It is certainly the desire of manufacturers and providers of goods and services for their brand name or trade mark to become popular. However, this desirable popularity can become a double-edged sword where the trade mark becomes understood as being the name of the product itself, rather than the trade mark identifying the distinctive source of the product. For example, if a popular brand of noodles is known as the general name of noodles, then that trade mark stands the risk of becoming generic. It is against this background that the writer seeks to recommend legal solutions because, where a trade mark proprietor fails to take necessary actions when he observes that his trade mark is becoming generic, it becomes open to other producers to allege that the trade mark(s) is common to trade in respect of the particular goods or classes of goods to which the mark is applied.
What is a trade mark?
A trade mark is a name, mark, device or sign by means of which the products of a person or entity may be distinguished from the products of others. Trade mark is the legal term for what people in general call “brand name”.
Under section 67 of the Trade Marks Act, “a trade mark means, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark whether without any indication of the identity of the person. Further, section 67 of the Trade Marks Art defines a mark; a mark in this connection includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. A trade mark must be registered in respect of particular goods or classes of goods.
Functions of a trade mark
The essence of a trade mark is to indicate a connection in the course of trade between the goods and some person having the right to use the same. A trade mark must necessarily be distinctive and distinguish the products of one proprietor from those of another proprietor. Section 9 (2) of the Act provides that the major requirement for a mark to be registrable is distinctiveness and defined ‘distinctive’ as “….adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.” A trade mark can serve as an indicator that products bearing the mark originate from a single seller. Consumers can thus rely on the trade mark to identify products they wish to buy, which reduces the cost of finding those products in the market. Non-distinctive or descriptive marks are not protectable as trade marks because they do not distinguish the particular goods or services of a trader from similar goods or services from other traders. Trade marks perform four functions: (1) they identify one's products and distinguish them from those of others; (2) they indicate that products bearing that trade mark come from a specific source; (3) they signify that products bearing that trade mark have the same quality level; and (4) they make a major contribution to the advertising and selling of these products.
Rights conferred on the proprietor of a registered trade mark
The valid registration of a person as the proprietor of a trade mark in respect of any goods confers on the person the exclusive right to the use of that trade mark in relation to those goods. If without a proprietor’s consent, anyone else uses an identical mark or a mark so nearly resembling the proprietor’s trade mark as to be likely to deceive or cause confusion in the course of trade, it will entitle the proprietor to sue for infringement of the trade mark, or to sue in action for passing off or both.
Under section 3 of the Nigerian Trade Marks Act, no person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark. However, a person may institute an action against any person for passing off goods as the goods of another person in respect of a trade mark that has not been registered.
In the case of Smithkline Beecham Plc v. Farmex Ltd, the court defined a generic name “as a name shared by many/any manufacturer. A scientific, chemical, or common name. It relates to or characteristic of a whole group or class. It is general as opposed to specific”. The court further held that, trade marks which are deemed generic are not entitled to protection within the ambits of the law.
Below are a few examples of some trademarks in other jurisdictions that have suffered from genericide:
Aspirin is a pain relief drug that contains acetylsalicylic acid. The Proprietor Bayer AG combined two German words and trademarked the term in 1917. Aspirin lost its trademark status in 1919, and now most people now use aspirin to refer to a pain relief drug.
Cellophane is a made-up word that comes from the combination of "cellulose" and "diaphane"(transparent). The Proprietor Chemist Jacques E. Brandenberger trademarked the term in 1912. Cellophane is now a generic word in the USA for thin, transparent sheets made of regenerated cellulose, but retains its trademark status in other countries.
Thermos was held generic in the United States for vacuum-insulated bottles. Therefore, if consumers understand a trade mark to be the name of the product itself, as opposed to identifying its exclusive source that trade mark loses its distinctiveness and can no longer be protected under the law. Accordingly, a trade mark that is not capable of distinguishing within the meaning of Section 9(2) of the Act, is liable to be removed from the Register of Trade marks. This is because the exclusivity of a brand sets it apart from other brands, and arguably the brand of a company is its most valuable asset.
In a claim for genericide, where the public appropriates a trade mark and uses it as a generic name for particular types of goods or services irrespective of its source, reference must be made to the particular type of goods or service. A trade mark does not become generic until the courts declare it to be generic.
When a trade mark becomes generic, the trade mark becomes available for use by all persons who manufacture the product or render the services, and such persons who are desirous of using a generic mark can differentiate their products by adding a prefix or brand name. It is important to note that as trademark is territorial in nature, a trademark registered in Nigeria can only be generic when a court of competent jurisdiction in Nigeria declares it to be so.
Mechanisms to avoid genericide
A trade mark owner must, at all costs, strive to prevent his/her valuable trade mark from suffering from the fate of genericide and falling into the public domain. In this article, the writer has identified three major modes of avoiding genericide:
- Internal/ administrative mechanisms
- Administrative mechanisms
- Judicial mechanisms
a) Internal mechanisms
One of the internal mechanisms of avoiding genericide is the constant advertisement of the trade mark so that the public can easily identify the source of the products. As the trade mark of a company is one of its most valuable assets, it is advisable for a proprietor to invest in advertising its mark so that the consuming public can be reminded that the marks are not generic names and should not be used as such. Therefore, when trade mark proprietors run advertisements of their products or services, care must be taken not to use the trade marks to refer to their products or services. To illustrate, an advertisement of Peak milk should be advertised as Peak milk, and not Peak. Similarly, the advertisement of a Duracell battery should be Duracell battery, and not Duracell. This would enable consumers to know that Peak is a kind of milk and Duracell is a kind of battery.
The continued use/renewal of the trade mark is a potent mechanism to avoid a trade mark from becoming generic. The continued use and renewal of a trade mark give notice to the public that the proprietor maintains exclusive rights over the trade mark.
One of the mechanisms against genericide open to a proprietor is to constitute a brand police. Despite the fact that a proprietor makes continued use of his/her trade mark, some unscrupulous persons may choose to misappropriate the rights accruing to a trade mark proprietor. The duty of the brand police is to watch out for any threat of infringement or passing-off of the proprietor’s trade mark. Immediately the brand police discovers any infringement or passing off of a trade mark, notice must be brought to the attention of the proprietor so that necessary legal actions can be taken to restrain further infringement. In addition, a proprietor must maintain tight control over the use of the mark by the licensees. This can be done by setting out strict requirements over the use of the mark in the licence agreement and enforcing those requirements. A brand police must also watch out for any breach of the licence agreements.
Another effective way of preventing a trade mark from being generic is to serve Cease and Desist letters on infringers before the infringers approach the Trade mark Office to make an application to register the identical, resembling or similar mark. The proprietor must satisfy himself of the intention of the infringer to desist from further infringement of his mark. Where for instance, the infringer has started to use a trade mark similar to that of the proprietor on products within the same class of goods, the proprietor must ensure that the infringer executes a memorandum of understanding to desist from using the mark on the products forthwith and or withdraw the products from the market save for where any other agreement is reached by the proprietor and the infringer. As a last resort, where parties cannot reach an agreement or an agreement reached is breached, then the proprietor can institute an action for infringement and or passing off in Court.
b) Administrative mechanisms
Where an infringer of a trade mark has applied to the Trade Mark Office for the registration of a mark similar to that of the proprietor, the available remedy to prevent the use of the mark is to file a notice of opposition at the Trade marks Office to restrain the application from proceeding to registration and have the infringing mark deemed abandoned or rejected by the Trade marks Office. It is instructive to note that the infringement of a trade mark could include use of the trade mark as a trade name or business name by a person other than the proprietor. It therefore becomes imperative to distinguish a trade mark from a trade name. While trade mark refers to how the products or services of a proprietor can be distinguished from that of another proprietor, a trade name refers to the identity of the company or business with which it uses to engage in business. When the entity is a company, the name is referred to as the company’s name, where the entity is a sole proprietorship or partnership, the name is referred to as business name. A trade name is what the company or business uses to sue, as a non-juristic person cannot sue or be sued. However, nothing prevents a business from making its trade name its trade mark or vice-versa. Accordingly, under the Companies and Allied Matters Act, no company shall be registered under the Act by a name which in the opinion of the Corporate Affairs Commission would violate any existing trade mark registered in Nigeria unless the consent of the owner of the trade mark has been obtained. Therefore, where a trade mark proprietor discovers that his trade mark is sought to be used as a trade name by a person who has not obtained his consent, the right course of action is to apply to the Corporate Affairs Commission for an objection to prevent the registration of such a name.
C) Judicial mechanisms
Where without his consent anyone else uses an identical mark or a mark so nearly resembling the registered trade mark as to be likely to deceive or cause confusion the proprietor should protect and enforce its rights by instituting an action for infringement and or passing off to prevent the trade mark from suffering from genericide. In the normal course of events, a trade mark is a distinctive picture which would indicate to a purchaser of an article bearing it, the means of getting the same article in future. However where there are confusing marks in the market, the consuming public would likely be unable to distinguish the source of the product.
If the mark is a registered mark, then the proper course of action is to institute an action at the Federal High Court. This is because the right of action of passing-off under section 3 of the Trade marks Act is statutory and is derived from the Act and not the common law. Where however, the mark is an unregistered mark, then the proper course of action is to institute an action at the State High Court for passing off in common law. This is because the right of action of passing off of an unregistered trade mark is derived from common law in tort, and not the Trade marks Law. The Trade marks law only covers registered trademarks. Therefore, best practice is to register any trade mark that is used or that there is a bonafide intention to use because the rights conferred by a registered trade mark are much stronger than those of an unregistered trade mark which fall only under the law of passing off.
In order to obtain and ensure trade mark protection, the trade mark used must not be or become, primarily understood by consumers as referring, to the product itself. Trade mark genericide is a tragic way of losing a trade mark that was borne from the creativity of a proprietor. Once a trade mark proprietor observes the breach of any part of his registered trade mark: device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof, necessary actions must be taken. Although it could be expensive striving to prevent a mark from being generic, yet the advantages that flow from enjoying exclusive rights to the use of a trade mark far outweigh the challenges of having to protect and enforce the trade mark rights. Prevention is better than cure!