The tort of passing off and trade mark infringement is very important in the life of a society. Individual person in a society has the right to life and the right to engage in any legal kind of economic activity to sustain the kind of life style that the individual has chosen. The law of tort especially protects the individual in whatever economic activity one is engaged in. It protects business names, names of product, trademarks among others. Anybody who attempts to cause confusion by illegal activities bordering on imitation, deceit, fraud in economic activities may be liable for the tort of passing off. In Nigeria we have Trade Mark Act and Merchandise Marks Act which governs business in Nigeria and ensures that an individual’s business is not misrepresented or passed off. The law is that where there is a wrong, there is a remedy. This means that trade mark infringement can be enforced and this is evident in a lot of court cases.
Trademark infringement is the unauthorized use of a trademark or service mark (or a substantially similar mark) on competing or related goods and services. The success of a lawsuit to stop the infringement turns on whether the defendant’s use causes a likelihood of confusion in the average consumer.
Trademark law governs the use of a device (including a word, phrase, symbol, product shape, or logo) by a manufacturer or merchant to identify its goods and to distinguish those goods from those made or sold by another. Service marks, which are used on services rather than goods, are also governed by ‘Trademark Act.
The tort of passing off applies where there is a representation that a person’s goods or services are those of someone else. To establish passing off, the plaintiff must prove a misrepresentation made by a trader in the course of trade to prospective customers or consumers that is intended to injure the plaintiff’s business or goodwill and that caused actual damage to the plaintiff. The misrepresentation can be about the name of the product or the image that is presented by the product. The tort of passing off is not confined to the traditional concepts of trade names and trademarks. It includes such things as slogans and visual images where they have become part of the goodwill or reputation of the product.
ACTS WHICH CONSTITUTES TRADE MARK/PASSING OFF VIOLATIONS.
1. TRADING WITH THE NAME RESEMBLING THAT OF THE PLAINTIFF
This is where the defendant is engaged in the same type of business as the plaintiff and uses the name so closely resembling that of the plaintiff in order to mislead the public into believing that the defendant’s product/business and that of the plaintiff are one and the same.
S. 13 Trade Marks Act provides that (1) Subject to the provisions of subsection (2) of this section, 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 he same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.
Furthermore S. 3 (1) Merchandise Marks Act provides that every person who- (a) forges any trade mark; or (b) falsely applies to goods any trade mark or any marks so nearly resembling a trade mark as to be calculated to deceive; or (c) makes, disposes of, or has in his possession any die, block, machine or other instrument for the purpose of forging, or of being used for forging, a trade mark; or (d) applies any false trade description to goods; or (e) causes any of the things above in this section mentioned to be done, shall, subject to the provisions of this Act and unless he proves that he acted without intent to defraud, be guilty of an offence.
In Niger Chemist Ltd v. Nigeria Chemist (1961) ALL NLR 180 at 182; it was held that; “As a matter of common sense that when two firms trade in the same town, in the same street and in the same line of business, one calling itself ‘Niger Chemists’ and the other ‘Nigeria Chemists’, there must be a grave risk of confusion and deception” See also Ogunlende v. Babayemi (1971) I UILR 417.
2. MARKETING A PRODUCT AS THAT OF THE PLAINTIFF.
It is actionable passing off for the defendant to sell his goods with a direct statement that the goods are manufactured by the plaintiff, whereas they are not. In Byron v. Johnston (1816) 35 ER 851 – it was held actionable for a book publisher to advertise and sell a book of poems with the name of Lord Bryon on the title page, when in fact that famous poet had nothing to do with its authorship. Any person who
falsely applies to goods any trade mark or any marks so nearly resembling a trade mark as to be calculated to deceive is guilty of an offence and has violated copyright. S 3. (1b) Merchandise Marks Act.
3. MARKETING GOODS WITH A NAME RESEMBLING THAT OF THE PLAINTIFF’S GOODS.
It is a tort of passing off for a defendant to produce or market his goods with a name closely resembling the name of the plaintiff’s goods, with the result that the customers are confused, and the defendant’s products are mistaken as made by the plaintiff and are bought as the product of the pl aintiff. In Hines v. Winnick (1947) Ch 707 at pg 13, the plaintiff musician and band leader who used to broadcast his radio programme under the name ‘Dr. Crock and his crack pots’ obtained an injunction to restrain the defendant from featuring another band on the programme using the same name. VAISEY J granting the injunction was of the view that a musician gets known by a particular name and this becomes inevitably part of his stock-in-trade.
4. MARKETING PRODUCTS WITH THE PLAINTIFF’S TRADEMARK OR ITS IMITATION
It is actionable in passing off for a defendant to market his goods using the plaintiff’s trademark or its imitation leading to a confusion of the buyers, who then patronize his product thinking that they are the product of the plaintiff. Trademarks are usually registered and also protected under the Merchandise Marks Act 2004. Also in Perry v. Truefitt (1842) 49 ET 749 – the plaintiff obtained an injunction to restrain the defendants from selling a certain hair cream under the name of ‘Medicated Mexican Balm’ or other similar designations. Reckitt & Colman Ltd v. Borden (1990) I WLR 491 HL. 3.6
S. 5 of the Merchandise Marks Act prohibit this type of act where it provided that;
(1) A person shall be deemed to apply a trade mark or mark or trade description to goods who- (a) applies it to the goods themselves; or
(b) applies it to any covering, label, reel, or other thing in or with which the goods are sold or exposed or had in possession for any purpose of sale, trade, or manufacture; or
(c) places, encloses, or annexes any goods which are sold or exposed or had in possession for any purpose of sale, trade, or manufacture, in, with, or to any covering, label, reel, or other thing to which a trade mark or trade description has been applied; or
(d) uses a trade mark or mark or trade description in any manner calculated to lead to the belief that the goods in connection with which it is used are designated or described by that trade mark or mark or trade description.
5. IMITATING THE APPEARANCE OF THE PLAINTIFF’S PRODUCT AND ITS ADVERTISEMENT It is passing off for the defendant to do anything, which makes his product appear like the plaintiff’s product. This passing off includes any copying of the likeness or appearance of the plaintiff’s product, in a manner to confuse the public e.g. general appearance, package, label, or design of the product. De facto Works Ltd v. Odumotun Trading Co Ltd. (1959) LLR 33 and Hudson & Co. v. Asian (1964) I WLR 466 PC. Also an advertisement by the defendant which copies, or imitates the plaintiff’s advertisement of his products, may amount to passing off, where such advertisement so resembles that of the plaintiff, as to be capable of misleading the buyers to patronize the defendant’s goods as those of the plaintiff. See Cadbury Schweppes pty Ltd v. Pub Squash Co. pty Ltd (1981) I ALL ER 213.
In Iyke Merchandise v. Pfizer Inc & Anor. (2001)
On October 18, 1993, Pfizer Inc. (the 1st plaintiff/respondent) brought a suit against Iyke Medical Merchandise (the defendant/appellant) for trademark infringement and passing-off of their goods as those of the 1st plaintiff/respondent. The 1st plaintiff/respondent was engaged in the manufacture and sale of a pharmaceutical product, a worm expeller for the treatment of worms in children and adults, known as “Combantrin Plus” and duly registered under trademark No. 31159. Thereafter, the defendant/appellant, also a pharmaceutical outfit, sought to introduce into the Nigerian market a product known as “Combiterin”, also for the treatment of worms in both children and adults.
The 1st plaintiff/respondent filed an action in the Federal High Court claiming that the defendant/appellants were Infringing the 1st plaintiff’s trademark “Combantrin Plus” registered trademark and for passing-off or assisting others to pass-off the defendant/appellant’s product (the worm expeller branded as ‘Combinterin’) not being of either of the plaintiffs’ manufacture.
The plaintiffs/respondent also brought the action against the defendant appellant on the grounds that they were Importing or supplying the infringing product on a get-up which closely resembled the mark or get-up used by the plaintiff/respondent in connection with their “Combantrin Plus” worm expeller as to be calculated to lead to the belief that worm expeller products not of the plaintiffs/respondents manufacture are the goods of the plaintiffs/respondents.
The plaintiff’s action for injunction, order of delivery up for destruction of the infringing product (Combinterin), and general damages succeeded.
SELLING INFERIOR OR EXPIRED GOODS OF THE PLAINTIFF AS ORIGINAL OR CURRENT STOCK It is a passing off for a defendant to sell inferior or expired goods/products of the plaintiff as current stock, where such has been discarded by the plaintiff. In this passing off, the defendant who has managed to lay hands on the goods, which are unfit for human consumption sell them off as current stock of the plaintiff. See Wilts Ltd v. Thomas Robinson Sons & Co Ltd (1958) RPC 94 CA and Gittette Safety Razor Co & Amor v. Franks (1924) 40 TLR 606. Note: There is no passing off, when old goods/products or second hand goods are sold off as such without pretending or falsely representing that they are new ones – General Electric Co v. Pryce’s Stores (1933) 50 RPC 232.
HOW TO ENFORCE CLAIMS FOR PASSING OFF OR TRADEMARKS INFRINGEMENT.
The most effective way to enforce such actions is to bring up an civil action in court. To successfully maintain this actions, elements of passing off and trademarks violations must be proved. There are basically three elements.
1.Goodwill owned by a trader
3. Damage to goodwill.
The plaintiff has the burden of proving goodwill in its goods or services, get-up of goods, brand, mark or the thing standing for itself.
The plaintiff also has the burden of proof to show false representation (intentional or otherwise) to the public to have them believe that goods/services of the defendant are that of the Plaintiff. There must be some connection between the plaintiff’s and defendant’s goods, services or trade. They must show likelihood or actual deception or confusion by the public. Deception or confusion, however, does not consider a “moron in a hurry”.
It is the Court’s duty to decide similarity or identity of the marks, goods or services. The criteria are often: aural, visual and conceptual similarity (often applied in trademark infringement cases).
The remedies for the tort of passing off include the following:
2.Account for profit or loss of sales; Injunction – John Walker & Son Ltd v. Henry Ost & Co. Ltd (1970) 2 ALL ER 106. 3. Intervention by the relevant regulatory agencies such as NAFDAC, SON etc.
A passing off action or trademarks infringement can be brought under civil litigation. Just like any other civil action, to be commenced by writ of summons expecially where damages is claimed. An injunction can also lie against the defendant restraining him from further passing off or trademarks infringement.
S. 251 of the 1999 constution confers on the Federal High Court jurisdiction to handle trade marks infringement, passing off and copyright matters. (f) any federal enactment relating to copyright, patent, designs, trade marks and passing off, industrial designs and Merchandise marks, business names, commercial and industrial monopolies, combines and trust, Standard of goods and commodities and industrial standards.
Lawyers who are experienced in the field of intellectual property law can advise on all matters pertaining to trademark law as well as assume responsibility for enforcing or fending off claims arising from trademark violations.