CHAPTER TWO LITERATURE REVIEW AND THEORETICAL FRAMEWORK 2
LITERATURE REVIEW AND THEORETICAL FRAMEWORK
This chapter reviewed various literatures relating to the following areas such as; Definition and history of Trade Marks Law, Compliance of the Nigerian Trade mark Laws to the TRIPS Agreement in Nigeria, use and review of available literature that explains some specific areas of this study.
2.1 Trademarks Overview
The concept of Trademarks have been in use in several countries and identified as an important commercial asset. Trademarks are signs that identify goods or services offered on a market . Though marks are used in different forms, Trade marking as an important aspect of intellectual property (IP) has been in existence in Nigeria. Its use ranges from commerce by traders who marked their goods for identification of its source of origin to identification of the place of origin of persons to their status in the society . Although, there hasn’t been a revision of the Trade Marks Act of 1965, there is however the need for protection of intellectual property rights (IPRs) based on economic and social considerations. The impact and implementation of the TRIPS Agreement in relation to trade marks should also be examined having not gotten much attention as copyrights and patents. Also, considering the recent proliferation of trademarks on consumer goods in Nigeria, it is important to examine the law in order to determine its effectiveness and the impact of the TRIPS Agreement on the existing law.
2.2 Historical Overview
The English Law of Patents, Designs and Trade Marks Act, 1883 introduced on the 1st of January 1900 as the Trade Marks Proclamation Ordinance of 1900 was the first trademark law. Its application was strictly restricted to the Southern Nigeria but became public after the amalgamation in 1914. There has been succession of Trademark Acts such as the United Kingdom Trade Marks Act of 1919 introduced in April 1920 and enforced in Nigeria in 1923 as an extension of the British colony . Further succession occurred in 1926 with the Trade Marks Ordinance 11 replacing that of 1923 later followed by the 1958 Ordinance to amend and implement the law relating to Trade Marks .
The 1965 Act repealed the Trade Mark Act of 1958 and its regulation and became the first indigenous Trade Marks Act. It was enforced in 1967 upon its institution for administration , incorporated into the Laws of the Federation of Nigeria 2004 as Chapter T13 and remains presently active.
2.3 Trade Mark Protection
The provision of protection of trade marks in respect of goods has been extended to service marks, certification marks, defensive marks, associate trademarks and series of trade marks with no preferential provision on collective and well-known marks. The Federal Ministry of Commerce, Trade and Investment also referred to as the Registry is in charge of all trade mark application processes in Nigeria.
2.3.1 Definition of a Mark
There have been variations in defining a “mark” with consideration to include colour, scent, shape, sound, pattern, product packaging and any combination thereof or features of a product that can indicate source however, the definition as stated in section 67 remains as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.
The seemingly addition to the margins of a mark have had the courts seek caution in its protection and registration but the mark owners would rather than the law stretch the boundaries beyond what the law covers in order to include the extension to other attributes such as colour, scent, shape, sound pattern and product packaging. Countries like the US , UK and Japan have adopted the inclusion of these extensions into their practices with decision such as in 1986, the House of Lords unequivocally held in Re Coca-Cola Co. Application that:
It is not enough for the Coca-Cola bottle to be distinctive as Coca-Cola Co. must succeed in the proposition that a bottle is a trade mark. If so, any other container or any article of a distinctive shape is capable of being a trade mark. This raises the spectre of a total and perpetual monopoly in containers and articles achieved by means of the Act of 1938. Once the container or article has become associated with the manufacturer and distinctiveness has been established, with or without the help of the monopolies created by the Patents Act, the Registered Designs Act or the Copyright Act, the perpetual trade mark monopoly in the container or article can be achieved. The Act of 1938 was not intended to confer on the manufacturer of a container or on the manufacturer of an article a statutory monopoly on the ground that the manufacturer has in the eyes of the public established a connection between the shape of the container or article and the manufacturer. A rival manufacturer must be free to sell any container or article of similar shape provided the container or article is labelled or packaged in a manner which avoids confusion as to the origin of the goods in the container or the origin of the article.
The UK sought to protect three-dimensional trademarks to ensure its law compliance with the TRIPS Agreement and obligation to the WTO though the three-dimensional trade marks were not recognised in the Japanese Trade Mark Law till 1996.
The consideration for the protection of unconventional marks, such as packaging or trade dress have been under review in the Nigerian law, as case laws have begun to examine the issue of trade dress without provision for it under the law. Shapes are however not deemed part of a mark and not registered Nigeria though considered unique elsewhere and this has led to diverse opinions in the application for the recognition and protection for shapes such as protection under the Patent and Designs Act by design laws but can only hold for 15years (Laws of Federation of Nigeria, 2004) from the date of application unlike trade mark protection which is indefinite in as much the mark exists.
The case of Ferodo Ltd v Ibeto Industries Ltd is a cited example where Ferodo as the appellant in the Court of Appeal presented an attractive trade mark with other colorations and devices though not fanciful but with ornamental characters as part of the trade mark. The court was of the opinion that in the absence of registration of a trade dress, a statutory action for infringement or statutory passing off cannot be sustained over the use of the colour combination hence, the action failed. The Supreme Court did not allow the consideration of a break in the trade mark law by accepting a traditional word, mark or logo (Phillips, 2003) to rule that the packaging of Ferodo was distinct enough to allow trade mark infringement could go beyond infringing the words registered to include product package.
The reverse was the case in the Court of Appeal in International Tobacco (NIG.) Ltd.v British American Tobacco (NIG.) Ltd. as decision of the Federal High Court was upheld that though the gold colour of the Benson ; Hedges cigarette pack had not been registered but its colour distinctiveness had stood out since inception and the gold colour adaptation for a similar product by International Tobacco is an infringement of the proprietary rights of British American Tobacco.
2.3.2 Definition of a Trade Mark
A trade mark is defined under section 67 of the Act:
as a mark 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 registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 43 of this Act.
This definition has been criticised and as classified limited as the trademarks may only be affixed to goods traded by a proprietor and not easily applicable . There are classes of trade marks which are categorised as:
• Defensive Trade Marks: These are usually registered as a cover for the well-known trademarks such as familiar goods and services that can be substituted for other goods or as an indicator during trade and only applicable to well-known trademarks. The owner may apply as deemed fit provided it’s registered as a trade mark in his name in respect of nay goods and as such can neither be challenged for non-use nor taken off the register.
• Associated Trade Marks: These are individual trademarks registered by the same proprietor who is solely exclusive to their rights and use either as parts or wholly . Though registered as separate entities, they must satisfactorily meet all conditions of an independent trade may be substituted for each another in certain cases . Its amendment or dissolution might be requested by the proprietor upon approval by the registrar without deception or confusion of it being utilised by another user in terms of the goods to which it is registered .
• Series Trade Marks: These are made up of several trademarks alike in respect of the same goods or description of goods on one application and are registered as associated trade marks in one application . In order to be registered, their similarities must differ in the following ways:
i. statements of the goods in relation to which they are respectively used or proposed to be used; or
ii. statements of number, price, quality or names of places; or
iii. other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
2.4 Application and Requirements
In order for a trademark to be registered, the following requirements are considered:
i. a mark
ii. use or proposed use
iii. service in relation to goods
iv. in the course of trade
Other conditions to be met for registration to be valid are:
i. the name of a company, individual, or firm, represented in a special or particular manner;
ii. the signature of the applicant for registration or some predecessor in his business;
iii. an invented word or invented words;
iv. a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
v. any other distinctive mark.
2.4.1 Examination Procedure for Trade Mark Application
The preliminary examination of an application on the distinctiveness of a proposed trademark is dependent on the proprietor though has advantages to determine validity but optional with refund to applicant within stipulated time for withdrawal .
An application is subjected to a search when submitted without a request for a preliminary examination This allows the conduct a search amongst the registered marks and pending applications to ensure no description of goods and any marks identical with the mark applied for after which applicant may be required to furnish requirements to determine the status of the application (accepted, objected to or accepted by the registrar subject to such conditions, amendments, disclaimer, modifications or limitations as the registrar may think right to impose) or an appeal in court if rejected .
2.4.2 Effects of Registration
One of the advantages of registration as in section 3 of the Act provides a person who registers a mark the capacity to prevent infringement and recover damages for such infringement unlike who isn’t as such a person can only issue a right of action against any one for passing off and can recover damages only in relation to same . Registration gives the proprietor the exclusive use of the trade mark and the right to sue for passing off goods of the proprietor.
2.4.3 Publication and Opposition
A notice of acceptance of publication is usually published in the Trade Marks Journal stating all the conditions and limitations when an application for registration is approved however, opposition can arise and must be presented through a notice as well within two months from application with reasons stated . The outcome of the opposition determined according to presented evidence from parties to the opposition and subject to the conditions or limitations . There is no opposition after a trade mark has been registered
2.4.4 Reasons for Opposition
There are several reasons for opposition of a trade and this must be absolute or relative and the prohibited marks are; e deceptive and scandalous marks , identical and resembling trade mark the Nigerian Coat of Arms or the Arms of a State , the National Flag , names of chemical substances trademarks based upon words such as “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, words such as “President”, “Governor” and representation of the armorial bearings, insignia of orders of chivalry, decorations or flags of any state, city, town, place, society, body corporate, institution or person .
2.4.5 Duration and Renewal of Trade Marks
A trade mark is acceptable and valid for seven years from initial application but subject to periodical renewal which is valid for fourteen years from the date of expiration of the original registration or of the last renewal of registration .
2.4.6 Cancellation and Removal of Trade Mark
In removing or cancelling a trade mark, the proprietor may apply on the following reasons :
(i) There was no genuine intention to use the registered trade mark and no suitable use in respect to goods registered for
(ii) There has been no reported use of the trade mark within a time frame of a month before application to five years after registration .
(iii) The failure to renew by the proprietor within the stipulated time .
(iv) if the mark is used in a deceptive or prohibited manner as well as failure to disclose essential facts to application by the proprietor.
2.4.7 Requirement of Use
The Act allows a mark proposed to be or used to be registered and used in the following contexts:
? Assignment and Licensing: The Act permits assignments of a registered trade mark either in connection with the goodwill of a business or not. In addition licensing of trade is recognised under the law. This area will be discussed fully in the next section.
? Rights Conferred by Registration: A naturally distinct mark or that adapted to distinguish with essential particulars are registered as part A marks while part B marks must be capable of distinguishing the goods for which it is proposed to be registered either by being inherently capable of distinguishing . The rights conferred by the registration in part A and part B varies as the proprietor part A trademarks has exclusive rights to the use of the trade mark, while a part B trade mark proprietor has similar rights except in an action for infringement where no injunction or other relief shall be granted to the plaintiff (proprietor) if the defendant can satisfactorily present to the court that his unauthorised use of the trade mark as not deceptive or confusing.
? Foreign Trade Marks Application: Foreign application are given importance in as much there is a filed application within six months from the date of the application for protection in the Convention country as stated by the law but there is room to claims for damages prior to registration . The provisions of the Paris Convention are applicable in Nigeria only if the Convention is domesticated into local law but the Act refers to the protection of trade marks in Convention countries.
2.5 Developments in Trade Mark Laws
In 2006, a central administration system for all intellectual property matters excluding copyrights was proposed to foster administration of IP in Nigeria under the of the Nigerian Intellectual Property Commission (NIPCOM) by the ministry of Justice as a regulatory and enforcement agency in charge of IP administration in Nigeria . In order to provide for the Establishment of the Intellectual Property Commission of Nigeria, a Bill to Repeal Trade Marks Act, Cap. T13, LFN 2004 and Patents and Designs Act, Cap. P2, LFN 2004 and Trade Marks Act, Cap. T13, LFN 2004 and Patents and Designs Act, Cap. P2, LFN 2004 and Make Comprehensive Provisions for the Registration and Protection of Trade Marks, Patents and Designs, Plant Varieties, Animal Breeders and Farmers Rights and for other Related Matters was introduced and though considered a laudable idea, was rated cumbersome. It was advised that it should be separated into components establishing the IP Commission from the IP laws with each part having a distinct Act that may be combined in a Bill and that modifications be made to the existing laws for inclusion of areas such as Plant Varieties, Animal Breeders and Farmers Rights and for other Related Matters compliance with Nigeria’s international obligations.
Though the Bill was reported lacking structure and organisation, it however amends some of the major issues in the Act such as the trade mark definition to include service marks and a concise definition of a trade mark , introduction of registration marks such as sound, smell, taste and texture as well as an addition, the registration of marks has been merged into a single register of registration marks rather than the Part A and Part B registrations that currently exist . It also pushed for the protection of trade marks according to a geographical origin and a definition of geographical indications including a provision for the protection of well-known marks .
2.6 Recognition and Reception of International Law
The Laws of the Federation of Nigeria were apprised after the inception of the TRIPS Agreement earning the Trade Mark Acts of 1965 incorporation into Laws of the Federation of Nigeria in 2004 as contained in Chapter T13 also termed the first indigenous Legislation on Trade Marks in Nigeria after repealing the Trade Mark Act of 1958 . The Trade Mark Act (TMA) came into force in 1967 when the Trade Marks Regulations Order of 1967 was instituted for the administration of the system . Due to the dualistic nature of the Nigerian legal structure, the Nigerian Constitution in section 12 (1) as an important element ensures international treaties can only be effective if domesticated which implies the National Assembly is solely responsible for the effect of law contemplated in the international instrument and a Declaration can be made by the minister in the Federal Gazette to give effect to a treaty (Section 44, 5). Therefore, declarations made by the executive arm of government will go through the legislative arm to be passed into law .
There are variations to judicial interpretation by the Supreme Court as interpreted by Section 12 (1) of the 1999 Constitution of the Federal Republic of Nigeria. A case study is one between General Sanni Abacha v. Gani Fawehinmi on supremacy of the Constitution over the African Charter on Human and Peoples Rights. Per Ogundare, JSC, based his decision on:
No doubt Cap.10 (The African Charter on Human and Peoples Rights (Ratification and (Enforcement) Act 1990) is a Statute with International flavour. Being so therefore, I would think that if there is a conflict between it and another Statute, its provision will prevail over those of that other Statute for the reason that it is presumed that the Legislature does not intend to breach an International obligation. To this extent, I agree with their Lordships of the court below that the Charter possesses ‘a greater vigour and strength’ than any other domestic Statute. But, that is not to say that the Charter is superior to the Constitution as erroneously…. Nor can its International flavour prevent the National Assembly or the Federal Military Government to remove it from our body of Municipal Laws by simply repealing Cap.10; nor also is the validity of another Statute necessarily affected by the mere fact that it violates the African Charter or any other Treaty for that matter.
Thus, the courts clearly stated that the international treaty would have superiority in cases in conflicts with domestic legislation as the Nigerian Constitution only applies where there is no conflict. This was also effective by the Court of Appeal in Chief J.E Oshevire v. British Caledonian Airways Ltd. However, the court held that international agreement embodied in a Covenant or Treaty is above Domestic Legislation and that any other domestic legislation in conflict with such Convention is void considering Oloruntoba Oju v. Dopamu, where the Supreme Court held that ‘any provision of an existing law in conflict with the provisions of the 1999 Constitution must be pronounced void to the extent of such inconsistency.’ This further implies the inconsistencies in the decisions of the courts and as such questions the need for domestication on an international treaty which becomes effective on been accented to by Nigeria doubting the position of the interpretation of the provisions of the Constitution. Thus, from the provision of section 1 of the Constitution which states the supremacy of the Constitution, it is clear that:
(1) This Constitution is supreme and its provisions shall have a binding force on all authorities and persons throughout the Federal Republic of Nigeria.
(2) The Federal Republic of Nigeria shall not be governed, nor shall any person or group of persons take control of the Government of Nigeria or any part thereof, except in accordance with the provisions of this Constitution.
(3) If any other law is inconsistent with the provisions of this Constitution, this Constitution shall prevail, and that other law shall to the extent of the inconsistency be void.
2.6.1 Theories on the Recognition and Reception of International Law
The reception of international laws includes the dualism and the monism theories discussed as:
Dualism: This is a case where an international law is considered separate from domestic law (Schutze, 2012) and views international law as between states and national law as the law as within a state. He stated that while international treaties are thus binding “on” states, they can’t be binding “in” states. Thus, the theory requires international law to be incorporated into national laws or the domestic realm so as to have the effect of law.
Monism: This theory is based on national laws derived from international laws and that a state makes international law a part of the national law .
Other theory related to the recognition and reception of international law is the relational theory which as analysed by Downie and Llewellyn is a core belief that the object/subject of attention should be understood in relation to others which allows the examination of the nexus between the TRIPS Agreement and the Nigerian laws. Its relevance to this study is in the determination of the relationship between the TRIPS Agreement and the Nigerian IP laws vis-a-vis its compliance with its WTO obligations.
The dualism theory is also essential to the study as the TRIPS Agreement as an international treaty can only be meaningful when implemented into law in various countries. The Nigerian legal structure favours the relational and dualism theories as the constitution includes an important element which ensures international treaties can only be effective if domesticated implying the National Assembly is solely responsible for the effect of law contemplated in the international instrument and a Declaration can be made by the minister in the Federal Gazette to give effect to a treaty.