Non-domestication of TRIPS Agreement and the Paris Convention means no protection yet for well-known marks in Nigeria

Last month, the Federal High Court of Nigeria (Abuja division) delivered 2 judgments in two trade mark registration cases involving Fan Milk International A/S (Fan Milk) and Mandarin Oriental Services B.V (Mandarin Oriental). Both cases dealt with the questions of (i) what constitutes the appropriate test in determining similarities between a registered trade mark and a mark proposed to be registered and (ii) whether Nigeria affords protection for well-known marks in view of its ratification of the TRIPS Agreement and the Paris Convention in that regard. In both cases, the Federal High Court found that the similarity test under Section 13 of the Nigerian Trade Marks Act does not require a side-by-side comparison of the two marks and the protection of well-known marks is not available in Nigeria in so far as the legislature is yet to enact a law to domesticate the TRIPS Agreement and the Paris Convention.

The issues for determination

In Fan Milk International A/S v Mandarin Oriental Services B.V (Suit No FHC/ABJ/CS/791/2020) [hereafter, “Suit 791”], Fan Milk contended that it is the owner of the trade marks FAN & Device in Classes 29, 30 and 32 and that the Mandarin Oriental’s proposed FAN Device trade mark although filed in a different class (Class 43) is very similar to its (Fan Milk’s) trade marks and likely to cause confusion for consumers as to the source of Mandarin Oriental’s services/products. Fan Milk therefore argued that the Registrar of Trade Marks should have upheld its opposition and refused to register the trade mark proposed by Mandarin Oriental. 

Image by Jeremy de Beer

In Fan Milk International A/S v Mandarin Oriental Services B.V (Suit No FHC/ABJ/CS/792/2020 [hereafter, “Suit 792”],, the claims and the issues were the same as those in Suit 791 save that Mandarin Oriental’s proposed mark in Suit 792 related to Class 36.

In delivering its judgment, the Federal High Court considered the following:

i) The appropriate conditions under which it may be held that 2 marks are identical or so nearly resembling as to cause confusion: The court held that only the marks alone are to be considered devoid of any associated features and more importantly that the question is not whether looking at the 2 marks side-by-side, there would be confusion. Instead, the question is whether any person seeing the proposed mark in the absence of the other trade mark would likely be confused or deceived. By extension, overall similarity is the test and not similarity on “each and every minute detail”. The court held that the two marks in questions were neither identical/similar nor likely to deceive or cause confusion. In this regard, the court pointed that Fan Milk’s marks are quite distinctive and visually different from that of Mandarin Oriental that the dissimilarities would be evident to the average consumer.

ii) The significance of the 2 marks being in different classes vis-à-vis Section 13(1) of the Trade Marks Act: Section 13(1) of the Trade Marks Act provides that: “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 to the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion”. The court stated that the correct interpretation of this section was that the registration of a trade mark would only be rejected if it is identical with or so nearly resembles a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods. Since Fan Milk’s trade marks were for goods described in Class 29, 30 and 32 and Mandarin Oriental’s proposed mark was for services (not goods) described in Class 43 in Suit 791 and Class 36 in Suit 792, registration could not be rejected. 

iii) As already noted above, the court considered the applicability of the provisions of the TRIPS Agreement and the Paris Convention relating to the protection of well-known marks in Nigeria when these international treaties have not been enacted into local law in Nigeria. The court noted the decision of the Court of Appeal in The Procter and Gamble Company v. Global Soap and Detergent Industries Limited and the Registrar of Trade Marks, where the Court of Appeal noted that "...the jurisprudence that seems to run through our case law in Nigeria has favoured liberalism in interpreting the Trade mark Act to favour a proprietor of a named brand. I am persuaded by that approach I feel that Nigerian courts must align with the comity of nations to protect well known trademarks. We must enforce the Trade marks laws and understand the raisen detre of the laws which ensures protection of brand names from imitation and the like. The Appellant’s trade mark is not only well-known internationally, it has also been the subject of prior legal registration under the Trade Marks Act in Nigeria. I feel strongly that the Trade mark Ariel associated with the appellant should enjoy the protection of the courts".

The Federal High Court held that the statement was a “feeling” expressed by his lordship, Ogunwunmiju Justice of the Court of Appeal (as he then was). The Federal High Court held that the correct position of the law and more significantly the Nigerian Constitution was that so long as the 2 international treaties have not been enacted into local law, they were not enforceable in Nigeria. 

Comment

Apparently, the two cases here would not be the first time the question of protection of well-known marks in Nigeria vis-à-vis the absence of local law domesticating the TRIPS Agreement and the Paris Convention would come up for judicial interpretation. It appears that the courts are reluctant to provide express judicial backing for the protection of well-known marks pending or in the absence of legislative provision for such protection. 

However, similar to the Procter and Gamble case, the Federal High Court appeared to have given a 'nod' to some recognition of well-known marks when it offered some interpretation of the provisions of the TRIPS Agreement and the Paris Convention relating to the protection of well-known marks in Nigeria. In this regard, the Federal High Court stated that the protection under those treaties relates to “marks that are identical or that resemble the well-known marks” and so would not apply to the present case since the marks in question have been held to be neither identical nor resembling each other.