Damage: The plaintiff has suffered actual damage or is likely to suffer damage to its business or goodwill. Loss of potential earnings is an actionable ground for legal action against the infringer. See CPL Industries Ltd v Glaxo Smithkline & Anor (supra). What remedies are available to a brand owner whose brand is being/has been passed off?

As the general maxim says: where there is a wrong, there exists a remedy. The remedies available to an aggrieved brand owner are as follows:
Damages/compensation: A brand owner can sue for damages. The amount to be awarded is a question of facts and evidence led on the size of the market, the scale of the false representation, the reputation of the brand and other factors. Injunction: A brand owner can obtain an order of injunction restraining an infringer from continuing with the infringing acts. The order is available at interim, interlocutory and post judgment stages.

Seek an account for profit; or for loss of sales. An order compelling the infringer to render account is an essential remedy that helps in damages or compensation calculation in order to ensure that all profits unlawfully made from the unlawful trade practices are fully disgorged.

Destruction of the infringing goods on the order of court.
Which court has jurisdiction in passing off actions Or where can a brand owner sue for infringement?

The Federal High Court has exclusive jurisdiction over actions for passing off. According to Section 251(1)(f) of the Constitution of the Federal Republic of Nigeria, 1999 (as amended), the Federal High Court has exclusive jurisdiction over any Federal enactment relating to copyright, patent, designs, trademarks and passing-off, industrial designs and merchandise marks.

Section 3 of the Trademarks Act provides thus:
“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.”

Also, Section 7 of the Federal High Court Act amended by the Federal High Court (Amendment) Decree No. 60 of 1991 reaffirms the jurisdiction of the Federal High Court in respect of any “civil causes and matters, arising from any enactment relating to copyright, patents, designs, trademarks and passing-off, industrial designs…”

A combined reading of the above sections establishes that the Federal High Court has jurisdiction over passing off actions whether arising from infringement of a registered trademark or unregistered trademark.

In Omnia Nigeria Limited v Dyktrade Limited (2007) 15 NWLR (Pt. 1058) 576, the Supreme Court held that that the Federal High Court has jurisdiction to hear and determine a claim for passing off, whether or not that claim arises from the infringement of a registered or unregistered trade mark.

Please note that for an unregistered trademark, a plaintiff must prove that though the trademark is unregistered, it has acquired a degree of market reputation in the use of the mark in relation to its goods or business. To establish this market reputation, a plaintiff may need to show its sales or track records, business associates, and marketing and advertisement agencies that it deals with and for how long. See also Soul Publications Limited v Sweet Hearts Publications & A nor (1997) 4 IPLR 42.

Is a claim for passing off the same as a trademark infringement claim?
Technically, no. Though closely akin to one another, they are not the same. While the objective of an action for passing off is to protect the goodwill, reputation or business acquired in the use of a trademark, an action for infringement of trademark is to protect the mark itself.. In practice, however, passing off and trade mark infringement are usually joined together as different causes of action in a suit. In Exxon Corporation v. Exxon Nominees Ltd (1989) 2 IPLR 432, Belgore C.J., in explaining the difference between passing off and trademark infringement, stated thus:
“…, the difference between passing-off per se and breach of Trade Mark is that the former is a common law right which has been violated while the latter is a statutory right being breached.” Though both are now statutory rights in the light of the promulgation of Section 3 of the Trade Marks Act 1965 as interpreted in the decision of the Supreme Court in Patkun Industries Ltd v. Niger Shoes Ltd. (1998) 5 NWLR (Pt. 93) 138 where it was held that “passing off” is now a statutory right.

In Maclver & Co. Ltd v. Compagnie Francaise de L’Afrique Occidentale (1917) 1 IPLR 1, the Appellants registered a trademark to which they associated a cask being rolled along the ground by one man in respect of goods in class No. 47. The Respondents sought to register a mark in the same Class No. 47, in the form of a cask being coopered by three (3) coopers.

The Appellants sued the Respondents for infringement of its trademark and passing off of its business. The courts dismissed the Appellants’ action for infringement because of a lack of similarity in the two marks but found for passing off. The Full Court held that the Respondent’s trademark was calculated to deceive considering the illiterate population of the region who could not, even after a minute explanation, pick out the details in both. Consequently, the Court ordered that the Respondent’s application to register his trademark be refused. Webber J. Stated that
“Since the essential feature of both marks was cask, the Defendant’s trademark was calculated to deceive and pass off goods”.
The decision above shows that where action for infringement of trademark may fail on a set of facts, an action for passing off may succeed on the same set of facts depending on goodwill acquired from the reputation of the goods in the use of the trademark.

What defences are available to an infringer?
Functional design or package:
There is no monopoly a product design or package is common in a particular industry. For instance, where a functional design or packaging of a good is common to the trade of a plaintiff, a defendant can rely on a common design or packaging unique to the trade or industry as a defence for passing off. In J.B Williams Co v Bronnley & Co Ltd (1909) 26 RPC 765 CA, the plaintiff brought an action to restrain the defendant from using the normal shape of a shaving stick container to package his brand of shaving stick.

The trial court held that the shape and colour of the box was common to the trade and that the plaintiffs had established no monopoly regarding them.
Mere descriptive name of the product
Where the name or mark is a mere descriptive name of a product, a claim for passing off will not succeed. In British Vacuum Cleaner Co v. New Vacuum Cleaner Co (1907) 2 Ch 312, the court held that the word “Vacuum Cleaner” could not be trademarked as it only describes an instrument.

Consent of the Brand Owner
Consent such as a licence or franchise given to the defendant by the plaintiff to produce and or market the product is a defence against an action for passing off. Please note that where there is a dispute between two distributors of a product, the right of action may be in breach of contract rather than the tort of passing off.
Concluded
Omosehin, Esq. is the Managing Principal at Koriat & Co. Lagos.