The Jurisdiction of the Federal High court In Cases Pertaining To Passing Off Arising From An Unregistered Trademark.
The Jurisdiction of the Federal High court In Cases Pertaining To Passing Off Arising From An Unregistered Trademark.
by Adejobi Deborah in Case Summary
Trademarks mean a mark (device, brand, heading, label, words, letter, numeral or any combination thereof) used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as a registered user to use the mark whether with or without any indication of the identity of the person. Under the Nigerian jurisprudence, a trademark is grouped as registered and unregistered.
The Federal High Court is vested with jurisdiction under the Constitution to hear and determine civil matters bothering on any federal enactment relating to copyright, patent, designs, trademarks and passing-off, industrial design merchandise marks etc. Flowing from the extant jurisdiction of the Federal High Court on trademark, there has been contention about whether the Federal High Court is conferred with jurisdiction to determine matters bordering on passing off arising from unregistered trademarks. This article seeks to resolve the conflicting position of whether the jurisdiction of the Federal High Court in respect of claims arising from unregistered marks in light of the recent decisions of the Supreme Court.
Registered trademarks are trademarks registered either under Part A or Part B of the trademark register deposited at the trademark registry while unregistered marks are marks not registered at the trademark registry this will also include trademarks undergoing registration because a trademark is only deemed registered when it has been entered in the trademark register. However, it suffices to state that although unregistered trademarks are protected to a measure statutorily such as suing for passing off as we shall see shortly in this article which is protective of the goodwill of the owner to a degree, however, this protection is not all-encompassing as a proprietor of an unregistered trademark cannot sue for infringement of the said trademark because the mark is not registered.
The concept of passing off is a common concept in Nigerian jurisprudence. The expression “pass off” is an ordinary expression and when it is said that something is passed off as something, it means no more than that something is falsely represented as something.
An action for passing-off is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which has acquired a distinctive reputation in the market as referring to the goods belonging to or produced by that person only. It is often regarded as a common law remedy and the plaintiff need not establish a title for the same. What is simply required to be shown is that the goods have distinctive features and the distinctive features have been imitated by the person infringing.
Under the Trademark Act, Cap T13, Laws of the Federation of Nigeria 2004, the concept of passing off was recognized in Section 3, providing as follows:
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. (Italics is mine)
It, therefore, follows that passing off in Nigeria has moved from being a common law remedy simplicita to being a statutory remedy, thereby giving the proprietor of both registered and unregistered mark the right to benefit from this provision however there now lies the pertinent question of whether the Federal High court is the appropriate Court which the proprietor of an unregistered mark or a mark in the process of registration (which is still regarded as an unregistered mark) should approach to institute an action for passing off against a person infringing on his trademark?
EXAMINING THE JURISDICTION OF THE FEDERAL HIGH COURT
Section 251 of the Constitution of the Federal Republic of Nigeria 1999 (as amended) which provides for matters within the jurisdiction of the Federal High Court provides that:
(1) Notwithstanding anything to the contained in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil cases and matters –(f) any Federal enactment relating to copyright, patent, designs, trademarks and passing-off, industrial designs and merchandise marks, business names, commercial and industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards;
It is clear from the above that the Federal High Court has the exclusive jurisdiction to determine matters bordering on passing off however the grey area in the jurisdiction of the Federal High Court in hearing and determining to pass off in relation to an unregistered mark including cases wherein the trademark was registered in the course of the suit. The Supreme Court had in three (3) landmark cases interpreted the provisions of Section 251
(f) of the 1999 Constitution of Nigeria and the question of whether or not the Federal High Court can validly determine a matter of passing off in relation to an unregistered trademark.
PATKUM INDUSTRIES LTD V. NIGER SHOES MANUFACTURE LTD
It was established in this case relying on Section 3 of the Trademarks Act 1965, Section 230 (1)(f) of the 1979 Constitution (now section 251(f) of the Constitution of the Federal Republic of Nigeria 1999) and Section 7(1)(c)(ii) of the Federal High Court Act, 1973 that an action for infringement of trademark and an action for passing off arising from the infringement of the plaintiff’s registered trademark can be brought together in an action by the Plaintiff. This will only be for the benefit of proprietors who has their trademarks registered in the trademarks Registry. The question of passing off arising from the infringement of an unregistered trademark was not considered in detail.
AYMAN ENTERPRISES LIMITED V. AKUMA INDUSTRIES LIMITED & 3 ORS
In this case, Plaintiff at the Federal High Court (Appellant) sued Defendant (Respondent)for infringing its trademark “New Queens” on its wigs and hair attachment by Defendant using the trademark “Original Queens” on wigs and hair attachment likewise. Also, the plaintiff sued the Defendant praying the court for perpetual injunction restraining the defendant from passing off or assisting others to pass off their own wigs and hair attachment as that of the plaintiff because the name “New Queens” and “Original Queens” were similar, the distinctive get-up, logo, label, design used by the Defendant were identical in the salient details to that of the Plaintiff. Defendant argued that the Federal High Court lacked jurisdiction to determine the matter because the claim for passing off was in respect of an unregistered trademark. The trademark of the plaintiff and Defendant namely: ‘New Queens’ and ‘Original Queens’ were not registered, the Parties only had acceptance and acknowledgement forms.
In determining the question of whether the Federal High Court has jurisdiction in respect of passing off arising from an unregistered trademark, the Supreme Court relying on Patkum’s case, Section 230 (1) of 1979 Constitution (now Section 251(1) 1999 constitution) and Section 7 federal High Court Act 1973 held that the Federal High Court will only have jurisdiction to entertain any action for passing-off arising from the infringement of a registered trademark and the action must have arisen in relation to a federal enactment. In this case, the Supreme Court had decided that a claim arising from an unregistered trademark should be filed at the High Court as such matters are outside the jurisdiction of the Federal High Court.
OMNIA (NIG) LTD V. DYKTRADE LIMITED
In this case, the Plaintiff/Respondent initiated a trading venture with an Italian Company to manufacture grinding stones for the washing of terrazzo floors with the trademark “super rocket”. A few years later, sometime in December 1992, the defendant (Appellant)imported consignments of grinding stones branded “super rocket” and distributed and sold them. The plaintiff sued the defendant for infringement of Plaintiff’s registered trademark and for the defendant passing off its grinding stones as and for the Plaintiff’s products. In this case, at the point of instituting the action, the plaintiff had not registered the trademark but in the course of the suit before judgement, the trademark was registered.
The Supreme Court considered Section 251 (1) (f), Section 315 of the 1999 constitution and section 3 of the Trade Marks Act. The Supreme Court also distinguished the Ayman’s case(supra) from the facts of this case and stated that the statutory authorities relied on in Ayman’scase namely Section 7 of the Federal High Court had been amended by the Federal High Court(Amendment) Decree No.60 of 1991, thereof making Section 7 of the Federal High Court Act of no effect and the provisions of Section 230 (1) of the 1979 Constitution had been amended to section 251 of the 1999 constitution, for which passing off was included.
This question was laid to rest in the most recent Supreme Court decision The Supreme Court departed from its decision in the Ayman Case and held that the Federal High Court has jurisdiction to hear and determine the claim for passing off whether or not the claim arises from the infringement of a registered or unregistered mark.
RECOMMENDATION AND CONCLUSION
The writer agrees and aligns on all points with the recent decision of the Supreme Court Omnia v. Dyktrade Ltd Supra in the interpretation of the provisions of Section 251 1(f) of the 1999 constitution and section 3 of a trademark that the Federal High Court has jurisdiction to entertain matters pertaining to passing off arising from a registered and unregistered trademark. The fulcrum of this argument borders on a trite principle of law that the express mention of one thing in a statutory provision is the exclusion of those not mentioned8, hence the provisions of the constitution states expressly “copyright, patent, designs, trademarks and passing-off, industrial designs and merchandise marks, business names, commercial and industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards” as matters upon which the Federal High Court has exclusive jurisdiction without mentioning registered or unregistered trademark. Therefore, the above provision as regards passing off should not be read to include any other elements such as registered or unregistered trademark as this is expressly excluded.
Also, the Federal High Court declining jurisdiction on passing off matters arising from unregistered trademark will amount to a waste of time of the litigant and the Court as the Court would have gone ahead to hear the basis of the matter before arriving at a conclusion that it has no jurisdiction. Meanwhile, the litigant would have wasted years in the Federal High Court before going back to begin from the scratch at the High Court whilst the infringement is still ongoing. Hence, the Federal High Court following the decision of the Supreme Court in OmniaSupra will save the time of both the Court and the litigant in the interest of justice by simply proceeding to hear and determine the matters on passing off arising from unregistered trademark from the inception and determine the matter accordingly. This should be done bearing in mind that justice must not only be done but must be seen to be manifestly done.
Finally, it is the writer’s humble opinion that the Federal High Court should abide by the trend of the Supreme Court upon this question because it is a known fact that the Federal High Court Judges are more experienced in matters pertaining to intellectual property rights including passing off because it is an issue the judges deal with on a daily basis hence the Federal high court will be the proper court to effectively and efficiently determine the question of whether there has been passing off in respect of a trademark either registered or unregistered. In Conclusion, it is my humble view that the recent decision of the Supreme Court on the subject of the jurisdiction of the Federal High in relation to passing off arising from an unregistered trademark is remarkable and should be adhered to as a precedent by the lower Courts.