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LONG AND EXTENSIVE USE: HIGH aforesaid is connected in the course of

COURT REAFFIRMS CRITERIA FOR trade.
PROTECTION OF UNREGISTERED
In determining whether the rights of a
MARKS IN NIGERIA
trademark proprietor have been
September 2010 Vol. 23: Issue 9 infringed, it is common for the courts to
recourse to the age long tests of
distinctiveness to wit: inherent
Under Section (5) of the Trademarks Act
distinctiveness, acquired distinctiveness,
of Nigeria, the right of a proprietor of a
and lost distinctiveness.
registered trademark is deemed to be
infringed by any person who, not being Inherent distinctiveness covers marks
the proprietor of the trademark or a that are arbitrary or fanciful and which
registered user thereof, using it by way do not relate to the product or service
of permitted use, uses a mark identical for which they are used but consist of
with it or so nearly resembling it as to be words or designs which invoke
likely to deceive or cause confusion in particular ideas different from the
the course of trade, in relation to any products or services or consisting of
goods in respect of which it is completely new words or designs. All
registered, and in such manner as to marks here are protected.
render the use of the mark likely to be
The second test relates to marks that
taken either:-
have acquired their distinctiveness
as being used as a trademark; through use; hence the name, acquired
distinctiveness. This applies largely to
or in a case in which the use is use upon
unregistered marks. To succeed solely
the goods or in a physical relation
on this ground, the plaintiff has to prove
thereto or in an advertising circular or
that there is a reputation or goodwill
other advertisement issued to the
attached to the goods sufficient for
public,
members of the public to be misled by
as importing a reference to some person the defendant’s conduct into thinking
having the right either as proprietor or that they are securing the goods of the
as registered user to use the trademark plaintiff.
or to goods which such a person as

©Blackfriars LLP 2010. All rights reserved. This document is for general guidance only. Definitive advice
should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative
office in Toronto, Canada.
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In British American Tobacco & Anor v.

Int’l Tobacco & 2 Ors [2003-2007] 5
I.P.L.R 248, the Federal High Court held
that even if the gold colour on the
cigarette pack of the plaintiffs had not
been expressly registered, the colour
had acquired distinctiveness since it had
been in use for about 33 (thirty-three)
years. Hence, the subsequent use of the
gold colour for a similar product by the
defendants was an infringement of the
proprietary rights of the plaintiffs.
However, the court held that the
infringement did not affect the goodwill
of the plaintiffs’ product since evidence
showed that the consumers of the
plaintiffs’ cigarettes were not deceived
by the defendant’s cigarette packs.
Dr. Ikechi Mgbeoji
Email: Ikechi@blackfriars-law.com
Tel: +234 1 736 9797
Cell: +234 807 2995 1335
Fax: +1 646 536 8978
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The third test relates to ‘lost

distinctiveness’; so called because the
trademark has become a designation of
the product for which it was adopted.
As for example, “aspirin”, and
“Cellophane.”

The “tobacco” case reaffirms traditional

common law criteria for the protection
of unregistered trademarks.

For further inquiries, please contact:

©Blackfriars LLP 2010. All rights reserved. This document is for general guidance only. Definitive advice
should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative
office in Toronto, Canada.