Court restrains Toyota from trading on Lexus trademark

JUSTICE Ibrahim Buba of a Federal High Court, Lagos, has restrained Toyota Motor Corporation of Japan from trading with any Lexus trademark for goods in classes nine and 11, which are confusingly similar to Subaya Metalware Nigeria Limited’s electrical products.

  Subaya Metalware Nigeria currently holds a valid and subsisting certificate of trademark registration since 1996 and 2008. The court order subsists  pending the hearing of the motion on notice.

  The order was granted sequel to a motion exparte filed by Peter Shobiye, Counsel to the Plaintiff (Subaya Metalware Nigeria Limited) against Toyota Motor Corporation (First Defendant) and Registrar of Trade Marks (Second Defendant)  and supported by a 26 paragraph affidavit deposed to by Peng Kwong Sam, the General Manager of Messrs Subaya Metalware Nigeria Limited.

  In the order, a copy of which was made available to The Guardian, Justice Buba also restrained Registrar of Trade Marks (Second Defendant in the suit) and its officials from issuing certificate of trademark registration to Toyota Motor Corporation in respect of application number F/TM/O/2013/4233 and F/TM/O/2013/4236 in classes nine and 11 respectively, as a trademark by Toyota, which is likely to infringe, erode, pass off and be confusingly similar with the plaintiff’s prior registered trademarks.

  The court further granted the plaintiff permission to publish the order in two national newspapers and adjourned till March 24, 2015, for hearing of the motion on notice.

  Also in another application, the Judge also granted the plaintiff leave to issue writ of summons and all other process in the suit by sending same through registered courier on the first defendant, whose address for service is at Toyota Cho, Toyota-Shi, Aichi- Ken, Japan, outside the jurisdiction of the court.

  In the affidavit, Sam deposed that the trademark Lexus is the plaintiff’s lawful trademark in Nigeria, which it uses in respect of its electrical products like fans, as well as for a variety of other electric products.

  He contended that the trademark Lexus in classes nine and 11 is a brand, which has been registered by the plaintiff for over 18 years and been marketed, promoted and sold by the plaintiff in Nigeria.

  The deponent further stated that the trademark is a well-known and popular brand with the Nigerian consumers and is strongly associated with electrical products, particularly household products like fans and that it has always been easily recognized as a household name.

  According to him, the plaintiff has over the years built a robust goodwill in the Nigerian market place and has expended huge amount of money over the years for the marketing and promotions of its Lexus Fans and Devices, Lexus Ultimate (Stylised), and “Lexus Diamond & Device” brand of products. 

  He also stated that the plaintiff has invested so much into the quality and visibility of the Lexus range of electrical products, which has made Lexus a household name.

  In Sam’s affidavit, he deposed that the first defendant has through its agent, Jackson, Etti and Edu, Lagos State, applied and publication made in the Nigeria Online Trademarks Journal Volume 1 No. 2, dated August 14, 2014, to register “Lexus & Device” application Nos F/TM/O/2013/4233 and F/TM/O/2013/4236 in classes nine and 11 respectively.

  He therefore stated that the second defendant’s act of accepting and publishing Toyota’s Lexus and Device trademark application numbers F/TM/O/2013/4233 and F/TM/O/2013/4236 respectively or any other application number whatsoever in classes nine and 11 was an error.