As businesses strive to distinguish themselves in the marketplace, they face increasing risk of deceptive and unfair trade practices (knowingly or unknowingly) by imposters masquerading as competitors. Where business brand is properly protected, the integrity of the market will not only be guaranteed but also more revenue will undoubtedly accrue to its owners. Hence, brand protection in Nigeria is no longer a cost center but a profit centre.
The intellectual property law in Nigeria clearly offers protection to registered trade mark. However, owners of unregistered trade mark are not without some remedies if their brand has acquired some goodwill in the course of doing business. At common law, a brand owner may sue for tort of passing off in the event of any infringement even if such brand is not a registered trademark.
Passing off, originally a common law tort, is designed to protect a persons business reputation and goodwill from unfair trade practices and sharp practices by imposters or impersonators. Please note that the Supreme Court in Patkun Industries Ltd v. Niger Shoes Ltd. (1998) 5 NWLR (Pt. 93) 138 held that passing off is now a statutory right (and not just a common law right), having been promulgated in section 3 of the Trade Marks Act, 1965. What the foregoing means is that the Nigerian law recognises the right of a business owner to sue for passing off if any imposter attempts to unlawfully benefit from a brand built on the sweat or labour of the brand owner.
In the case of U.K. Tobacco Co. Ltd v. Carreras Ltd. (1931) 16 N.L.R. 1 an action for passing off was successfully brought by the owner of Bandmaster cigarette to restrain a competitor, the importer of Barrister cigarette on the ground that the consumers were likely to be confused and deceived into believing that both products were of the same origin.
I know of no authority, and I can see no principle, which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the plaintiff or are carrying on a branch of the plaintiffs business and thereafter held: That is the danger which can reasonably be foreseen in the present case, namely that people will be misled into thinking that Nigeria Chemists are a branch of, or in some way connected with, Niger Chemists. It is a confusion which leads to deception.
Passing off occurs when a person engages in advertising and selling the goods of another business owner as though the goods are his own, thus wrongfully profits from the goodwill and reputation of that business owner. See British American Tobacco & v Intl Tobacco & 2 ors (2006) 5 IPLR 290. In the case of Trebor Nigeria Limited v. Associated Industries Ltd. (1972) All NLR 468, the plaintiffs action for passing- off succeeded because the defendant packaged and marketed its good in a manner that resembled those of the plaintiff.
(ii) Goodwill: A party seeking to sue for passing off must show that his business has acquired some goodwill or reputation that makes his product or service highly recommended, reliable or preferable to the consumers. The false representation is calculated to injure (including to benefit from) the goodwill of a business reputation. As a result of the reputation of the goods or services, there is goodwill attached to the trademark. In British American Tobacco & v Intl Tobacco & 2 Ors. (supra), the court held that in proving passing off, proof of reputation“goodwill is necessary.
It is not enough to show that there is a resemblance of goods; the plaintiff has to further prove a reputation of goodwill attached to the goods under the Trade Mark/Name sufficient for members of the public to be misled by the defendants conduct into thinking that they are purchasing the goods of the plaintiff.
To be continued tomorrow.
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