Counterfeiting as a Trademark Infringement

Counterfeiting as a Trademark Infringement

Counterfeiting as a Trademark Infringement

Counterfeiting should be dealt with under trademark infringement in Nigeria. Counterfeiting is the practice of manufacturing, importing or exporting, selling or otherwise dealing in goods which are often of inferior quality under a trademark identical to or substantially indistinguishable from a registered trademark without the approval of the registered trademark owner.[1]

It involves an interloper using a registered mark or where services are advertised or presented in ways that mislead consumers into believing that the goods or services originate from the owner of the registered mark.[2] In other words, counterfeiting is making goods that resemble the original product without the permission of the owner of the trademark; thereby retaining the intellectual property right on the product, usually for dishonest or illegal purposes.[3]

Such counterfeit goods could range from wrist watches, jewelry, clothes, automobiles, and so forth. The impact of counterfeit goods or services is that it could affect the health and safety of consumers and cause serious harm or injury to the economic development of any country.

Another area where counterfeiting could affect is in the area of cyberspace. The emergence of technology precludes the traditional settings of transactions, and with the boom in cyberspace transactions, there is the need for regulations to protect cyberspace investments.[4]

The economy in Nigeria as it is today depends on technology created by the internet and the challenges are enormous in terms of security. Therefore, counterfeiting of logos, products and generally trying to register the domain names of a company is a fundamental breach to internet, copyright and trademark related offences.[5]

Requirements in the determination of the scope of infringement

  1. The Claimant’s Trade Mark

The trade mark register is a way to assess whether or not a proposed mark is conflicting with an earlier registered trade mark. Where registration is more than five (5) years, the specification of goods and services may need to be reformulated. Under the UK law, it is common for an alleged infringer to challenge the scope of the registration, especially if it is more than five years old, through a counter-claim for revocation for non-use.

In evaluating infringement therefore, the court may be concerned with how the mark has been used. In peesavers International Healthcare Ltd. v. Asda Stores Ltd.,[6] the claimant’s mark comprised two intersecting oval shapes and had been registered in black, which, under, the : prevailing conventions was assumed to confer rights irrespective of the colour in which the shape is used by the defendant. The mark, nevertheless, had been used primarily in a particular shade of green. The Court held the ‘colour’ was relevant and further held that the particular shade of green would likely create confusion.[7]

The Defendant’s Sign

When a person infringes a registered trade mark, it is necessary to compare the ‘original’ -registered sign with the ‘fake’ sign used by the defendant. The question as to what constitutes the defendant’s sign is of vital importance when considering whether or not the goods and services are identical or not.

Furthermore, the UK provision states that if the marks and goods – services are identical, then a defendant will be considered to have infringed irrespective of any confusion.[8] In LTJ Diffusion case,[9] the owners of a figurative mark including the word, “Arthur” in handwritten form for clothes brought infringement proceedings against a company selling children’s clothing under the name, “Arthur ET Felicie.”

An Effective Anti-Counterfeiting Strategy

2004 was above all a year of anti-counterfeiting initiatives fuelled by a number of high profile conferences and the events. The catalyst was almost certainly the first Global Congress on Combating Counterfeiting, which convened at the headquarters of the World Customs Organisation in Brussels on 25 and 26th May, 2004[10] and brought together one of the largest groups of experts on counterfeiting ever assembled. With more than 350 delegates from across the world from industry and law enforcement, it could well be seen as something of a landmark in the annals of anti-counterfeiting.

The US government also launched its STOP initiative. The acronym stands for Strategy Targeting Organised Piracy and aims to smash criminal networks dealing in pirated and counterfeited goods, stopping the trade of those goods at US borders and helping small businesses secure and enforce their rights in overseas markets.

The ICC has also pledged to increase its efforts to fight against intellectual property theft with the introduction of Business Action to Stop Counterfeiting and Piracy (BASCAP). The initiative aims to provide an operational platform to leverage individual company and organizational efforts toward ensuring that adequate government resources are dedicated to enforcement activities at local, national and international levels.

In Nigeria, Anti counterfeiting was though inspired by the example of Dr Dora Akunyili. Dr Dora Akunyili is the Ex-Director of Nigeria’s National Agency for Food and Drug Administration (NAFDAC) and has become something of a legend in the annals of anti counterfeiting.[11] In three years NAFDAC achieved a remarkable degree of success in stamping out the trade in counterfeits through raids and seizures, but this success came at a heavy personal cost to Dr Akunyili.

As she recounted: When Edmund Burke the eighteenth century philosopher and politician said “All that is necessary for the triumph of evil is that good men do nothing”. He failed to add that the price of doing good could very often be exposure to personal harm. But then of course the battle between good and evil has always been costly.[12]

Despite the huge amount of money that has been invested in the battle against counterfeit goods, it’s still an inimical business that thrives in most nations of the world especially the developing nations of Africa, The Middle East and Latin America. However, in Nigeria, the Government/public and private sector partnership is needed to combat counterfeiting of products.

 

Read also: Core Challenges facing Trademarks under Trade Marks Act 1965

[1] Fact Sheets Protecting a Trademark. Counterfeiting. (Accessed March 10, 2021) from http://www.inta.org/TrademarkBasics/Factsheets/Page

[2] Criminal Defense Lawyer. Counterfeiting Trademarks and other Intellectual Property. (Accessed March. 10, 2021) from http://www.criminaldefenselaver.com

[3] The Economic impact of counterfeiting is a global Problem affecting a Wide Range of Industries. (Accessed March 30, 2021) from www.intellectualpropertvnow.com/…/

[4]M. A. Saulawa, & J. B. Marshall, “The Legal Framework of Cybersquatting in Nigeria” (2015) International Journal of Humanities Social Sciences and Education (IJHSSE) Volume 2, Issue 4, 2015, pp. 1-8. ISSN 2349-0381. (Accessed March 7, 2021) from http://www.arcioumals.org>1.pdf/

[5] Ibid

[6] [2013] Case C-252/12

[7] Ibid

[8] Section 10(1) United Kingdom Trade Marks Act, Cap. 26, 1994

[9] Case C-291/100 [2003] ECR 1-02799

[10] Interpol, the World Customs Organisation and the recently formed Global Business Leaders Alliance Against Counterfeiting, the overall theme was forging partnerships between law enforcement and industry to tackle an enormous problem, which is getting worse daily. A whole gamut of different counterfeiting issues were touched upon by a galaxy of speakers including the difficulty of quantifying the phenomenon, health and safety and the growing impact of organised criminals and terrorists….

[11] Peter Lowe, Continuing The Fight Against Fakes, Counterfeiting Intelligence Bureau, 2004

[12] ibid

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