Search mechanism to avoid trademark/design conflicts under discussion

A new search mechanism is currently being discussed at the Trademarks Registry.

In Alliance International Limited v Saam Kolo International Enterprises Ltd, the Federal Court of Appeal upheld the principle that a design registration is not a justification for the use or infringement of a trademark belonging to a third party.

The court also held that certificates of trademark and design registration are not superior to each other. These certificates are issued for different purposes and perform different functions. While a certificate of trademark registration protects the integrity of the product, a certificate of design registration protects the creativity of the product's design.

In a developing country such as Nigeria, where the knowledge and awareness of intellectual property and of the distinction between the various types of IP rights (eg, patents, trademarks, designs and copyright) are still poor, this decision came as a welcome relief for practitioners.

In this case, the appellant (originally the defendant), as a defence to a claim of trademark infringement, contended that, at the time of manufacturing and selling the infringing products, it had already obtained a design registration for the mark for which the respondent had a trademark registration. Therefore, the appellant contended that the design registration automatically gave it the right to use the trademark of the respondent.

In the Federal High Court, the respondent (then plaintiff) had obtained judgment against the appellant for infringement of its trademark, which had been registered in Nigeria since 1980.

Before the Federal Court of Appeal, the appellant requested that the decision of the Federal High Court be quashed, essentially basing its defence on the claim that it was justified to use the mark. The appellant argued that its design registration was superior to the respondent's trademark registration.

The respondent’s counsel made the following submission:

"A trademark protects the integrity of the design, whereas a design certificate protects the creativity of the design… the essence of a certificate of design registration is not an answer to a charge of trademark infringement because the possession of a certificate of design registration does not confer the right to use a sign that has been registered as a trademark… the registered design must be new and original."

On May 14 2010 the Court of Appeal gave its judgment. Clarifying the legal effect of a certificate of trademark registration and of a certificate of design registration, and upholding the respondent’s argument, the court stated as follows:

• Of the two types of certificate, neither is superior to the other; they are issued for different purposes and perform different functions.
• The possession of a certificate of design registration does not confer the right to use a sign registered as a trademark.

This case is likely to become the locus classicus for matters of this nature and will also serve to educate officials at the Nigerian trademarks and designs registries, who often allow parties which have no legal rights to a trademark to file and register it as a 'design’, so that they can infringe the trademarks of others. 

In line with this development, it is reported that a search mechanism is currently being discussed, which would enable searches to be conducted at the Trademarks Registry when design applications are being filed to ensure that the corresponding mark has not already been filed and/or registered as a trademark.

This is a very welcome initiative which should help reduce the number of trademark infringement cases in Nigeria - trademark infringement continues to be an issue of importance among practitioners and owners of genuine IP rights.

Uwa Ohiku, Jackson Etti & Edu, Lagos