Movie titles and character titles as trade marks? Nigeria's Trade Marks Tribunal weighs in

A recent dispute in Nigeria over trade mark registration and possible proprietorship over a movie title and a title character has brought to the fore questions regarding the processes and procedures at the Trade Mark Registry and whether movie titles and title characters without more should be registrable as trade marks in Nigeria.

Facts

In 1996, a film producer, Zeb Ejiro produced a movie titled ‘Domitila’ based on a screenplay which he also authored. There was also a sequel written, produced and directed by Zeb Ejiro in 1999 starring the same cast and others. Actress, Anne Njemanze played the character ‘Domitila’ which was her alias in the movie for her moonlighting job as a prostitute (in the movie). The movie was one of the most popular films of its time such that most Nigerians understood the use of ‘Domitila’ as slang for ‘prostitute’. [This Kat was present as godmother during a baptismal ceremony in 2010 and another parent (not my goddaughter's) who proposed ‘Domitila’ as her daughter’s baptismal name, received several queries of “are you sure” from the priest.] 

Photo by Riana Harvey

Over a decade later, the movie producer Zeb Ejiro decided to produce a remake or “reboot” of the ‘Domitila’ movie. [He won’t be the first; Nollywood has recently produced remakes of some classics - Living in bondage; Rattlesnake; Nneka the pretty serpent; etc.]. Ejiro approached Njemanze to play ‘Domitila’ again and they started negotiations for her fees. Negotiation fails. Enter trade mark wahala issues.

At the Federal High Court

Ann Njemanze filed an application for trade mark registration of DOMITILA sometime in 2022 and was issued with a notice of ‘acknowledgement’ and ‘acceptance’ of application. [According to the Trademarks, Patents and Designs Registry, one would receive an acknowledgement of filing of an application immediately upon making/filing an application for trade mark registration. Acceptance of an application would be available in 2 weeks from the date of filing an application for trade mark registration. As a practice, folks can do a lot with these acceptance notices. For example, the National Agency for Food and Drug Administration and Control (NAFDAC) permits the use of the acceptance notices to proceed with registration of food and drug products with the agency pending the receipt of trade mark registration certificate. However, everyone who should know is aware that the notices are not substitutes for the registration certificate. But then, the process from receiving acceptance notice to trade mark registration certificate is lengthy hence accommodations such as those made by NAFDAC]. 

Based on the acknowledgement and acceptance notices, Njemanze approached the Federal High Court for an order of interim injunction to restrain the production and release of the Domitila remake titled “Domitila: The Reboot” pending the determination of the substantive suit. She also made an application for Anton Pillar orders regarding the production and release of “Domitila: The Reboot”. These applications were made ex parte with the former made as a vacation matter to be heard urgently by a vacation Judge. The court refused both applications: the interim injunction on the grounds that such injunctions are made to last pending the hearing of a motion on notice and not till the conclusion of the substantive suit as requested by the applicant. The Anton Pillar application was refused on grounds that there was no urgency (the applicant had requested hearing during the Christmas vacation but did not proceed with her application only to come back again during the Easter vacation).

The Trademarks Tribunal

Meanwhile, Ejiro opposed the proposed registration of DOMITILA in Class 41 (Education; providing of training; entertainment; sporting and cultural activities) by Njemanze alleging that as the copyright owner of the movie and the scriptwriter who created the title character, Domitila, he is the proprietor of the trade mark and has goodwill in the word, Domitila. Further, that Njemanze’s application for registration was made in bad faith as a result of her participation in the Domitila movie.

The tribunal issued a ruling refusing Njemanze’s application and agreed with Ejiro that he is the “true proprietor” of the trade mark DOMITILA in Nigeria and entitled to registration under the Trade Marks Act. The Tribunal also made an order cancelling the acceptance notice earlier issued to Njemanze.

Comment

As proof of proprietorship under section 18 of the Trade Marks Act, the Tribunal was satisfied with Ejiro’s evidence of copyright ownership of the Domitila movie and screenplay for the Domitila movie and evidence that Njemanze performed in the said movie. 

The Tribunal noted that Njemanze’s claim to the proprietorship of the trade mark was the “Acknowledgment” and “Acceptance” letter issued to her by the Trade Mark Registry. It held that this did not satisfy the requirement of Section 18 of the Trade Marks Act which admits only proprietors of trade marks to apply for the registration of such trade mark. According to the Tribunal relying on the English case of AL BASSAM Trade mark, the proprietor of an unregistered trade mark which has been used in conjunction with goods is the person who first used the mark. The Tribunal rejected Njemanze’s evidence that since playing Domitila, most people did not know her by her real name and refer to her as Domitila.

It appears from the Tribunal’s ruling that bad faith and/or dishonesty could play a role in establishing “true proprietorship” and entitlement to apply for trade mark registration. According to the Tribunal, the fact that Njemanze played Domitila in the movie suggests that her application was made in bad faith and a “trade mark should not be registered if the application is made in bad faith or intended to traffic another person’s trade mark”. 

In cancelling the “Acknowledgment” and “Acceptance” notices issued to Njemanze, the Tribunal relied on section 22 of the Trade Mark Act. [Section 22 requires the Registrar to register a trade mark if the application for registration has been accepted and no opposition was filed or the time for opposition has expired or an opposition procedure has been filed and it failed unless the acceptance of the application was made in error]. Given the wording of s.22, it seems to this Kat that the refusal indicated in the Ruling was sufficient and there was no need to actually issue an order cancelling the acceptance notice. Such cancellation appears to “elevate” acceptance notices unnecessarily. 

One last thing: is Ejiro then entitled to apply for the registration of the DOMITILA trade mark simply on the basis that he made movies with Domitila as the title? In the dispute over Netflix’s Bridgerton series involving performers, Bear and Barlow, Netflix asserted that it not only owned copyright in the movie series but that it had also “expanded Bridgerton beyond the series” through merchandising and other themed events. While an actor’s performance can elevate the popularity and thus, market value of a movie title or character title, that does (should?) not confer trade mark or copyright ownership of the work on such actor. (Actors as performers do have performer's rights.) That said, when it comes to trade mark protection of a movie title, it seems to this Kat that a movie producer may need to do more to qualify for trade mark registration of their movie title. The point of trade mark protection is use in the course of trade and indication of source or origin. Movie titles, strictly speaking, would not be serving those purposes.

* There is no central repository to access decisions of the Federal High Court and/or the Trade Mark Tribunal. This Kat is thankful to Ejiro’s counsel, Rockson Igelige who upon her request, obliged her with copies of the court’s and tribunal’s decisions.