The story surrounding the trademark infringement posted by popular IG comedian and Skit Maker ‘Sabinus’ broke on Monday, 30th May, 2022.
Sabinus is suing popular milk brand “Peak Milk” for trademark infringement of his coined phrase “SOMETHING HOOGE” in one of their advertisements. Sabinus is suing Peak Milk for a whooping sum of One Billion Naira.
To understand Sabinus’s claim, we examine what Trademarks are, the classes of trademarks registration, and Defensive trademarks.
WHAT IS TRADEMARK?
A trademark is a unique sign, symbol or phrase used to identify particular goods of a proprietor as distinct from the goods of the competitors. Trademark indicates the source of products/services
The essence of trademark is to link a particular product or service to a particular source thus aiding consumers to identify and distinguish the source of particular goods from those of others in the course of trade.
In Nigeria, a trademark is required to be registered before the proprietor can enjoy the full benefits and protection provided under the law.
The owner of an unregistered trademark may however be able to bring an action for “passing-off” against the infringer. For an action for passing off to succeed the trademark owner must show that he has a reputation which is closely associated with the trademark, that the defendant by adopting that trademark or one confusingly similar to it will or has caused confusion in the market-place and that this has led to actual damage to the business or to the goodwill of the trademark owner, or will probably do so unless restrained.
There are 45 classes of goods and services in total according to the Nice Classification. A trademark owner is required to register their trademarks in respect of particular goods or classes of goods either in Part A or Part B of the trademarks register to enjoy the full benefits and protection provided under the law.
Trademarks registrable under Part A are marks which the Registry considers as being inherently distinctive such as to distinguish the proprietor’s goods from others. While trademarks registrable under Part B are marks which the Registry considers as being merely capable of distinguishing the proprietor’s goods from those of others and attract a lesser form of protection.
Defensive Registration of trademark is a form of trademark registration used to prevent trademark infringement. A defensive trademark can be applied for by a trademark owner of a well known trademark for goods or services that are not intended to be used by that owner.
- The proprietor of a well-known mark is allowed to register its mark in unrelated classes to ensure that no other party is allowed to register the same or similar mark in that class.
- The trademark to be registered as a defensive mark must be such that the use of the mark immediately signifies a connection in the course of trade between the mark and those entitled to use the mark.
- Defensive registration protects the uniqueness of a well-known trademark, and it prevents third parties who wish to take advantage of the absence of registration in a particular classes of goods and services and exploit the trademark for unrelated goods or services. This also protects the proprietor’s right in the unrelated classes of goods or services in the event that the proprietor expands their product to that class of goods and services
- Defensive registration of trademarks are usually applicable to popular marks, they may be applicable to unpopular marks provided that the alleged infringing use will create confusion as to the source of the products.
- An owner of a popular trademark need not show that both parties are in a competition. It is irrelevant whether or not goods and services are familiar.
- Defensive Registration gives better protection to well known or popular marks because by it’s allowing registration of trademark in more than one class, and it prevents a third party use of the registered trademark in another class which has the ability to cause confusion between goods or services of the third party and the designated goods or services pertaining to the original trademark owner.
In conclusion, it is advisable that defensive Registration of trademarks should often be considered by owners of famous trademarks, particularly celebrities to ensure an ideal and certain protection under the law.