On 10 March 2022, the Federal High Court sitting in Abuja in Suits No: FHC/ABJ/CS/791/2020: Fan Milk International A/S v. Mandarin Oriental Services BV and The Registrar of Trademarks and FHC/ABJ/CS/792/2020: Fan Milk International A/S v. Mandarin Oriental Services BV and The Registrar of Trademarks, delivered two landmark judgements and established certain principles on the determination of trademark infringement.
The Court also used the opportunity to provide a clear interpretation of the provisions of the Trademarks Act regarding the registration of a trademark that is similar to an existing trademark but registered in a different class.
In Part 1 of this article, published last week Thursday, we discussed the facts of the cases, the appellant’s and the respondent’s arguments. In today’s article, we will focus on the court’s decision and its implication.
The decision of the court
The court formulated three issues after considering the arguments of the parties and resolved each issue as follows:
The first issue was whether the 2nd Respondent was wrong when it held that the 1st Respondent’s trademark was not identical to that of the Appellant nor so nearly resembles the trademark as to be proposed trademark of the 1st Respondent as to be likely to deceive or cause confusion.
Relying on sections 13(1) and (2) of the Trademarks Act and the decision of the Supreme Court in Ferodo Limited & Anor v. Ibeto Industries Limited, the court stated two principles that would serve as a guide in determining whether a proposed trademark is offensive or not as follows:
a) Whether the proposed trademark is identical to a registered trademark belonging to a different proprietor? Or
b) Whether the proposed trademark nearly resembles a registered trademark as to be likely to deceive or cause confusion?
The court disagreed with the argument of the 2nd Respondent on the procedure for comparing both trademarks i.e. looking at both trademarks side by side. The court further stated that the question is not if a person is looking at two trademarks side by side, but whether there would be a possibility of confusion. The question is whether the person who sees the proposed trademark in the absence of the other trademark would be deceived and think that the trademark before him is the same as the other, of which he has a general recollection.
Applying this principle to the case, the court held that both trademarks were not identical or likely to deceive or cause confusion as to be considered oppressive. The court further stated that the words ‘’FanMilk’’ boldly written under the blades of the Appellant’s trademark sets it asides and differentiates it from the 1st Respondent’s proposed trademark. The court also stated that the Appellant’s trademarks have been around for a long period of time and that people are used to what it looks like, particularly with the boldly inscribed Fan and FanMilk and as such, cannot be confused with any other Fan device without these words.
Thus, on the first issue, the court held that the 2nd Respondent was right in holding that both marks were not identical as to cause confusion.
The second issue formulated by the court was whether the 2nd Respondent was correct to determine that the Appellant cannot claim rights over an allegedly conflicting trade trademark, registered in a different class.
On this issue, the Court cited the provisions of section 13(1) of the Trademarks Act and held that there are two instances where a trademark shall not be registered. In addition, the Court also relied on the Ferodo case and held that an action for infringement will lie where a competitor uses a registered trademark in connection with the proprietor’s goods for the purpose of comparing them with his own goods in the same class.
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Flowing from this, the court held that the 1st Respondent’s mark could have only been rejected if it is identical with or it so nearly resembles the trademark of the Appellant which is already on the register and in respect of the same goods or description of goods. The mark of the 1st Respondent which the court held to not be identical to that of the Appellant was not in respect of the same goods or description of goods as the existing registration and the proposed trademark are in different classes. While the Appellant’s trademarks cover goods, the proposed trademark of the 1st Respondent covers services.
Therefore, on this issue, the court held that the 2nd Respondent was right when it held that the Appellant cannot claim rights over an allegedly conflicting trademark registered in a different class.
The third issue formulated by the court was whether the 2nd Respondent was wrong when it held that Section 12 of the 1999 Constitution prevents the Appellant from claiming the benefits afforded to famous and renowned marks on account of the Paris convention and the TRIPS Agreement.
In resolving this issue, the court stated that the Paris Convention and TRIPS Agreement referred to by the Appellant have not been domesticated in Nigeria and by implication cannot be relied on. The court held that the 2nd Respondent was not wrong when it held that section 12 of the 1999 Constitution prevents the Appellant from claiming the benefits afforded to famous and renowned marks where the law they seek to rely on has not been domesticated in the country.
Therefore, this issue was also resolved in favour of the Respondents. Accordingly, the appeal was dismissed for lack of merit.
Implications of the Decision
The decision establishes guiding principles for the determination of an infringing trademark. This decision is to the effect that in determining whether a proposed trademark is similar or identical to an existing one or not, the question is whether the person who sees the proposed trademark in the absence of the existing trademark would be deceived to think that the trademark before him is the same as the other. Where this is not the case, such a proposed trademark cannot be said to be infringing the existing trademark.
From this decision, it is clear that a detailed side by side comparison i.e. putting the two marks side by side, looking for resemblance may not be relevant in determining similarity as an average consumer would not in normal circumstances, analyse every minute detail but would rather perceive the mark as a whole.
Secondly, the decision is instructive on the right of a party to lay claim to an infringement over an allegedly conflicting trademark registered in a different class. Thus this decision reiterates the settled principle of law that a party cannot claim rights over an alleged conflicting trademark registered in a different class. Consequently, a proprietor of a trademark in a particular class cannot maintain an action for infringement against a proposed trademark in another class.
The last issue which the court addressed was the applicability and bindingness of the provisions of undomesticated treaties and conventions in Nigeria. In resolving this issue, the court relied on section 12 of the 1999 Constitution to determine if an unratified or undomesticated treaty prevents a party from claiming the benefits of the fame and renown attributable to its trademarks as allowed under the Paris Convention and the TRIPS Agreement.
The court stated that the Paris Convention and TRIPS Agreement referred to by the Appellant have not been enacted into law in Nigeria and as such cannot be enforced in Nigeria based on the provisions of section 12 of the 1999 Constitution. By this decision, section 12 of the 1999 Constitution prevents parties from claiming the benefits afforded to famous and renowned marks under the Paris Convention and TRIPS Agreement at least till the enactment of both Agreements in Nigeria.
Conclusion
The resolution of the formulated issues by the court, in this case, is a true reflection of the statutory provisions on each issue and represents a good development, especially in the areas of the metrics for the determination of infringing trademarks. By upholding the decision of the Registrar of Trademarks and refusing the Appellant’s opposition, the Federal High Court has succeeded in preventing an absurdity which would have come about by allowing the appeal.
The effect of allowing the appeal would have meant that even where there is no likelihood of confusion, proprietors would be prevented from registering trademarks in different classes from existing ones just because they have similar words. It is our opinion that this was not the intention of the draftsman when the Trademarks Act was being enacted and the decision of the Federal High Court, in this case, has reflected the true position of the law.
