Post by Trade facilitator on May 19, 2017 13:57:52 GMT 1
In today's competitive world, the benefits of creating, registering and protecting the trademark of a brand are immeasurable. Ranging from building client loyalty to creating brand identity, the value of a trademark as a means of distinguishing goods or services from those of a competitor can be priceless. Trademarks are also effective communication tools and valuable assets that can be sold or licensed by the owner. An article in Fortune magazine quoted Coca-Cola's late Chairman saying, "if all our buildings were destroyed world-wide, we could borrow US$100 Billion and rebuild everything on the strength of the Coke brand". The above quotation summarizes the importance of trademark and the prospective value of branding as part of a company's asset. However, while the trademark of a brand that is identifiable and distinguishable will improve patronage and influence purchasing decisions of consumers, it will also create vulnerability to counterfeiters and infringement by competitors, hence the need to register and obtain a statutory right to protect the trademark.
A trademark is defined in the Trade Marks Act as "a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and the person having the right either as proprietor or a registered user to use the mark, whether with or without any indication of the identity of that person". Simply put, a trademark is a unique mark of a brand used by a person having the right to so do for the purpose of indicating a connection to goods and services in the course of trade. A mark when created must be unique in form and distinctive to be worthy of statutory protection from counterfeiters and competitors. The incorporation of a company or registration of a domain name is often mistaken as conferring exclusive rights to the use of a registered brand name. A brand name must be registered as a trademark under the Trademark Act to prevent the use of a similar or identical mark by a counterfeiter or competitor. Once a trademark is registered, exclusive rights are conferred on the owner of the specific trademark, such that when the trademark is believed to be infringed by another mark that duplicates the trademark or is passing off to confuse the public in respect to the goodwill of the trademark, the owner can activate the statutory protection mechanism to safeguard the registered mark.
To further demonstrate the importance of registering the trademark of a brand, a
reference point is the case between the world's largest distributor of Nigerian entertainment Iroko Partners Ltd owners of Iroko TV and its competitor Iroko TV Movies owners of Afrinolly. In this case, Iroko TV claimed Afrinolly's use of the domain name 'irokotvmovies.com' amounts to an infringement on its trademark name 'irokotv'. Even though the Iroko TV had not completed its registration of the trademark "irokotv", the Administrative Panel of the World Intellectual Property Organization Arbitration and Mediation Centre held that lrokoTVhad a protectable interest at common law and established a prima facie case stating that Afrinolly did not have rights or legitimate interests in the disputed domain name. The registration and use of the disputed domain name by Afrinolly was held to be in bad faith, and the domain name was consequently transferred to Iroko TV.
A patent on the other hand is a set of exclusive rights granted to an inventor for a limited period of time, which protects an invention, innovation or improvement by providing the inventor with exclusive rights that prevent others from making, using, or selling an invention without the consent of the inventor, for a limited period in exchange for the detailed public disclosure of the invention. A patentable invention is defined in the Patents and Designs Act as an invention that "if it is new, results from inventive activity and is capable of industrial application; or if it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial action". The law permits registration of a patent that is new and has the inventive step that is not obvious to someone with knowledge and experience of the subject, and capable of being made or used in some kind of industry. A legal requirement for registering a patent is to completely divulge information about the invention, and in turn the inventor is granted exclusive rights to dismiss anyone from using his invention without his consent. An inventor may have fears of publicly detailing his invention, but the consequence of not obtaining a patent is that the invention is at a bigger risk of being copied with no legal redress for the inventor.
In the case of Uwemedimo v Mobil Producing Nigeria Ltd, the Appellant had sued for an injunction to restrain Mobil from further infringing on its rights as an inventor over an invention, based on an oral agreement between parties that an amount will be paid when Mobil uses the Appellant's invention. The Court however held that for an infringement of patent to be actionable, the infringement must have taken place after the application for registration was made by the inventor or his representative, but not exceeding the statutory limitation period. Consequently, the court held that the Appellant could not sue Mobil until the patent was registered and by the time the patent had been registered, the action was statute barred.
In this information age where information is easily accessible, certain precautions must be taken to safeguard and secure the trademark of a brand or the patent of an invention. The registration of a trademark or patenting of an invention will provide the owner withl a statutory monopoly of the mark or invention within the territorial jurisdiction of the relevant laws; create a valuable asset that can be sold, transferred or license: and protect the trademark or patent against counterfeiters and competitors within the territorial jurisdiction. In our current global village where commerce has an international outlook, it is important to conduct prior research into a mark or an invention before investing in a brand or invention to avoid potential infringement claims and expansion restrictions. It is also advisable for owners of registrable trademarks or patentable inventions, regardless of the size of their business or market space, to register their trademarks or inventions when setting up their ne» business or upon discovering the invention. We at Osibogun & Partners have experience in researching; registering and protecting trademarks and patents in Nigeria.
A trademark is defined in the Trade Marks Act as "a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and the person having the right either as proprietor or a registered user to use the mark, whether with or without any indication of the identity of that person". Simply put, a trademark is a unique mark of a brand used by a person having the right to so do for the purpose of indicating a connection to goods and services in the course of trade. A mark when created must be unique in form and distinctive to be worthy of statutory protection from counterfeiters and competitors. The incorporation of a company or registration of a domain name is often mistaken as conferring exclusive rights to the use of a registered brand name. A brand name must be registered as a trademark under the Trademark Act to prevent the use of a similar or identical mark by a counterfeiter or competitor. Once a trademark is registered, exclusive rights are conferred on the owner of the specific trademark, such that when the trademark is believed to be infringed by another mark that duplicates the trademark or is passing off to confuse the public in respect to the goodwill of the trademark, the owner can activate the statutory protection mechanism to safeguard the registered mark.
To further demonstrate the importance of registering the trademark of a brand, a
reference point is the case between the world's largest distributor of Nigerian entertainment Iroko Partners Ltd owners of Iroko TV and its competitor Iroko TV Movies owners of Afrinolly. In this case, Iroko TV claimed Afrinolly's use of the domain name 'irokotvmovies.com' amounts to an infringement on its trademark name 'irokotv'. Even though the Iroko TV had not completed its registration of the trademark "irokotv", the Administrative Panel of the World Intellectual Property Organization Arbitration and Mediation Centre held that lrokoTVhad a protectable interest at common law and established a prima facie case stating that Afrinolly did not have rights or legitimate interests in the disputed domain name. The registration and use of the disputed domain name by Afrinolly was held to be in bad faith, and the domain name was consequently transferred to Iroko TV.
A patent on the other hand is a set of exclusive rights granted to an inventor for a limited period of time, which protects an invention, innovation or improvement by providing the inventor with exclusive rights that prevent others from making, using, or selling an invention without the consent of the inventor, for a limited period in exchange for the detailed public disclosure of the invention. A patentable invention is defined in the Patents and Designs Act as an invention that "if it is new, results from inventive activity and is capable of industrial application; or if it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial action". The law permits registration of a patent that is new and has the inventive step that is not obvious to someone with knowledge and experience of the subject, and capable of being made or used in some kind of industry. A legal requirement for registering a patent is to completely divulge information about the invention, and in turn the inventor is granted exclusive rights to dismiss anyone from using his invention without his consent. An inventor may have fears of publicly detailing his invention, but the consequence of not obtaining a patent is that the invention is at a bigger risk of being copied with no legal redress for the inventor.
In the case of Uwemedimo v Mobil Producing Nigeria Ltd, the Appellant had sued for an injunction to restrain Mobil from further infringing on its rights as an inventor over an invention, based on an oral agreement between parties that an amount will be paid when Mobil uses the Appellant's invention. The Court however held that for an infringement of patent to be actionable, the infringement must have taken place after the application for registration was made by the inventor or his representative, but not exceeding the statutory limitation period. Consequently, the court held that the Appellant could not sue Mobil until the patent was registered and by the time the patent had been registered, the action was statute barred.
In this information age where information is easily accessible, certain precautions must be taken to safeguard and secure the trademark of a brand or the patent of an invention. The registration of a trademark or patenting of an invention will provide the owner withl a statutory monopoly of the mark or invention within the territorial jurisdiction of the relevant laws; create a valuable asset that can be sold, transferred or license: and protect the trademark or patent against counterfeiters and competitors within the territorial jurisdiction. In our current global village where commerce has an international outlook, it is important to conduct prior research into a mark or an invention before investing in a brand or invention to avoid potential infringement claims and expansion restrictions. It is also advisable for owners of registrable trademarks or patentable inventions, regardless of the size of their business or market space, to register their trademarks or inventions when setting up their ne» business or upon discovering the invention. We at Osibogun & Partners have experience in researching; registering and protecting trademarks and patents in Nigeria.
