REGISTERED COMPANY NAME VS REGISTERED TRADEMARK: A CRITICAL APPRAISAL
IFEANYI EMMANUEL OKONKWO IP & TECH; CORPORATE LAW & LITIGATION STILLWATERS LAW FIRM
[email protected] +2348080603002
THE PROBLEM When a company is incorporated, the name as registered with the Corporate Affairs Commission becomes protected from any other person/company wishing to register the same, identical or deceptive name at the Corporate Affairs Commission (CAC).1 The Act prohibits the registration of a company name which in the opinion of the CAC would violate any existing trade mark registered in Nigeria unless the consent of the owner of the trademark has been obtained.2 Unfortunately, the office of the CAC and the Trademark Registrar are not synced but rather distinct from each other. Such is the structure and practice in Nigeria presently. For the CAC to form the required opinion and possibly deny registration, it must conduct a search at trademark office. Such costs for search, time and process, again, is what the CAC will not subject itself to. Again, many companies are ignorant and may have ill-advisers who do not understand the relationship and distinction between the CAMA and the Trade Marks Act. The unfortunate repercussion therefore, is that we have series of company names which are in violation of the Trade Marks Act. Thus, the essence of protecting the Intellectual property of a person/company is jeopardized. Also, loss of finance and goodwill becomes the order of the day. Legal battles erupt in our courts and many innocent companies/business, suffers for it. It is instructive to note that CAMA does not protect a company’s name from being used, but rather prohibits a company’s name from being registered! So, there is no redress under CAMA for a company who complains that its name is being used by another as to cause loss of goodwill and finance. No! such lamentation can only be brought under the Trade Marks Act (if registered) and/or common law tort of passingoff. Hence, what happens where a name is first registered with CAC and the same or identical name is registered by another person at the trademarks registry? Does registration at the trademarks registry supersede registration at the CAC? Can a registered name under the CAC be used as a basis for opposing registration at the trademarks registry? Does the CAMA and the Trade Marks Act allow concurrent use 1
Section 30(a) Companies and Allied Matters Act, Cap C20, Laws of the Federation of Nigeria, 2004. (hereafter referred to as CAMA. 2 Section 30(d) CAMA
even where there is bound to be grave confusion, loss of goodwill and finance? Is the essence of Intellectual property protection not lost? EVALUATION OF THE LAW Now, the position of the law is that it is unlawful for any person to carry on business in Nigeria without registering the name (incorporating the company) where such name does not fall under the exempted/restricted names that may not be registered. Simply put, except a company’s name has been first registered, it cannot carry on business in Nigeria.3 Where it is a foreign company, it must also first register itself except it falls under the exempted categories.4 If it is a business name, it can be allowed to commence business within 28days after commencement of business but must within the period begin its registration process.5 By virtue of section 30(d) CAMA, the CAC may refuse registration of a name where it finds in its opinion, that such a name would violate any existing trade mark or business name registered in Nigeria unless the consent of the owner of the trade mark or business name has been obtained. The purport of this section is that an existing registered trade mark (or business name already registered by the CAC or any other law) can be used to prohibit the registration or to provoke the change of a company’s name!6 And where it is so found, that is the end of the matter! Bolanle of ipiwatch and Mandy Gordon of Adamsadams reached the same conclusion7 after considering the Federal High Court decision in Nigeria which delve into the matter for the first time. 8 Although, they discussed the matter in a much narrow sense. It is also to be appreciated that what the CAMA has done is to recognise intellectual property rights in business activities. Under the Trade Marks Act (TMA), any person claiming to be a proprietor can apply for the registration of a trademark (name).9 Infact, such a person need not be a company or show evidence of registration. One of the rationale is that, such a person may not yet be carrying on business for profit or gain yet. Such a person may simply be a manufacturer who intends to go into business and wish to protect its intellectual property first. Section 9 of the TMA mandates that such a name must be distinctive. It is distinctive where any of the following happens: a. Name of a company, individual, or firm represented in a special or particular manner b. Signature of applicant/predecessor c. Invented word(s) d. Word(s) having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or surname e. Any other distinctive mark 3
Section 19, CAMA Sections 54 and 56 CAMA 5 Section 574 CAMA 6 Section 31(4) CAMA 7 http://www.ipiwatchservice.com/articles/article_8.pdf 8 Mr Price Group Ltd & Anor v. Mr Price West Africa Ltd & Ors - Suit No: FHC/L/CS/1044/2012 9 Section 18(1) Trade Marks Act, T13, LFN 2004 (hereafter referred to as TMA). 4
Distinctive means adapted to distinguish goods from others. It is distinctive either inherently or by use. Thus, the reasons why registration will not be recognised or valid under the Trade Marks Act are: a. Where the person is not the proprietor10 b. Where the mark(name) is not distinctive11 c. Where the trade mark (name) sought to be registered is identical or resembling existing registered trademark.12 d. Where the name is a name of a chemical substance13 e. Where the name is a scandalous design, or by reason of its likelihood of deception/confusion, disentitled to protection in a court of justice or contrary to law or morality.14 The Trade Marks Act however stipulated that a registration of a trade mark shall not interfere with bona fide use by a person of his own name or place of business or bona fide description of its character or quality of goods.15 Also a honest concurrent use or special circumstances may be allowed by the Court or Registrar subject to conditions that may be imposed.16 The problem is that ‘interfere’ as used was not and has not been defined. Does it mean that such a bona fide user can object to the registration of the name? or that a registered proprietor cannot successfully bring an action against the bona fide user? FINDINGS/CONCLUSION The CAMA and the Trade Marks Act are not in contradiction rather they complement each other. A careful look at both Acts, reveals that the assumedconflicting scenarios are in fact, not so. A person or company, though not incorporated/registered, claiming to be the proprietor of its goods, can apply for a name to be registered as a trade mark. Once registered, protection under section 5 of the TMA is invoked. Should there be another company who has registered or is about to register the same or similar name with the CAC, the first company can apply to CAC to order that company to change its name or refuse the registration of such name. However, should the registration of the company name with CAC be the first in time (or even at the same time), the registered proprietor in trade mark, cannot successfully move the CAC to change the company’s name. Should the registered proprietor bring an action under the Trade Marks Act, the Court/Defendant would and should invoke the principle and defence of concurrent or bona fide use of name! On the other hand, a registered name with the CAC cannot be the basis to challenge a registered trade name. Simply put, the registration with the CAC can only 10
Section 18 Section 9 12 Section 13 13 Section 12 14 Section 11 15 Section 8 16 Section 13(2) 11
be used as a shield not a sword! This is because the CAMA does not prohibit the use of but the registration of similar names. Of course, where the conflicting names are purely matters that rest with the CAC (not the Trademark Registrar), then the latter registered name can be challenged to change its name. It is doubtful whether any cost or damages can ensue from the latter company since logic would rather hold the CAC responsible. It is instructive to remember that what the CAC is mandated to advert its mind to while registering company names is the trade mark or business name that is registered in Nigeria! Bearing this in mind, it will be absurd to think that the user of a name at common law can apply to ask the CAC to order the change of a similar name under the CAMA. However, such user at common law is recognised in the Trade Marks Act and may bring a passing-off action17 at the State High Court (He cannot come to the Federal High Court except its/opponent trademark is registered). Whether such user will succeed however, is the billion-dollar question.
17
Section 3 and section 11 TMA
