Introduction
It is no more news that every business has a name, mark or logo by which it is known. What may be news to some is that this name, mark or logo is the trademark which portrays the uniqueness of the business and justifies its tag as a brand. Trademarks are generally required to be registered to afford the owners (proprietor or registered user) exclusive right of usage and exploitation. This registration of trademark may be done locally, regionally or internationally.
In the case of Chanel, a French designer and luxury fashion company, it registered its figurative mark (logo) a two thick horizontal interlocking semi-circles – in 2013 at the European Union Intellectual Property Office (“EUIPO”) to protect the sale of its perfumes, makeup and apparels across Europe. In 2017, Huawei – a Chinese software company – submitted an application at the EUIPO to register a logo mark which it intended to use for a budding computer software. The logo in question was a two light vertical interlocking semi-circles, and Chanel believed this mark to be similar to the one it had registered and so opposed the application for registration before the EUIPO’s Opposition Division where it first lost. Chanel further appealed to the Fourth Board of Appeal of EUIPO and got their appeal dismissed. It then appealed to the General European Court, being the next appellate court.
This content appraises the outcome of this landmark suit and compares it with the situation in Nigeria. But first, a synopsis on the nature and registration of trademarks.
Nature and Registration of Trademarks
A Trademark is a sign (name, word, number, logo, colour), its combination or plural which is used to distinguish the goods and services of one person from those of others. A trademark is the essence of branding and presents a means for constant business turn over. It is an intangible asset that helps the owner leverage on it for profit by license, assignment, franchise, merger, acquisition or damages for infringement. The exclusive rights conferred on a Trademark in the protection of the trademark, and such protection only arises when the trademark is registered.
Trademark is territorial in nature. This means that it is governed by the trademark laws of each State (country). Nigeria, for instance, has its Trademark Act as do other countries of the world. These legislation allow for the registration of trademark in the country. The provisions of these various Acts, although mostly similar, have striking peculiarities and are the principal laws governing any trademark registration, infringement or other rights accorded.
This notwithstanding, a trademark may be registered internationally (regionally or globally). The international registration of trademark allows a trademark owner or registrant not only to exercise exclusive rights of protection in the country of his origin but to extend such rights to several other countries of the world.
While the global registration of trademark is made possible by “the Madrid System”, regional registration of trademarks usually have continent-based operations. In Europe, for instance, trademark is registered at the European Union Intellectual Property Office in the EU trade mark system where the trademark is granted protection in all 27 countries that make up the European Union. Once registered, the mark becomes the European Union trade mark (“EUTM”).
Where a person or business has registered a trademark under any law (local or international), any other person or business that intends to register the same trademark or a mark so closely resembling that which is already registered without the permission of the first registrant may be opposed to doing so by the first registrant at the trademark Office where the latter is to be registered, especially where the proposed trademark will fall within the same class as that registered.
Chanel v. Huawei
At the international scene, the recent case of Chanel v Huawei brings a new dimension to determination of trademark infringement. The case, decided on April 21 2021 had two grounds of opposition. First was that the Huawei’s trademark (figurative mark) was sought to be registered in Class 9 of the Nice Classification of Goods and services, the same Class Chanel registered its mark. The second ground had Chanel arguing that the Huawei logo (two vertical interlocking semi circles) is so similar to the Chanel logo (two horizontal interlocking semi circles), as to create confusion in the minds of members of the public. Chanel argued in the light of Article 8 (2) and (5) of the EU Trademark Regulation (“EUTMR”).
Applying the EUIPO Guidelines and the EUTMR (the substantive law which provisions govern trademark registration and protection in the EU), the Judges of the EU General Court, sitting in Luxembourg, articulated that the figurative mark in issue had significant visual differences. To determine the similarity, the marks were compared as applied for and registered, without altering their orientation by rotating them 90 degrees. Chanel’s mark was held to have more rounded curves, thicker lines and a horizontal orientation in contrast with that of Huawei marks whose lines were light and were vertically looking. The General Court concluded that the marks could not confuse or deceive the public because they were not similar, and dismissed the appeal. The ruling can be appealed to the EU Court of Justice, the European Union’s Highest Court.
The import of this decision is that before a case of logo trademark opposition can succeed or logo infringement can be made, the alleged similar or infringing logo must be shown to be similar in orientation to the infringed logo as registered, not as altered.
Nigeria’s Position
Nigeria is not in Europe and cannot therefore be a member of the EU, even if it so desired. However, there exists in Africa a country-wide intellectual property organization, the African Regional Intellectual Property Organization (ARIPO). The difference between the ARIPO and the EUIPO trademark systems is that while trademark registration with the EUIPO applies automatically to all member-states of the EU, countries for the trademark protection are chosen with the ARIPO system. But like the EUIPO system, these countries must be member states of ARIPO. Unfortunately, Nigeria is not among the 20 African countries that currently makeup of the membership of the ARIPO.
Still, one thing that is worth stating is that the EUIPO trademark system as reflected in the EUIPO Guideline and the EUTMR is similar to that obtainable in the Nigerian Trademark system as they both preserve the right of a person to file an opposition to any trademark registration. A combination of sections 19, 20 and 21 of the Trade Mark Act (“the Act”) mandate the Registrar of Trademark to publish in a journal, any application for Trademark made by any individual or entity. Also, within two months of the publication, anybody may choose to oppose it by filing a Notice of Opposition stating the reasons for the opposition.
The Registrar gives notice of the Notice of Opposition to the Trademark Applicant, who may decide to file a counter-statement to the grounds of opposition. The case will first be heard by the Registrar who may decide otherwise and will go ahead to accept the trademark for registration when he decides in favour of the trademark applicant. Whoever loses may appeal to the Federal High Court. The second thing is that, Article 8 (5) of the EUTMR is similar to section 5(2) of the Act. They both frown at the registration or use of a mark similar to one which is already registered since it is likely to cause confusion to the public.
The substantive issues having been made clear, what really matters is whether the decision in Chanel v. Huawei can be upheld in Nigeria. Nigerian courts are only bound by decisions in Nigeria. Decisions from other jurisdictions (countries or continents) are only persuasive on them. Nigeria is allowed to follow foreign laws only if there is a lacuna in its own laws, and such foreign laws must be common law jurisdiction (the United Kingdom and its former colonies).
There is no lacuna in the Act and the European Court is not a court in a Common Law jurisdiction, which makes its decision merely persuasive on the Nigerian judiciary. However, since the facts on which the decision was based are novel, it will not be out of place to see Nigerian Courts toeing the same direction when faced with similar facts. Moreover, the Act recognizes figurative marks (logos), although it is referred to as “marks” under the Act.
Conclusion
While we await to see the outcome of a similar scenario before the Nigerian Courts, it is advocated that our national legislature swiftly think of signing and ratifying the ARIPO. Such will not only allow Nigerians and startups to exercise continental/regional rights to trademark, it will be a conduit to foreign investments in the country since investors will be assured of trademark protection using the one-off registration platform provided under ARIPO. As it stands, foreign investors need to register their trademarks in Nigeria to protect their brands in the country. This does not in any way speak well of the country as Africa’s economic giant, nor does it conform to international best practices in intellectual property law.
AUTHORS PROFILES
Ujong Okpa is a Corporate/Commercial Attorney with specialty in Intellectual Property and Technology Law. Ujong completed his undergraduate studies in 2018 where he obtained the Bachelor of Laws (LL.B) Honours from the University of Calabar, Nigeria. In 2019, he was called to the Nigerian Bar, and is an active Member of the Nigerian Bar Association, having practiced in states like Taraba, Cross River and Rivers where he works as an Legal Associate of Tents and Towers.
As a researcher and scholar, Ujongs desire to contribute to knowledge and solve problems has seen him authoring and publishing several peer-reviewed journals and several blog articles. He also is a critical thinker who has edited several academic works and non-academic works. Due to his outstanding academic heights, he was offered a full Scholarship by the Kent Law School in 2020 for a Masters in Law program one of the most prestigious international scholarships from the United Kingdom to the World. Other than intellectual property law, he is keenly interested in Privacy and Data Protection, Energy and Environmental Law and Taxation Law as he is relentless in his quest for more knowledge, skills and experience. He may be contacted via ubokpa@gmail.com
Ebere Ndubueze, obtained an LL.B (Hons) in Civil Law from the University of Calabar in 2019. She is skilled in diverse areas of law including Environmental Law, Intellectual Property Law and Technology Law. Ebere is an Associate member of the Institute of Chartered Mediators and Conciliators (AICMC) and is skilled in Alternative Dispute Resolution. Ndubueze is an ardent scholar who is interested in contributing to knowledge.
In this wise, she has co-authored two publications on international previewed journals in addition to her regular publications on websites. She also has delivered lectures on symposiums organised by the Law Students Association of Nigeria, University of Calabar Chapter, and mentored many undergraduates of law in theory and litigation. Ndubueze has gained editorial experience with The Legal Diary and is currently awaiting to be called to the Nigerian Bar in pursuit of her desire of becoming a certified legal consultant. Leneleonards@gmail.com is Ebere’s contact mail.
