What is a Trademark?

A Trademark is simply a registered mark capable of differentiating the goods or services of a business or person from those of other businesses or persons.

A Trademark is a mark used or proposed to be used in relation to goods for the purpose of indicating a connection between the goods and some person having the right either as proprietor (owner) or as registered user to use the mark.²

A Trademark can also be a distinctive mark which would indicate to a buyer/user of a thing bearing that mark, the means of getting the same thing in future by getting something with the same mark on it. The ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these.³

Who registers a Trademark?

The Registrar of Trademarks will register a mark on an application by the proprietor and after making all the searches and investigations as provided for in the Trademarks Act.⁴
He will, at first, issue an acceptance letter stating the mark has been accepted and that it will be published or advertised in accordance with the Trademarks Act and subsequently he will issue the Certificate of Registration of Trademark.⁵ The newly registered trademark can be found in the Register of Trademarks and lasts for an initial period of seven years but same can be renewed by the proprietor/applicant.

What is the most important condition for registering a mark as a Trademark?

The most important condition is that the mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion i.e. it must not be similar to an existent mark. In other words, it must be ‘distinct’.

In a case, the Court decided that a proposed trademark of the word "CASORINA" will confuse the public as it was similar to "CASTORIA"⁶. In another case, the Court decided that the word “GLUCOSAID” is calculated to confuse and deceive the public in its sound in consideration with the registered "LUCOZADE”⁷. In both cases above, the marks were not distinctive enough.

What does it mean for a Trademark to be distinct?

An important condition for a mark claimed to be a Trademark is that it identifies the goods of a particular merchant and can differentiate them from the goods of others.

A word, symbol, shape or colour serving this purpose is said to be distinctive e.g. the Coca-Cola writing and its bright red packaging/background will distinguish it from other types of Cola drinks and as such, the word “Coca-Cola” and the red background design can be said to be distinctive.

Some marks are inherently distinctive while others only acquire distinctiveness over time. A distinctive mark may lose its distinctiveness over time and become generic.

Once the Trademark, by frequent use, has become known to the common knowledge and common and easy identification of persons, it will be said to have acquired the character of distinctiveness.⁸

What is the effect of registering aTrademark?

The effect of the registration of a trademark is that it will entitle the proprietor to sue for any unlawful use (infringement) of the Trademark. Registration gives the owner the exclusive use of the Trademark and also the right to sue where another produces goods bearing that trademark or renders services with such trademark.⁹ If without the proprietor’s consent anyone else uses an identical mark or one so nearly resembling his trademark as to be likely to deceive or cause confusion, this will entitle the proprietor to sue for infringement of Trademark.¹⁰

How do I prove infringement of my Trademark?

To prove infringement, you must first establish your title either as proprietor or as a registered user entitled to sue, after which you must prove that the other person (defendant) has acted or threatens to act in a way as to infringe the right conferred upon you by the registration of your trademark.¹¹

Where it is a trademark of words alone, the sound of the mark is important. To prove infringement, both words are pronounced to discover if they sound similar,¹² e.g. GLOCOSAID and LUCOZADE, ELECTROLUX and ELECTRIX. If the words sound similar, it can be said there has been an infringement by the proposed or new mark.
Where it is a designed mark, in deciding whether two marks are confusingly similar, the issue is whether the person who sees or has seen the proposed trademark will confuse it with the existing trademark, as to create confusion and be deceived that the proposed trademark is the same as the existing one.¹³> In a case, social media giant, Facebook, was sued by Current (a start-up Bank), over the logo of Facebook’s subsidiary Calibra, which bore a suspicious resemblance to Current’s logo.¹⁴
In another case, it was decided that a person of average intelligence seeing and/or hearing the sound of the words "MANA LIQUID SOAP" cannot confuse them with the Trademark of "MAMALEMON".¹⁵>

It is not whether if a person is looking at two marks side by side there would be a possibility of confusion; it is whether the person who sees the proposed mark in the absence of the other mark, and in view only of his general recollection of what the nature of the other mark was, would be likely deceived and to think that the mark before him is the same as the other, of which he has a general recollection.¹⁶>

Can there be two identical Trademarks on the Trademark Register?

It is possible for two identical Trademarks to be on the Register when the parties have used the mark independently and each party has done so in good faith.¹⁷

Where my Trademark has been infringed by another registered Trademark, how do I remove such infringing Trademark?

This is done by filing an application for the removal or revocation of the trademark of a registered owner before the Registrar of Trademarks or before a Court, but never before both at the same time.¹⁸

Can I consent to an infringement of my Trademark?

Yes. In a case, a party sued the defendants for infringement of trademark, the defendants defended themselves by saying the party had acquiesced to the use of the infringing trademark. The Court decided that since the defendants had used the infringing trademark since 1958 and since they had done good business without opposition; their use of the trademark was honest and concurrent. The Court further stated that the party openly acquiesced in the concurrent use of the trademark similar or indeed identical with their own for a considerable length of time and it would be unjust at this time (about 14 years later) to ask the defendants to stop using the mark. The Court thus refused to remove the infringing trademark from the Register.¹⁹

What happens when someone infringes on my trademark and I do nothing?

As seen above, acquiescence in the infringement on your part is a complete defence for the defendant if your acquiescence amounts to consent; but acquiescence can only be inferred and amount to consent, if it is shown you had knowledge of your trademark being infringed and you did nothing for a considerable length of time. It is to be noted that even if it is shown that you know of the infringement, the Court will not readily infer that you have assented to what is likely to be so detrimental to your property.²⁰

In the case above, it was manifest that the defendants had used their infringing mark for many years during which their business had acquired a good deal of reputation within the same market in which the party claimed his own goods were distributed. Surely it must have come to the notice of the party that the defendants were using as of right a trademark identical with theirs. It was manifest from these facts that the failure by the party to object to the use by the defendants of the mark is tantamount to a surrender by them of their right to question the concurrent use of the same trademark by the defendants.²¹

What happens when I do not use my registered trademark?

Failure to use your trademark may lead to an application for its removal being filed and granted. This application may be filed by any concerned person to a Court under certain conditions. These conditions must exist in other to make a finding of non- use of a Trademark. They are: At the time of registration, the trademark was registered without bona fide intention to use it and, there has been no bona fide use of it since it was registered up to one month before the filing of the removal application; or Up to a month before the removal application is made, there has been no bona fide use of the Trademark for 5 years or longer even if it was once used.²²

If any of the above conditions exist, the application for removal of the trademark will be granted and the trademark will be removed from the Register.

The information provided in this Article is not intended to constitute legal advice; instead, all information herein is for general informational purposes only. Readers are advised to contact a Lawyer in respect to any particular legal matter contained in this Article.