What amounts to an infringement of a registered Trademark by a registered Design?

Alliance International Limited v Saam Kolo International Enterprises Limited (2010) 13 NWLR (Pt. 1211) C.A 270;

A decision of the Court of Appeal considering what amounts to the infringement of a registered Trademark by a registered Design

There can no longer be any doubt that we live in an information age where, at least in developed countries, product sales by personal contact has been overtaken by online and mail order purchasing. Despite this, by whichever means one conducts the advertisement and sale of goods, the sanctity of a company’s trademarks cannot be over-emphasised as this is often the means by which a consumer identifies and makes the decision

on which goods and services to purchase.

As an aid to clarity, the Trademarks Act Cap T 13 Laws of the Federation of Nigeria 2004 defines a trademark as a mark used or proposed to be used in relation to goods, for the purpose of indicating a connection in the course of trade between the goods, and some person having the right either as proprietor or as registered user, to use the mark.

Trademarks as intellectual property assets are often valued by auditors and found to be worth more than many of the physical assets of the company combined. Put differently, consumer brand loyalty associated with diverse goods and services is built over a period of time, often spanning decades. The manufacturers of these products therefore, can hardly afford the luxury of exposing same to exploitation and infringement by not availing them of the full protection afforded by the Trademarks Act; which has this to say about the effects of non-registration of a Trademark:

“No person shall be entitled to institute any proceeding to prevent or to recover damages for, the infringement of an unregistered trademark…”

The Trademarks Act goes further in its Section 5 to outline the rights bestowed on the proprietor of a registered Trademark, to include the exclusive right to the use of that trademark in relation to the goods in respect of which it is registered. The position of the law is substantially the same in the case of a registered design. According to the Patents and Designs Act Cap P2 Laws of the Federation of Nigeria 2004, a design is any combination of lines or colours or both, and any thee dimensional form, whether or not associated with colours, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and it is not intended solely to obtain a technical result.

However, while it may often seem to be quite clear what amounts to an infringement of a Trademark – that is, the unauthorised use of such a mark or a mark so nearly resembling as to be likely to deceive or cause confusion in the course of trade – the situation assumes a different dimension when a registered design seems to infringe upon a registered trademark. On the face of it, a certificate of trademark registration is not superior to a certificate of design. However in the case under reference, the Court of Appeal sitting in Lagos had the opportunity to draw a fine distinction between a Trademark and a Design and the posture of the law where one seems to infringe upon the other.

Synopsis of the case;

The respondent as plaintiff at the Federal High Court brought an action against the 1st defendant seeking N 5,000,000 (Five Million Naira) as damages as well as an injunction against the appellant and his agents and officers by whichever name so called, for infringement of two of its registered trademarks. The goods covered by the trademarks in question were shoe protectors described as “step” and “guard”, which the appellant registered in Nigeria on behalf of a foreign principal, in 1990. The appellant also claimed to have a certificate of registered design in respect of heel protectors and sole protectors called “step”. The respondent had previously instituted a suit at the Federal High Court seeking the nullification of the certificate of design issued to the appellant in respect of the aforementioned products. Judgment in that suit was entered in favour of the respondent.

The trial court in the instant suit, found in favour of the respondent, making an order of perpetual injunction restraining the appellants and its agents from infringing the respondent’s registered trademarks. The trial court also made a monetary award in excess of the N 5,000,000 (Five Million Naira) claimed by the respondent as damages.

Dissatisfied, the appellant went on appeal.

Issues for Determination and Judgment

Amongst the issues that arose for determination before the learned Justices of the Court of Appeal, that which is most pertinent for the purpose of this discourse is:

Whether the trial court was right in holding that the appellant admitted infringing the trademarks of the respondent.

Learned counsel to the appellant contended that the appellant could not be said to have infringed the respondent’s trademark in so far as it was exercising its rights and privileges conferred on it by virtue of its registered design. Counsel therefore submitted that the trial court’s findings that the appellant had admitted infringing the respondent’s trademark were perverse. On the other hand, learned senior counsel for the respondent Mr. Gani Adetola-Kaseem, SAN posited that the arguments raised in the appellant’s statement of defence at the trial court, did not amount to a denial of the plaintiff’s allegation of infringement of its trademark, but a mere justification on account of the defendant’s registered design.

The court invited further address from both parties as to the import of a certificate of design vis a vis a certificate of trademark. Learned counsel to the appellant citing Section 12 of the Patents and Designs Act sought to persuade the court of the superiority of a certificate of design over a certificate of trademark. Learned senior counsel to the respondent however posited that while a trademark exists to preserve the integrity of the product, a certificate of design only applied to protect the creativity in the design and was therefore not an answer to a charge of infringing trademark. Accordingly, learned senior counsel urged the court to hold that whilst the appellant was entitled to the protection afforded by a certificate of design, it had not answered the claim of infringement of trademark and therefore urged that the appeal be dismissed.

In delivering its judgment, the learned Justices of the Court of Appeal considered the concept and definition of a trademark as contradistinguished from a design. In doing so, the learned Justices found that neither certificate is superior to the other but that they are issued for different purposes and serve different functions. The submissions of learned senior counsel for the respondent in that regard were therefore upheld. Their Lordships further found that the appellant’s contention that the use of the respondent’s trademark was covered by its certificate of design was without merit and accordingly failed, even though the appeal was allowed in part and the damages awarded to the respondent at the trial court reviewed downward in line with its claim.

Conclusion

There now seems no end to the myriad effects of the interplay of our laws on commercial activities as highlighted by the case under reference. It is the considered view of this writer that the draftsmen charged with drafting both the Trademarks Act and the Patents and Designs Act, were perhaps oblivious to the possibility of the scenario painted by the instant case. Had they considered that an action might be instituted for infringement of a registered trademark by a registered design, they might perhaps have included in their drafting, remedial steps to be taken in such an instance.

Going forward, and with the benefit of hindsight wisdom in the face of modern day practicalities of commercial existence, it would not be unwise to employ a holistic or harmonised approach to the entire branch of law known as Intellectual Property Law (indeed, in some jurisdictions, there is a growing body of opinion that favours this aggregated approach). For who is to know when our courts may find that they have again crossed paths?