Protection of popular trademarks: A legal recourse

Establishing the notoriety of a trademark will offer broader protection whether or not it is registered, says Izuchukwu Chinedo of Inventa.

Popular trademarks are those trademarks that are easily recognisable and are immediately attributed to a particular product or service in the minds of the consumers. 

Popular trademarks bring about huge commercial value to their owners as they act as a marketing tool. Given its widespread reputation, it enjoys broader protection compared to an ordinary trademark regardless of whether or not they are registered, especially with reference to goods and services that are similar or identical to those that have gained such reputation. The notoriety of such products or services protects them from infringements.

Examples of such trademarks include Coca-Cola, Google, Louis Vuitton, Victoria Secret, Apple, Nike and McDonalds.

In Nigeria, trademarks enjoy legal recognition and protection after it has been registered. Where a trademark is duly registered, the owner of such trademark can bring an action for trademark infringement to enforce his right. However, popular or well-known trademarks are also recognisable whether or not they have been registered.

Legal evaluation of popular trademarks:

Nigeria is a contracting party to the Paris Convention for the Protection of Industrial Property 1883 as well as the Patent Law Treaty. 

Article 6bis of the Paris Convention reads: “The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a trademark considered by the competent authority of the country of registration or use to be well known in that country as being already the trademark of a person entitled to the benefits of this Convention and used for identical or similar goods. 

"These provisions shall also apply when the essential part of the trademark constitutes a reproduction of any such well known trademark or an imitation liable to create confusion therewith”. (Underlined for emphasis).

The Nigerian Trademarks Act (Section 32 of the Trademarks Act) is to the effect that; where a trademark in regard to familiar goods consists of an invented word and has become so well-known that its use in relation to other goods would be likely to cause confusion, it may be registered in respect of those goods as a defensive trademark. Familiar goods can be described as goods for which the trademark is registered and in relation to which it has been used.

Section 32 (2) provides that the registered proprietor of a trademark may apply for its registration in respect of any goods as a defensive trademark.

The WIPO Joint Recommendation 1999 by its article 3 (1) provides thus: “[Protection of Well-Known trademarks] A member state shall protect a well-known trademark against conflicting trademarks, business identifiers and domain names, at least with effect from the time when the trademark has become well known in a member state”.

Article 4 makes provision for conflicting trademarks, which is to the effect that a trademark shall be deemed to be in conflict with a popular trademark if it constitutes an imitation, transliteration or a reproduction of same and it is liable to cause confusion of the well-known or popular trademark.

Nigeria is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) and this agreement protects popular trademarks internationally. Art. 16(1) TRIPS agreement provides thus; “Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the trademark obtained.”

The effect of the TRIPS agreement on Nigeria, as well as other international treaties that have not been ratified into our laws, is that it has a persuasive import since its provisions have not been domesticated in Nigerian laws.

From the foregoing, it is evident that popular trademarks are protected by statute.

Popular trademarks and the common law tort of passing-off:

The most common way of protecting a popular trademark is by invoking the common law tort of passing off.

An action for Passing off is usually instituted against deceit. It involves the imitation of a trademark adopted by a person relating to specific goods and services which have acquired a distinctive reputation in the market and are known or can be traced to a particular person as the owner of the trademark.

Where it can be established that a trademark is popular or well known, and that such brand associated with the trademark enjoys the goodwill of the public, a misrepresentation by a defendant leads to public confusion regarding the products and services, causing loss to the plaintiff, will amount to the common law tort of passing off. The owner of the right to such a popular trademark can institute an action in court.

Factors to consider before a trademark is recognized as popular or well known:

There are certain factors that will be considered before the trademark can enjoy the privileges of a popular or well-known trademark. These factors are encapsulated in Art. 2 of the WIPO Joint Recommendations, and they are hereunder listed:

1. The degree of knowledge or recognition of the trademark in the relevant sector of the public.

2. The duration, extent and geographical area of any use of the trademark.

3. The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the trademark applies.

4. The duration and geographical area of any registrations and/or applications for registration of the trademark, to the extent that they reflect use or recognition of the trademark.

5. The record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark was recognized as well known by competent authorities.

6. The value associated with the trademark.

Trademark applications made in bad faith:

A trademark that has enjoyed goodwill based on the notoriety of its reputation is protected even in jurisdictions where the trademark is not registered. If a registered trademark is popular and someone other than the trademark owner applies for an identical or similar trademark that may appear confusing to the general public in a jurisdiction where the popular trademark is yet to be registered, the application for the registration of such trademark may be rejected as an application made in ‘bad faith’. 

This is because such an application may be done to prevent the legitimate trademark owner from entering the market or in a bid to profit from the popular trademark owner’s reputation.

As earlier established, popular trademarks are those that have an immediate connection in the minds of consumers of such products and services. An owner of a trademark who is asserting that his trademark is popular, will have to establish that the said trademark is viewed by consumers as having the popularity status and that the trademark is distinctive. 

The volume of sales, use and license of such a trademark, the duration it has been in use and the absence of third-party usage of the same trademark are some of the analyses that will be made in order to arrive at a conclusion that the mark under contention, is a popular trademark.

Izuchukwu Chinedo is a trademark and patent attorney at Inventa Nigeria. He can be contacted at ichinedo@inventa.com