a mark the capacity to prevent infringement and recover damages for such infringement unlike who isn’t as such a person can only issue a right of action against any one for passing off and can recover damages only in relation to same. Registration gives the proprietor the exclusive use of the trade mark and the right to sue for passing off goods of the proprietor.
2.4.3Publication and Opposition
A notice of acceptance of publication is usually published in the Trade Marks Journal stating all the conditions and limitations when an application for registration is approved however, opposition can arise and must be presented through a notice as well within two months from application with reasons stated. The outcome of the opposition determined according to presented evidence from parties to the opposition and subject to the conditions or limitations. There is no opposition after a trade mark has been registered
2.4.4Reasons for Opposition
There are several reasons for opposition of a trade and this must be absolute or relative and the prohibited marks are; e deceptive and scandalous marks, identical and resembling trade mark the Nigerian Coat of Arms or the Arms of a State, the National Flag, names of chemical substances trademarks based upon words such as “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, words such as “President”, “Governor” and representation of the armorial bearings, insignia of orders of chivalry, decorations or flags of any state, city, town, place, society, body corporate, institution or person.
2.4.5Duration and Renewal of Trade Marks
A trade mark is acceptable and valid for seven years from initial application but subject to periodical renewal which is valid for fourteen years from the date of expiration of the original registration or of the last renewal of registration.
2.4.6 Cancellation and Removal of Trade Mark
In removing or cancelling a trade mark, the proprietor may apply on the following reasons:
(i) There was no genuine intention to use the registered trade mark and no suitable use in respect to goods registered for
(ii) There has been no reported use of the trade mark within a time frame of a month before application to five years after registration.
(iii) The failure to renew by the proprietor within the stipulated time.
(iv) if the mark is used in a deceptive or prohibited manner as well as failure to disclose essential facts to application by the proprietor.
2.4.7Requirement of Use
The Act allows a mark proposed to be or used to be registered and used in the following contexts:
Assignment and Licensing: The Act permits assignments of a registered trade mark either in connection with the goodwill of a business or not. In addition licensing of trade is recognised under the law. This area will be discussed fully in the next section.
Rights Conferred by Registration: A naturally distinct mark or that adapted to distinguish with essential particulars are registered as part A marks while part B marks must be capable of distinguishing the goods for which it is proposed to be registered either by being inherently capable of distinguishing. The rights conferred by the registration in part A and part B varies as the proprietor part A trademarks has exclusive rights to the use of the trade mark, while a part B trade mark proprietor has similar rights except in an action for infringement where no injunction or other relief shall be granted to the plaintiff (proprietor) if the defendant can satisfactorily present to the court that his unauthorised use of the trade mark as not deceptive or confusing.
Foreign Trade Marks Application: Foreign application are given importance in as much there is a filed application within six months from the date of the application for protection in the Convention country as stated by the law but there is room to claims for damages prior to registration. The provisions of the Paris Convention are applicable in Nigeria only if the Convention is domesticated into local law but the Act refers to the protection of trade marks in Convention countries.
2.5Developments in Trade Mark Laws
In 2006, a central administration system for all intellectual property matters excluding copyrights was proposed to foster administration of IP in Nigeria under the of the Nigerian Intellectual Property Commission (NIPCOM) by the ministry of Justice as a regulatory and enforcement agency in charge of IP administration in Nigeria. In order to provide for the Establishment of the Intellectual Property Commission of Nigeria, a Bill to Repeal Trade Marks Act, Cap. T13, LFN 2004 and Patents and Designs Act, Cap. P2, LFN 2004 and Trade Marks Act, Cap. T13, LFN 2004 and Patents and Designs Act, Cap. P2, LFN 2004 and Make Comprehensive Provisions for the Registration and Protection of Trade Marks, Patents and Designs, Plant Varieties, Animal Breeders and Farmers Rights and for other Related Matters was introduced and though considered a laudable idea, was rated cumbersome. It was advised that it should be separated into components establishing the IP Commission from the IP laws with each part having a distinct Act that may be combined in a Bill and that modifications be made to the existing laws for inclusion of areas such as Plant Varieties, Animal Breeders and Farmers Rights and for other Related Matters compliance with Nigeria’s international obligations.
Though the Bill was reported lacking structure and organisation, it however amends some of the major issues in the Act such as the trade mark definition to include service marks and a concise definition of a trade mark, introduction of registration marks such as sound, smell, taste and texture as well as an addition, the registration of marks has been merged into a single register of registration marks rather than the Part A and Part B registrations that currently exist. It also pushed for the protection of trade marks according to a geographical origin and a definition of geographical indications including a provision for the protection of well-known marks.
2.6Recognition and Reception of International Law
The Laws of the Federation of Nigeria were apprised after the inception of the TRIPS Agreement earning the Trade Mark Acts of 1965 incorporation into Laws of the Federation of Nigeria in 2004 as contained in Chapter T13 also termed the first indigenous Legislation on Trade Marks in Nigeria after repealing the Trade Mark Act of 1958. The Trade Mark Act (TMA) came into force in 1967 when the Trade Marks Regulations Order of 1967 was instituted for the administration of the system. Due to the dualistic nature of the Nigerian legal structure, the Nigerian Constitution in section 12 (1) as an important element ensures international treaties can only be effective if domesticated which implies the National Assembly is solely responsible for the effect of law contemplated in the international instrument and a Declaration can be made by the minister in the Federal Gazette to give effect to a treaty (Section 44, 5). Therefore, declarations made by the executive arm of government will go through the legislative arm to be passed into law.
There are variations to judicial interpretation by the Supreme Court as interpreted by Section 12 (1) of the 1999 Constitution of the Federal Republic of Nigeria. A case study is one between General Sanni Abacha v. Gani Fawehinmi on supremacy of the Constitution over the African Charter on Human and Peoples Rights. Per Ogundare, JSC, based his decision on:
No doubt Cap.10 (The African Charter on Human and Peoples Rights (Ratification and (Enforcement) Act 1990) is a Statute with International flavour. Being so therefore, I would think that if there is a conflict between it and another Statute, its provision will prevail over those of that other Statute for the reason that it is presumed that the Legislature does not intend to breach an International obligation. To this extent, I agree with their Lordships of the court below that the Charter possesses ‘a greater vigour and strength’ than any other domestic Statute. But, that is not to say that the Charter is superior to the Constitution as erroneously…. Nor can its International flavour prevent the National Assembly or the Federal Military Government to remove it from our body of Municipal Laws by simply repealing Cap.10; nor also is the validity of another Statute necessarily affected by the mere fact that it violates the African Charter or any other Treaty for that matter.
Thus, the courts clearly stated that the international treaty would have superiority in cases in conflicts with domestic legislation as the Nigerian Constitution only applies where there is no conflict. This was also effective by the Court of Appeal in Chief J.E Oshevire v. British Caledonian Airways Ltd. However, the court held that international agreement embodied in a Covenant or Treaty is above Domestic Legislation and that any other domestic legislation in conflict with such Convention is void considering Oloruntoba Oju v. Dopamu, where the Supreme Court held that ‘any provision of an existing law in conflict with the provisions of the 1999 Constitution must be pronounced void to the extent of such inconsistency.’ This further implies the inconsistencies in the decisions of the courts and as such questions the need for domestication on an international treaty which becomes effective on been accented to by Nigeria doubting the position of the interpretation of the provisions of the Constitution. Thus, from the provision of section 1 of the Constitution which states the supremacy of the Constitution, it is clear that:
(1) This Constitution is supreme and its provisions shall have a binding force on all authorities and persons throughout the Federal Republic of Nigeria.
(2) The Federal Republic of Nigeria shall not be governed, nor shall any person or group of persons take control of the Government of Nigeria or any part thereof, except in accordance with the provisions of this Constitution.
(3) If any other law is inconsistent with the provisions of this Constitution, this Constitution shall prevail, and that other law shall to the extent of the inconsistency be void.
2.6.1 Theories on the Recognition and Reception of International Law
The reception of international laws includes the dualism and the monism theories discussed as:
Dualism: This is a case where an international law is considered separate from domestic law (Schutze, 2012) and views international law as between states and national law as the law as within a state. He stated that while international treaties are thus binding “on” states, they can’t be binding “in” states. Thus, the theory requires international law to be incorporated into national laws or the domestic realm so as to have the effect of law.
Monism: This theory is based on national laws derived from international laws and that a state makes international law a part of the national law.
Other theory related to the recognition and reception of international law is the relational theory which as analysed by Downie and Llewellyn is a core belief that the object/subject of attention should be understood in relation to others which allows the examination of the nexus between the TRIPS Agreement and the Nigerian laws. Its relevance to this study is in the determination of the relationship between the TRIPS Agreement and the Nigerian IP laws vis-a-vis its compliance with its WTO obligations.
The dualism theory is also essential to the study as the TRIPS Agreement as an international treaty can only be meaningful when implemented into law in various countries. The Nigerian legal structure favours the relational and dualism theories as the constitution includes an important element which ensures international treaties can only be effective if domesticated implying the National Assembly is solely responsible for the effect of law contemplated in the international instrument and a Declaration can be made by the minister in the Federal Gazette to give effect to a treaty.
2.7Compliance of the Nigerian Trade Mark Laws to the TRIPS Agreement.
It is important to assess the effect of the TRIPS Agreement in Nigeria to determine its compliance with the minimum standard expected as the implications of the content of the WTO/TRIPS Agreement are fundamental to all economies in the world. The TRIPS Agreement presents a declaration of the minimum standard of IPR to which all member countries of WTO have made a commitment to. Hence the issue of focus varies according to country in question and as a result, some of the focus areas for Nigeria are:
Term of Protection of Trade Marks
Trade marks can be used indefinitely though initial term of protection is seven years before renewal as long as requirements are met. Trade marks renewal is of importance in sustaining its existence as failure to oblige might lead to cancellation or removal from register. There was no provision to the term of a mark prior to the TRIPS Agreement as the duration of the mark was determined by individual nation. In Article 6 (1) of the Madrid Protocol, the international registration of a trade mark is an initial period of ten years subject to renewal for another ten years provided the conditions specified in article 7 and article 8 (2) and (7) of the Madrid Protocol are met. The term of protection of trade marks in Nigeria is within required standard of the TRIPS Agreement to the detriment of the trademarks registry which suffers a loss of income as a result of the long interval for renewal. The provision is regarded as not just compliant but also a TRIPS-plus provision.
Protection of Well-Known Marks
Business owner and local traders use the reputation of well-known marks hence the need for its protection. In the Paris Convention, Article 6bis of the Paris Convention on the protection of well-known trademarks provides that a notable authority in the country of registration may refuse, cancel or prohibit the use of a trademark that acts as a reproduction, an imitation, or a translation likely to cause confusion if the legislation permits or as requested by an interested party. The justification for the protection of well-known marks stems from the fact that such use results to unfair competition and to avoid conflicting marks being registered to the detriment of a well-known mark which might be prejudicial to the interest of the public. Article 6b also provides that the protection of unregistered marks qualifies as ‘well-known’ in a member nation as a trademark may be well-known in another country before registration and use in such countries due to advertisement in others.
A considered well-known trade mark is a function of factors such as the relevant sector of the public and knowledge obtained as a result of the promotion of the trademark in the Member State (WIPO, 2000) which suggests that a mark must be functional in a WTO Member state to be identified as well-known. A mark well-known in South Africa might not be regarded as such in Nigeria such as LUCKY STAR, a Pilchards well-known trade mark in South Africa, whose that trade mark and product is not readily available in the Nigerian market is regarded unknown in the Nigerian market and the relevant sector of the public can only have knowledge of it due to the promotion of its trademark to ensure protection in Nigeria.
Though there is no provision to well-known trade marks in Nigeria but they can be protected ‘defensive marks’ which implies a registered proprietor of a registered trademark may apply for the registration of the trademark in respect to any goods that is already registered in his name and other goods or classes considered as a defensive trade mark. The trademark is registered for goods which the proprietor has no intention to use and the purpose of this registration is to create a defensive perimeter around the registered trademark (Danish Patent and Trademark Office, 2010).
The defensive registration of well-known words gives well-known trade marks the required protection under the Paris Convention and the TRIPS but it is only applicable to goods, services covered under the law. The protection of the reputation of well-known marks covers well-known marks to non-identical and non-similar goods and services alike which the Nigerian Trade Marks Act grants a similar protection by the use of defensive trade mark. This form of registration of trade marks on different goods and other variations or similar marks on different goods may create a form of dilution of the mark which might not occur if marks are not used in commerce as failure to register in all available classes could lead to a loss of protection resulting in infringement of the trade mark.
Exclusive Trade Marks Right
The TRIPS Agreement provides for the maintenance of trademark registration on use and prohibits the denial of registration according to the nature of the goods or services. It doesn’t grant the owner of a trade mark the sole right to use the trademark but simply permit the use of trade marks by owners in relation to goods and services. It also prevents third parties without proprietor’s consent from using the trade mark on identical or similar signs on goods and bestows a positive right as is an exclusive right to use and not a right to prevent, which is a negative right. Rights are conferred in the protection of trade marks to set boundaries between the registered owners and other users article 10b(3) of the Paris Convention does not allow acts by establishment, the goods, or the industrial or commercial activities of a competitor likely to be deceptive or confusing. The TRIPS Agreement also provides a level of exclusive rights to trade mark owners against unauthorised third parties which must be documented in domestic legislations and this trademarks law as stated in Nigeria compliant with the TRIPS Agreement.
The Requirement of Use
The value of a trade mark is dependent on its use during the trade it’s registered for and can be maintained as such as stated in Article 19.1. A trade mark can be cancelled after five years or more of non-use without a genuine reason by the proprietor in respect to the goods or services it was registered for. However the use of a trade mark can also be employed by a registered user who apart from the proprietor of a trade mark is statutorily declared and authorised to act on his behalf and approved by the registrar in respect of all or any of the goods registered either with or without conditions or restrictions. This however poses a challenge in that all uses without the consent of the proprietor or that of the registered user are not beneficial.
As required by the TRIPS Agreementin the registration maintenance of a trade mark, another user is not recognised. This has proven very tasking in Nigerian markets involved in the heavy importation of goods as branded products with no affiliation either to sellers or store owners can lose their right to the mark in Nigeria if the trade mark is registered but not in use by the proprietor or registered user. Hence, the requirement of use of a trademark by another user for recognition as use for registration maintenance is not complied with as section 33 (3) of the Trade Marks Act recognises only the proprietor and the registered user.
Nature of the Goods or Services
Goods and services not excluded on terms of deception or scandalous are generally registered as indicated on Article 15.4 as well as article 7 of the Paris Convention. It further states that restriction of a product does not negate a trade mark’s registration as trade mark registrar does not have discretion concerning the grounds for refusal but the TRIPS Agreement, provides a minimum standard that members may add caveats that exclude trademarks that are deceptive, scandalous, immoral and generally contrary to public policy. As in the case of a trade mark to be registered for use on guns, registration may not be refused on the implications of killing.
Publication, Opposition and Cancellation of Trade Marks
It is standard practice for trade marks to be published before and after registration for viable reasons of either opposition or cancellation as required under the TRIPS Agreement. The Paris Convention of 1883 also provides that each member state is obliged to publish an official periodical journal with the reproduction of registered trademarks has been the practice in Nigeria since the inception of the first Trade Mark Ordinance of 1900 and still valid.
An opposition may be stated and lodges on publication in the Trade mark Journal within two months of acceptance and this is only done through the submission of a notice of intention to oppose to the registrar stating the reasons and must be done within the stipulated time as there is no opportunity for extension. In a case where this is not done within the time stated, it may result in the inclusion of identical marks on identical goods in the register. This provides the proprietor of a registered trade mark to instigate a court action against the offender for infringement or passing off and cancellation proceedings may be initiated in the Federal High Court as double registration is prohibited.
Licensing and Assignment
Article 21 of the TRIPS Agreement provides that members may determine conditions of licensing and assignment of trade marks while proprietors are allowed the right to assign trade mark with or without connection it’s registered as supported by The Act. In terms of transmissible, operation of law, licensing and testamentary disposition are included as supported by sections 33 and 34 of the Act which expressly provide that a trade mark may be used by a person other than the registered proprietor. Section 67 defines transmission as the operation of law, devolution on a representative of a deceased and any other mode of transfer not being assignment. Though licence is not primarily included but its reference applies to other modes of transfer presumably, all types of licences which may include exclusive licences, sole licences, nonexclusive licences and sub-licences.
A registered trade mark under the Nigerian law can be assigned to all goods it’s attached or limited to some but not all of the goods and services it’s assigned and an assignment used otherwise other than the goods it’s registered to is ineffective till requirements have been satisfied by the assignee. The Section 26 (3) of the Act provides an undue protection for an unregistered trade mark, as it allows it same privilege as the registered trade mark thereby providing conflicting conditions such as being; allowed same privilege as a registered trademark in transmitting business, assigned or transmitted as a registered trade mark at the same time and lastly, assigned and transmitted in respect of goods to which the unregistered trade mark is used in business as the registered. This ambiguity in the Act did not state if the unregistered trade mark relates to a prior right, a concurrent user or use by the proprietor before the registration of the trade mark. Thus, the Nigerian Act differs slightly from the TRIPS Agreement with its obligation under the Agreement not affected.
This is in respect to unjustified special requirements provided a trade mark in use with another either in a special form or in a way that negates its distinguishing function of goods or services. There are no special requirements to the use of a mark in the Nigerian act as Sections 9 and 10 only requires a trade mark to be registered to be distinctive as the provision does not permit measures that would hinder a mark from its capabilities. The Trade Mark Act is therefore compliant in this regard.
CHAPTER THREEIMPACT OF THE TRIPS AGREEMENT ON TRADEMARK LAW
This chapter focused the impact of the TRIPS Agreement on trade marks which is diverse considering the use of trade marks include with trading which effect can be seen in the areas discussed. It also discussed the flexibilities and modifications to the TRIPs Agrement.
3.1The TRIPS Agreement
3.2Impacts of the TRIPS Agreement on Trade mark law
3.2.1Market Access/Competitive Advantage
One of the challenges of international protection of marks is the alleged exploitation of consumers by famous brand names who rely on their financial prowess in creating a monopolistic market thereby preventing upcoming competition. Nigeria has until recently had an abundance of the Chinese market’s generalised products by calling all consumables a popular brand name which has been available for a while despite their own brand names. These examples vary from calling all seasoning cubes Maggi, detergents as called Omo or Surf, toothpaste is called Macleans or Close up, noodles as indomie all four wheel drive and sport utility vehicles (SUVs) are called Jeep.
The competitive advantage showcased by brand names in International class allows them to outdo others in developing and least developed countries as they possess capital and financial resources which aid product advertisement, attractive product packaging which push product sales and availability as well as easy distribution. Examples are availability of Coca-Cola and Pepsi- cola products as against those produced locally. The essence of packaging can be observed in the Nigerian market as products are usually identified and called according to description as a result of inability to pronounce product names and local dialect and a reflection of this is on Peak milk which is referred to as olope because palm tree on the product design.
Competitive advantage with highly human resources personnel in product enhancement for better identification and understanding of customers has created a big margin trade liberalisation which has products from Asia cheaply available while beneficial growth has reduced due to weak industrial and technological base because technical innovation and transfer have not been realised under the TRIPS Agreement.
3.2.2Foreign Direct Investment
Foreign direct investment (FDI) connotes investment by a foreign investor a local economy which has the capacity of attracting more foreign direct investment to developing countries through capable Intellectual Property Rights (IPRs). Nigeria experience a surge in her FDI inflow 2000-2007 with 70% of the sub regional total and 11% of Africa’s total. The overall FDI in 2011 increased by 36% to $16.1 billion to West Africa with Nigeria as the highest receipt of FDI flows of $8.92 billion and responsible for over one fifth of all flows to Africa, service projects by Western Goldfields (Canada) to construct a coal-fired power station in Nigeria for $15 billion. However, a decline by 5% to $16.8 billion was observed in 2012 due political insecurity and the weak global economy 333 In contrast, West African FDI flow declined by 5 per cent in 2012 to $16.8 billion, to a large extent because of decreasing flows to Nigeria due to political insecurity and the weak global economy with the oil sector receiving the most FDI in Nigeria.
The type of trademarks employed FDIs are dependent the type of FDI agreement between the direct investor and the enterprise or the country as the intent of a foreign direct investor is to extend home industry to another with an established trade name and trade mark for a head start as to host country’s startup. Its aim for export purposes may due to abundance and availability of human resource available in the host country which is beneficial to both parties with no obligation on foreign company to reinvest profits in host country’s economy.
The most available type of FDI in Nigeria is distributorship where a company or an individual is appointed as the distributor of a foreign company’s product though probably not given the right to register the trade mark as a licensee as the rights of a licensee is dependent on agreement between both parties. The distributor maybe allowed the right to register the trade mark as a sole distributor but in the case of several, the company assume its role a d registers the trade mark as used by the distributors.
In the promotion of international and sustainable economic integration, a policy framework vested in financial stability and economic development that improves societal welfare should be developed. Ayanwale reported on the impact of FDI on economic growth in developing countries and stated that the evidence of growth is not conclusive and the potential contribution of FDI to growth depends strictly on individual countries whose results may be positive, negative or insignificant considering the economic, institutional and technological circumstances of the recipient country. Maskus in his report stated that IPRs play an important role in a regulatory system, such as taxation, investment regulations, production incentives, trade policies, and competition rules regardless if it promotes economic growth considering the unusual socio-economic make-up of Nigeria.
His conclusion on IPRs and FD states:
The means by which IPRs influence FDI are complex and subtle. Furthermore, strong IPRs alone are not sufficient incentives for firms to invest in a country. If they were, recent FDI flows to developing economies would have gone mainly to sub-Saharan Africa and Eastern Europe. In contrast, China, Brazil, and other high-growth, large market developing economies with weak protection would not have attracted nearly as much FDI.
The role of FDI is reported probable with output dependent on the variables in the test equation and a growing trade mark system promotes FDI but recommends an improvement in law as empirical surveys show that trade liberalisation and FDI are complements.
A likely impact of the TRIPS Agreement on Developing Countries and Least Developing Countries is the cost implication of a functioning trade mark system. The cost of administration, enforcement by the judiciary, police, customs and the displacement of counterfeit products is a major concern not excluding cost of infrastructure. The costs of importing products viewed as better than indigenous counterparts due to attractive packaging but are likely contraband smuggled into Nigeria results to high import duties.
The Administration of trade marks law followed the British system that was manually implemented which was a waste of time, man power and available limited resources culminating in errors, unreliable data and retrieval systems until 2014. The introduction of the Intellectual Property Automated System (IPAS) created an automated processing of applications for the registration of trade marks patents and industrial designs. The effect is to improve the integrity, quality of examinations and applications emerging from Nigeria and provide an efficient, quicker, transparent and accountable system.
3.3Flexibilities under the TRIPS Agreement
Flexibilities are defined a range of rights, safeguards and options that WTO members can exploit in their implementation of the TRIPS Agreement. The flexibilities afforded by the TRIPS Agreement in relation to trade marks allows WTO members implement the minimum standards required though the TRIPS Agreement provides one but it does not require the harmonisation of the laws of WTO member states.
The first article on trade marks in the TRIPS Agreement allows each country the choice of statutory formulation depending on its level of trade mark system development based on the following:
Article 15.1 provides a definition of a mark that is non-exhaustive. It implies that a mark may be either “capable of distinguishing” or “distinctiveness acquired through use” making registration of either type protectable. It means that the list of signs represents only a likely subject matter granted for mark protection and members may provide a more comprehensive list of signs and as well exclude the requirement of visually perceptible’.
Article 15.2 provides WTO members the freedom to develop their rules for refusing registration of a trade mark so long it does not exceed the provisions of article 6 (1) of the Paris Convention. Article 15.3 implies the use of the use of the word “may” shows that WTO members are permitted not to make registration of a trade mark dependent on use article 19.1 registrations may only be cancelled after continuous period of at least three years of non-use which is far below the five-year period provided for in the legislations of most Commonwealth countries such as Nigeria, India and South Africa
The flexibility under article 16 allows WTO members determine the extent of exclusive rights in their domestic laws by giving the proprietor of a trade mark the right to deal with the trade mark as its absolute owner including its use as personal property. The formulation of laws to accommodate the flexibilities is incumbent on each WTO such as to benefit society and cater for public policy. There are foreseen challenges that can restrain effective implementation of these flexibilities, such as a lack of technical legal expertise and insufficient technical and infrastructural capacity. It is imperative to examine the ways these challenges apply to the Nigerian situation as though, there is no lack in technical legal expertise, neither is there insufficient infrastructural capacity to put in place a legal frame work that complies with the TRIPS Agreement while applying the advantage of the flexibilities. Hence, the probable challenge of implementation is the lack of will among policy makers and awareness of the benefits of IP protection and the ensuing economic and social damage that inadequate protection can cause.
3.4Possible Modifications to the Trade Marks Act by TRIPS Agreement
It is important to apprise and seek modifications as the Trade Marks Act requires a general overhaul and allow more comprehensive and better arranged law.
The introduction of automated registration to the trademarks registry as a major reform is one of the due processes required to make provision for an online trade mark journal and data base with all previously published trade mark journals uploaded for search purposes. In achieving a functional and sustainable system, a development life-cycle is required. The application for opposition should also be amended with option for extension as opposed to the two months’ time frame which could be helpful to both parties by granting the opposing party time without involving the court and as well prevent unnecessary double registration. A correction can be effected by the minister as the Act allows him regulate the practice under the Act 408 and extend the time limit required in the Act for the performance of any act at the discretion of the Registrar in as much as the Regulations are published in the Federal Gazette.
3.4.2Defensive Registration/Well-known Marks
While well-known marks may be protected under the Act by defensive registration of the mark, it is of great importance to also specifically protect well-known marks not as defensive marks as defensive registration unnecessarily clogs the trade marks data base which can cause clutter especially in an automated system of registration. Trade mark clutter is described as registers of a large number of unused or broad trade marks which costs of creating and registering new marks substantially increase for other applicants thereby constituting an obstacle to new marks.
This is characterised a housekeeping problem as related to the Nigerian situation requires amendment to its laws in the protection of well-known marks of Nigerian proprietors and other countries to which Nigeria has treaty obligation. The extent of use in relevant sector and its promotion of trade mark determine how well a mark will be known.
The Nigerian law provides the possible registration of marks proposed to be used as there is no clarification an intended mark to be used and that for commerce which is reverse in other countries. A proposed mark to be used does not get registered until it’s in use and has no existing rights till it is used in commerce. The trade system has been abused by proprietors who register to forestall a foreign mark owner seeking if trade mark proposed to be used available for registration and establish the priority.
It is advisable to encourage small medium enterprises (SMEs) in Nigeria to practise reforming intent reduce conflicts emanating from the number of trade marks registered and protected as done in the United States where proposed marks to be used are allowed partial registration. Registration should only occur with a declaration by submitting some documentation of the mark is in use, followed by evidence of the manner of its use. Such documents should be submitted within a specified period, however, an extension of time may be allowed subject to the satisfaction of the examining officer.
Licensing is known to facilitate commercialisation of IP and allows for the expansion of business into new markets and adequate for profitable use of intellectual property in a global economy
Licensing is categorised as a part of other transmissible understandings in the Nigerian law which can be done by the trade mark proprietor. An accurate definition is important to support effective licensing contracts to help Nigeria benefit from the manufacturing capacity of other countries through trade mark licensing by partnering with other companies to manufacture, distribute, sell and market their products. This would help in identification of goods origin coming into the country, thereby eliminating counterfeit and substandard goods.
Consumers usually are attracted to well-known brands and can help increase the FDI and make genuine brands available at affordable prices if licences are obtained from the known brands. Licensing provides a favourable condition for licensor and brand owner; the licensee and manufacturer or distributor but important to develop a well-drafted and concise provision on licensing.
CHAPTER FOURSUMMARY, RECOMMENDATIONS AND CONCLUSION
This chapter emphasized on the Summary, Recommendations and Conclusion of the above Study.
Trade marks are unique business names that grow and build value and reputation for a product and business based on quality resulting in consumer satisfaction and influences continuous patronization. A purchasing power is due to low standard and cheap quality products available to low income consumers in developing countries and reverse for consumers who are on an upper or middle level income. Trade marks evolve into brands that become important company assets and, therefore, require protection by the law.
With regards to the question of whether the Nigerian Trade Marks Act complies with the TRIPS Agreement which was investigated, it is submitted, to a large extent that the Trade Marks Act fulfils a majority of the required provisions on trade marks that were examined with regard to the TRIPS Agreement as the reviews on the legal framework and explores compliance of the Act with the 20 year old TRIPS Agreement considering the modifications to trade mark protection at the international level, as well as domestically in Nigerian commerce and trade. It was observed that the legal confines required to deal with the evolving issues in trade mark protection are in place and several flexibilities that can be incorporated into the Trade Marks Act to the benefit of the country. This study is made up of four (4) chapters which are as follows;
The First chapter (1) is made up of Introduction; Having the Background of the Study; Statement of the Problem, Research Questions, Objective of the Study, Scope of the Study, Limitation to the Study and Organization of the Study. The second chapter (2) consists of Literature Reviews and Theoretical Framework. The Third chapter (3) Impact of the TRIPs Agreement on Trade mark laws in Nigeria and some modifications. Finally Chapter four (4) is made up of Summary, Recommendation and Conclusion.
Some of the recommendations proposed due to concerns to the Trade Marks Act and the inclusion of the necessary flexibilities as provided for the TRIPS Agreement can be addressed in as follows:
The application of the Paris Convention in the Nigerian law requires a declaration by the Minister of Trade and Investment in a Federal Gazette listing the Convention Countries as the declaration will make it possible for Nigerian trade mark owners to claim priority in convention countries, as well as opening the trade mark registry to applications from other convention Countries.
Trade marks are restricted to traditional form in the Act excluding variables such as packaging, shape, colour, sound or scent from its definition. It is recommended that the protectable subject matter of a trade mark be defined in terms of graphical representation and visual perceptibility as these form a critical foundation for evaluating and determining the appearance of a trade mark.
It is also recommended that the protection of well known gets legal recognition as there are many local brand names that have become well-known such as Gala, Chivita, and Dangote. A review of the Trade marks Act will give proper protection to well-known trade and also should include marks used on the same or similar goods and services and on unrelated goods and services as well, as requested in the TRIPS Agreement.
The two months time frame to opposition should be reviewed with extension made to accommodate mutual agreement to settle among parties without involving the court but the registrar who can the certify the justification of the extension for good cause and included in the Trade Marks Act as a distinct provision and not left to the discretion of the Minister.
A closer examination reveals at the trade marks legal framework shows challenges trade marks law not reviewed despite the expansion, stagnancy will always affect the market. There is a need for trade mark legislation with the influx of various trade marks for health, security and socio economic safeguards in Nigeria with its high number of consumers. Challenges were observed in respect to enforcing the Paris Convention with an absence of an express provision for the protection of well-known marks and the proposed use required by the trade marks law as a vital aspect of a trade mark must be clarified by putting a system in place to determine such use.
It is also important that the process of registration of trade marks on a trade mark’s owner should be reviewed by the legislature to enable trade mark evaluation and accuracy in light of the former process and the current effort to computerise. In this study it is observed although with constraints, that the legal boundaries are in place to deal with the evolving issues in trade mark protection and the amendment of the law should take into cognisance the conditions in Nigeria when developing a model that suits the country.
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Table of Cases
Elebute ; Another v Olugbenga Ogunkua 1990-1997 3 IPLR 1.
General Sanni Abacha v. Gani FawehinmiOloruntobaOju v. DopamuChief J.E Oshevire v. British Caledonian Airways Ltd.
Omnia (Nig.) Ltd v Dyke Trade Ltd 2007
A.B Chami ; Co Ltd. v W.J. Bush ;Company Ltd. (1996) 3I.P.LR. 284, FHC/K/CS/115/95.
Eli Lilly ; Co.v Salenab Nigeria Ltd FHC/L/CS/534/99.