INTELLECTUAL PROPERTY : THE LEGAL IMPLICATIONS AND POSSIBLE REMEDIES FOR THE INFRINGEMENT OF TRADEMARKS AND TRADENAMES
What is Passing Off?
Passing off is described as an unfair competition by misrepresentation or literally speaking "the cause of confusion or deception". Generally, an action for Passing off arises where the deception is made in the course of trade, which could lead to confusion amongst customers. This applies to both ecommerce businesses and businesses with physical addresses.
Another definition of Passing off is the act or an instance of falsely representing one's own product as that of another in an attempt to deceive potential buyers. Passing off is actionable in tort under the law of unfair competition.
Passing off and Trademark Infringement
It is necessary to state that Passing off and trademarks infringement go hand in hand and are very similar in nature. Whilst passing off is an action on unregistered marks that have become notoriously attributable to a person or company, a trademark infringement action usually involves a registered mark. This means that a mark, brand, design, name must be registered as a trade mark before one can make a claim on trade mark infringement.
Jurisdiction of the Courts
An action for infringement of registered trademarks should always be instituted in the Federal High Court only because the action arises in relation to a Federal enactment which is the Trade Mark Act. However, the courts have variant decisions on the jurisdiction of the courts on Passing off actions.
In Patkun Industries Ltd. v Niger Shoes Ltd, a 1988 decision, the Supreme Court held that the Federal High Court has jurisdiction in trademarks infringement and Passing off actions stemming from the infringement of trademarks, whether registered or unregistered.
Components to prove Passing off
Aside from the key component of deception, Justice Nnaemeka Agu, in the 1977 case of The Boots Company Limited V United Niger Imports Limited carefully listed what he considered to be the ingredients of a successful Passing off action as follows
Proof that the name, mark, sign which the plaintiff claims ownership has become distinctive of his goods and is regarded by a substantial number of the public or persons involved in a trade in the relevant market as coming from a particular source;
That the defendants who are engaged in a common field have used a name, mark, sign so resembling to the plaintiff's that it is likely or calculated to deceive or cause confusion in the minds of the common customer; and
That the use of the name, mark, sign is likely to cause or has caused injury, actual or probable to the goodwill of the plaintiff's business.
Remedies in a Passing off action
The following reliefs/ remedies can be claimed in a Passing up action as follows:
Injunction: This is an order of the Court to prohibit or suspend the use of a mark. This is usually the first relief sought to suspend the use of the mark pending the outcome of the case and a perpetual injunction when the case has been concluded to totally stop the use of the mark.
Damages: It has been established through decided cases that a successful litigant in a Passing off action is entitled to damages. Damages here could be general, special or punitive. These usually emanate from losses which are presumed to have been suffered by a Plaintiff in a Passing off action.
Delivery up for destruction of infringing goods: This is usually claimed where physical goods are involved. This occurs where goods are produced in breach of the trademark of another identical product. Thus, the Plaintiff usually claim for the goods to be delivered up especially so that it can be destroyed.
Anton Piller Orders: This is an order for inspection and delivery up of infringing materials in the possession or control of an infringer. Ferodo Limited & Anor. V. Ibeto Industries Limited.
Account of profit: Here the Plaintiff is entitled to profit on goods wrongly sold by the infringer. Defences available to a Defendant in a Passing off action
The defences available against a claim of Passing off include the following:
1. Consent of the Plaintiff to the use of the name, mark, sign or slogan.
2. Indistinct name,
mark, sign and slogan of the plaintiff.
Get in touch
For further information, please contact:
Managing Partner, FRED OGUNDU & CO, LP - Nigeria
Tel +234 813 873 0840
fredogunduco@gmail.com
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