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Conducting opposition proceedings at Nigeria’s Trade Mark Registry: Jurisdictional and adjunct issues

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Barrister JudeDavid Mbamalu

Abstract
It is illegal, the prevalent practice of officers of the Trade Marks registry to adjudicate and determine Opposition proceedings notwithstanding that the Registrar of Trade Marks is the only recognized tribunal in law to conduct such proceedings. This practice exacerbates the necessity for legislative intervention, amending the unarguably obsolete Trade Mark Act to inter alia provide for setting up an appropriate tribunal to preside over Opposition proceedings at the registry in line with global industry best practice.
When the complaint against trademark infringement, is predicated on an unregistered trade mark, the cause of action sounds in passing off, and an attorney ought not deploy Opposition proceedings in the trade mark registry as a short cut to pursue such claims when section 251(1)(f) of the Nigerian Constitution specifically reposed such jurisdiction on the Federal High Court.

Introduction
The exiguous article seeks to answer, (a) whether the Registrar’s power to conduct and determine opposition proceedings is delegable under the law, to any officer in the Trade Mark Registry, (b) whether the Notice of opposition as a cognomen confers widish powers on the Registrar to entertain complaints of an opposer without a certificate of registration of a mark sought to be protected and (c) judicious adjudication of Opposition proceedings. I venture into resolution of these issues through the prism of the decision of the Federal High Court rendered whilst exercising its judicial review jurisdiction in the case of Caporn Industries Limited v Registrar of Trademark & Sunmark Limited
Objection to registration of a trade mark, as an incident of registration, is provided for under section 20 of Trade Mark Act, which enables an opposer of an application for trademark registration to send an opposition to the registrar within two months from the date of publication of the application sought to be opposed. The opposition proceedings are required to be heard by the Registrar after which a decision is rendered.

The tripod issues donated for exercise in this treatise are; (a) whether the Registrar’s power to conduct and determine opposition proceedings is delegable under the law, to any officer in the Trade Mark Registry, (b) whether the Notice of opposition as a cognomen confers widish powers on the Registrar to entertain complaints of an opposer without a certificate of registration of a mark sought to be protected and (c) judicious adjudication of Opposition proceedings.

I venture into resolution of these issues through the prism of the decision of the Federal High Court rendered whilst exercising its judicial review jurisdiction in the case of Caporn Industries Limited v Registrar of Trademark & Sunmark Limited.

Statement of Facts
Upon the publication in the Trade Mark journal, of Caporn Industries Limited’s (hereinafter called Caporn) application number F/TM/2011/17678; Golden Heaven in class 32, Sunmark Limited (hereinafter called the opposer) which claimed to be the owner of trademark Pure Heaven opposed the application on the grounds inter alia that:

The opposer is the world-wide proprietor of the trade mark; Pure Heaven and has obtained registration in several countries around the world in various classes including class 32.

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The opposer has pending application for registration in respect of the following trademarks: F/TM/2011/08577; Pure Heaven [out of this world] in class 32 and F/TM/2012/02455; Pure Heaven in class 33.

Caporn joined issues with the opposer, premised on the fact that the opposer’s trade mark; Pure Heaven was not already on the register in Nigeria and so lacked the necessary prerequisite to constitute a ground for rejecting the registration of Golden Heaven. Further that the criterion to test the similarity between trademarks is to show that “the mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion…”

Caporn also contended that the opposer being as yet destitute of any intellectual property right under the Trade Marks Act in Nigeria, with respect to Pure Heaven mark or any variant thereof, the Registrar of Trade Mark lacked competence to adjudicate over any claim based on the proprietorship of that mark. Caporn’s defence did not wash with the Tribunal which cumulated the provisions of sections 19(1), 20(1) & 46 and Regulation 56(1) of the Trade Mark Act to find that “the registrar has power to decide on any matter arising from such an application inclusive of Opposition matters.”

Aside this Ruling being perverse, in that the opposer’s Pure Heaven was not yet registered in Nigeria, though, like Caporn’s Golden Heaven, undergoing registration, and have been accepted for registration, the adjudicator was not the Registrar of Trademark but conducted and determined the opposition on behalf of the Registrar.

Thus convinced of the incompetence of the Registrar to conduct Opposition proceedings initiated by an opposer whose intellectual property was yet to be clothed with registration in the Trade Mark registry; oppugned by the usurpation by an officer in the Trade Mark registry, of statutory powers of the Registrar of Trade Mark, to conduct Opposition proceeding, Caporn approached the Federal High Court for judicial review of the decision rendered at the Trade Mark Registry.

The solitary issue donated to the Federal High Court was whether the proceedings and Ruling of B.A. Kittikaa (on behalf of the Registrar) on 16/12/2014, in the Opposition to the Application no. F/TM/2011/17678 before the Registrar of Trade Mark was the Ruling of the Registrar and exercised with requisite jurisdiction?

Federal High Court Ruling
The Federal High Court, per Nyako J, resolved the issue as follows:

The Trade Marks Act, sections 1 and 20(4) specifically gives power to the Registrar of Trade Mark to carry out such functions under the direction of the Minister except the function of taking decision which can be subject of appeal to the court.

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Section 20(4) gives the Registrar direction as to how to conduct the proceedings on hearing of ownership of a trade mark. The question here is the proceeding was conducted and concluded by one Mr B. A. Kittikaa who is said to be a principal Assistant Registrar. This singular act needs to be determined first. Can a person who was donated a power delegate such power? The simple answer is No. You cannot delegate what was donated to you. This position is encapsulated by the maxim; delegatus non potest delegare. The person who conducted the proceeding ab initio was not seised with the power, hence the tribunal was not properly constituted and lacked the requisite jurisdiction to preside over the proceedings as enunciated in the locus classicus, Madukolu v Nkemdili (1962) SCNLR 341. The decision of the tribunal is hereby quashed for lack of jurisdiction. I so hold”

The jurisprudential imperativeness of the decision of the Federal High Court is that only the Registrar, so designated under section 1 of the Trade Mark Act and no other officer in the Trade Mark Registry is legally empowered to conduct and determine Opposition proceedings.

Under the Trade Mark Act, “Registrar means the Registrar of Trade Mark appointed under section 1 of this Act [and] tribunal means the Registrar or the court, as the context or circumstances may require”

Until the obsolete Trade Mark Act is amended to constitute a tribunal panel or to empower the Registrar to delegate his quasi-judicial powers to his subordinates at the Registry, proceedings conducted by such officers, as currently prevalent in the Trade Mark Registry, is illegal and void.

Subject Matter Jurisdiction of the Registrar
A jurisdictional point in the Opposition proceedings in Caporn’s case, was whether the purview of section 20 of the Trade Marks Act capacitates the Registrar to entertain and determine Opposition initiated by an opposer relying on ownership of a trade mark accepted for registration but not yet “actually on the register.”

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Section 13(1) of the Trade Marks Act provides that “no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods…” The competing marks in Caporn’s case are Pure Heaven and Golden Heaven. The legal basis for the owners of Pure Heaven to engage the trade mark registry forum to resist the registration of Golden Heaven must therefore be founded upon Pure Heaven being located in the register as a registered trade mark. Only then would section 13(1) be ignited in favour of the opposer enabling the Registrar to test “the mark to be registered…with what is already registered…”

In reality, Pure Heaven not being actually on the register as required by s.13(1) of the Trade Mark Act, the requisite condition for opposing the registration of Golden Heaven was absent and the Registrar lacked the jurisdiction to entertain such opposition proceedings. A person whose trade mark has no registration certificate in the register of Trade Mark, but is aggrieved by a competing, intellectual property claim, ought to pursue his grievances under the common law claim of passing off outside the competence of the Registrar of trade mark. It is therefore a complete misconception to propound, as the illegal tribunal did, that “once there is an application for registration of a trade mark before the Registry…the Registrar has powers to decide on any matter arising from such an application inclusive of opposition matters…”

This ground for assumption of jurisdiction completely missed the point that until a trade mark is registered under the Trade Marks Act, with certificate of registration issued, any claim for infringement of such unregistered mark is a claim in passing off and jurisdiction to entertain same belongs statutorily to the Federal High Court not Registrar of Trade Mark.

The jurisdiction of the [Registrar of Trade Marks] to deal with action on passing off depends on the… registration of trademark as provided by section 13 of the Trade Marks Act…where the trade mark is unregistered as in the present case, then the cause of action for passing off is in common law for tort and action can now be brought in a [Federal] High Court in view of the provisions of [section 251(1)(f)] of the Nigerian Constitution.

It follows that the Registrar of Trade Marks, when faced with an opposition from an opposer with an unregistered trade mark ought to decline jurisdiction in deference to section 13(3) of the Trade Marks Act which provides that:

Where separate applications are made by different persons to be registered in respect of the same goods or description of goods as proprietors respectively of trade marks that are identical or nearly resemble each other, the Registrar may refuse to register any of them until their rights have been determined by the court or have been settled by agreement in a manner approved-

(a) by the Registrar: or
(b) by the court on an appeal from the Registrar

Judicious Resolution of Competing Intellectual Property Claims
An opposition proceeding initiated by an opposer with an intellectual property right cognizable under section 13(1) of the Act, may be prosecuted on the premise that the mark opposed “so nearly resembles the registered trade mark in respect of same goods or description of goods as to be likely to deceive or cause confusion”. Proceeding in Caporn’s case did not meet the threshold for arming the Registrar with jurisdiction, because Pure Heaven was not registered.

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I canvass here possible defences in an Opposition proceeding were Pure Heaven to be a registered trade mark; the defences also inure to the benefit of Golden Heaven were the opposer, with its unregistered trade mark, to have approached the Federal High Court on the basis of passing off claims. In both hypothesized scenarios, the opposer would have engendered the postulation of the likelihood of Golden Heaven being confused with the opposer’s mark. Likelihood of confusion is a factual issue and the onus lies on the opposer to prove same.

Courts have laid down some factors to be considered whilst analysing likelihood of confusion:

The strength or distinctiveness of the plaintiff’s mark as actually used in the market place.
The similarity of the two marks to consumers
The similarity of the goods or services that the mark identify
The similarity of the facilities used by the mark holders
The similarity of advertising used by the mark holders
The defendant’s intent

Actual confusion.

To determine similarity or otherwise of two marks to consumers one looks at whether the marks are similar in “sight, sound, and meaning which would result in confusion” The only similarity between Pure Heaven and Golden Heaven is the use of the word ‘heaven’. The word Heaven belongs to God alone; and I canvass that it would have been offensive to section 11 of the Trade Marks Act, were any attempt made to register it as such. In the beginning God created the “heaven”; heavens belong to the Lord; heaven is the Lord. At best the word “heaven” standing on its own as a mark can only be classified as generic. Generic marks receive no protection.

I therefore submit that Pure Heaven and Golden Heaven are markedly dissimilar in words, sight, sound and meaning: both marks are not likely to cause mistake or deception or confusion in the minds of the public. As rightly posited by the Supreme Court of Nigeria, “the first syllable is the properly accented one and the resemblance [or otherwise] is of the utmost importance when you are to arrive at the conclusion whether the two words are likely to cause confusion.”

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Equally a Court of Appeal in United States found dissimilarity in the marks: Citibank and CityBank, because the words are spelt differently. It follows therefore that the dissimilarity between the marks: Pure Heaven and Golden Heaven ought to produce a chilling effect on any rational claim that Caporn has any intent to confuse the buying/consuming public or to profit from Pure Heaven.
The strength or distinctiveness of a mark is “the degree to which a consumer in the relevant population upon encountering the mark, would associate the mark with a unique source” What defines the strength of a mark is viewed in terms of conceptual and commercial strength, focusing on linguistic or graphical “peculiarity” of the mark vis-à-vis the product or the organization to which the mark attaches.

A mark’s commercial strength is tested by asking “if in fact a substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprises.”

For Pure Heaven though unregistered, to be categorized as famous mark to justify the Opposition proceeding against Golden Heaven, its advertisement and long presence in Nigeria, would not be of any moment without evidence from the consumers who have identified and distinguished the mark as the opposer’s product. Evidence of strength and distinctiveness of a mark required to rank such mark as famous should therefore proceed from the testimony of the buying public.

Faced with the issue of distinctiveness and strength of watch manufacturer’s trade mark Swatch, in the matter of opposition to application to register Swap, the Trade Mark Board stated;

[d]

[T]he only evidence of fame of opposer’s SWATCH mark is copies of … advertisement and articles from…general circulation newspapers and periodicals…while such evidence demonstrates that SWATCH had in fact advertised goods bearing its mark in major periodicals, such evidence falls far short of demonstrating that opposer’s SWATCH marks are famous for purposes of our likelihood of confusion analysis.

Also; Where an objector is relying not upon a registration but upon an unregistered mark protected by passing off, then the comparison is with the actual reputation of the earlier mark derived from trading…The previous approach was to consider whether there was likelihood of confusion between the two marks. Now it is necessary for the person claiming priority to show that he has a legal right to prevent use of the mark applied for, in particular because of passing off. This means demonstrating a sufficient reputation with the public and not merely that the public will be muddled about source.

Barrister JudeDavid Mbamalu

This paper horned the manifestly prevalent practice of officers of the Trade Marks registry taking over adjudicating and determining Opposition proceedings notwithstanding that the Registrar of Trade Marks is the only recognized tribunal in law to preside over such proceedings. This practice and the nullity of such proceedings as conducted by officers other than the Registrar exacerbates the necessity for legislative intervention, amending the unarguably obsolete Trade Mark Act to inter alia provide for setting up an appropriate tribunal to preside over Opposition proceedings at the registry in line with global industry best practice.

Aside this usurpation of the adjudicatory duty of the Registrar, Opposition proceedings must not be engaged as a ‘long arm’ tactics to expand the jurisdiction of the Registrar by delving into passing off claims under section 251(1)(f)] of the Nigerian Constitution, specifically reserved for the Federal High Court to entertain. When the complaint against trademark infringement, is predicated on an unregistered trade mark, the cause of action sounds in passing off, and an attorney ought not deploy Opposition proceedings in the trade mark registry as a short cut to pursue such claims.

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