Supreme Court clarifies jurisdiction for passing off issues

Nigeria

The Supreme Court of Nigeria has refused to rule on the substantive appeal of Ayman Enterprises Limited v Akuma ((2003) 13 NWLR PT836 P22) on the grounds that the Federal High Court (FHC) had lacked jurisdiction to hear and determine a dispute over an unregistered trademark at first instance.

Section 251(1)(f) of the 1999 Constitution vests the FHC with exclusive jurisdiction over any federal enactment relating to copyright, patent, designs, trademarks and passing off, among other related rights. By extension, the FHC has over the years assumed jurisdiction over all trademark matters relating to:

  • the infringement of registered trademarks;

  • joint causes of action for the infringement of a registered trademark and passing off; and

  • purely passing off matters.

This, however, has caused some controversy: while the Trademarks Act is deemed to be the federal enactment regulating trademark matters, there is presently no federal enactment regulating passing off. Also, Section 3 of the act makes it clear that unregistered trademarks are excluded from the jurisdiction of the FHC, limiting such matters to the State High Courts.

The Supreme Court in this case re-affirmed its earlier decision in Patkum Industries Ltd v Niger Shoes Manufacturer Ltd ((1985) 5 NWLR PT93 P183). It held that the FHC has jurisdiction over registered trademark claims and actions involving both registered and unregistered trademarks. However, where the issues relate solely to an unregistered right, the case falls under the jurisdiction of the State High Courts.

Folasade Laniyan, Jackson Etti & Edu, Lagos

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