Core Challenges facing Trademarks under Trade Marks Act 1965
There is the non-provision for the registration of service marks in the Nigerian Trade Marks Act (NTMA) 1965 as a trademark under the Act is defined only in relation to use on goods. A challenge faced by the current legislation on trademarks is that the NTMA 1965, drew extensively and substantially from the 1938 English Act.
Under the former United Kingdom 1938 Trade Marks Act, there was no provision for the registration of service marks and as a result of this, the Act was amended and was thus included in the United Kingdom Trade Marks Act, 1994 which is the current legislation in the United Kingdom.
The reason behind the amendment of the United Kingdom law was as a result of its inadequacy and complex interpretation which worked great hardship on its citizens. Nigeria, on the other hand, is still saddled with the 1938 Act which makes no provision for the registration of service marks and other rights and privileges.
The importance of service marks should not be overlooked as Nigeria, over the years, has developed in the areas of commerce and industry; and hence, the increased relevance and importance in ensuring an updated and modern Act to guide the areas of commerce and industry. Service Marks serve as a tool in business in aiding to build and maintain demand for that service whilst at the same time, enabling the consumer to identify and make decisions upon a recognised service.
The registration of service marks signifies any organisation’s intellectual property asset which is vital in protecting the organisation’s right by would-be infringers. Service Marks are therefore important for the protection of an organization’s intellectual property assets.
Registering a service mark provides adequate protection to the brand owner which will prevent others from making unauthorized uses of conflicting designs, symbols, words, character, colour, shape or slogan.
In other words, service marks are unique to individual businesses. Service Marks are what customers use to identify the trader’s services which they can thereby recommend to other persons. The brand or logo is thus the most valuable asset of any organization or enterprise.
Under the current Trade Mark Act, the shape or the form of presentation or packaging of a product is not recognised in Nigeria. The challenge for the non-recognition of packaging is that a proprietor therefore, cannot prevent competitors from copying these elements through an infringement action.
This is in contrast with the United Kingdom Act as trademarks covers words, personal names, designs, letters, numerals, the shape of goods or their packaging. Trade dress is an increasingly important asset as it is described as the total overall impression created by a package design or label or the decor of a business.
Trade dress could be referred to as the visual appearance of a product, which is used in most cases to signify the source of the product to consumers. The non-recognition of packaging was brought out in the case of Ferodo Nigeria Ltd. v. Ibeto Industries Ltd.
In that case, the first plaintiff/appellant, a British company and the second is its Nigerian associated company. They are the owners of the brand FERODO used for selling manufactured brake linings for motor vehicles, sold in cardboard packages and registered as a trade mark. The defendant/respondent is the owner of the brand ‘UNION’ for manufacturing and selling brake linings. The plaintiffs/appellants claimed that the packaging under which the defendant/respondent marketed its ‘UNION’ brake lining is so similar to the plaintiffs/appellants’ packaging that it constituted an infringement of their trade mark. It was also alleged that the sale of the defendant/respondent’s brake lining also amounted to passing off of the plaintiff/appellant’s products.
It was further alleged that the union red, black and white colour combination closely resembled the Ferodo package design and it was likely to deceive the public when put up for sale in the market. It is pertinent to note that the restrictive definition under the Nigerian trade Marks Act needs to be aligned with other developed countries.
For instance, a trademark under the United Kingdom is defined as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings and this could be a word, sign, logo, and so forth.
The learned trial judge in his judgment found that there was no infringement of trade mark and that the plaintiff/appellant failed to prove their claims. The plaintiff/ appellant appealed. The Court of Appeal abandoned the appeal as it related to the issue of passing off. The appeal was limited to infringement of trade mark. The decision of the trial court was affirmed and the appeal was dismissed. An appeal was made to the Supreme Court. Musdapher, JSC (as he then was), delivering the leading judgment of the Supreme Court said in his judgment thus: “[i]n summary, I agree with the courts below, that the only mark registered for the first appellant is the word, FERODO and the colouring outlay and the geometric designs are merely decorative and do not form part of the trade mark.”
Similarly, in Trebor Nigeria v. Associated Industries, the inadequacy of the Act in its non-recognition of packing and presentation of goods as a trade mark device was brought to light. The plaintiff in this case sought to restrain the defendants from using a certain wrapping on the defendant’s product that was highly identical with that of the plaintiff. The court, although found that the defendants attempted to manufacture and market a product which was similar to that of the plaintiff’s product, it only succeeded in its passing off claim and not its trade mark infringement claim.
 GR.F. Dailey, “Protection of Service Marks in Nigeria-A Necessity” (Accessed 12 March, .2021) from www.grfdalleyandpartners.com/…/Protection%20QF%20Service%20MARKS
 Section 1, United Kingdom Trade Marks Act, Chapter 26, 1994
 Shyllon, op. cit., at 194
  5 NWLR, (Pt 866) 317
 Section 1, United Kingdom Trade Marks Act, 1994
 Ferodo Limited and Ferodo Nigeria Limited v. Ibeto Industries Limited, (supra) at 350- 352
 (1972) N.C.L.R. 471