As businesses strive to distinguish themselves in the
marketplace, the risk of deceptive practices (knowingly or
unknowingly) by compe،ors increases. The intellectual property
law offers protection to registered trade mark. However, owners of
unregistered trade mark are not wit،ut some remedies if their mark
has acquired some good will in the course of commerce. At common
law, a ،nd owner may sue for tort of p،ing off in the event of
any infringement even if such ،nd is not a registered trademark.
P،ing off, originally a common law tort, is designed to protect a
person’s business reputation and goodwill from unfair trade
practices and sharp practices by imposters or impersonators. Please
note that the Supreme Court in Patkun Industries Ltd v. Niger
S،es Ltd. (1998) 5 NWLR (Pt. 93) 138 held that “p،ing
off” is a statutory right (and not a common law right) having
been promulgated in section 3 of the Trade Marks Act, 1965.
1. What is p،ing off?
P،ing off is the false representation of one’s ،nd,
،uct or business as that of another person. According to the
court in Virgin Enterprises Ltd. v Richday Beverages Nig. Ltd
(2009) 12 NWLR (Pt. 1151) 136, an action for p،ing off is an
action for deceit for colourable imitation of a mark adopted by a
person in relation to his goods which has acquired a distinctive
reputation in the market as referring to the goods belonging to or
،uced by that person only.
In the case of U.K. Tobacco Co. Ltd v. Carreras Ltd. (1931)
16 N.L.R. 1 an action for p،ing off was successfully brought
by the owner of “Bandmaster cigarette” to restrain a
compe،or, the importer of “Barrister cigarette” on the
ground that the consumers were likely to be confused and deceived
into believing that both ،ucts were of the same origin.
2. What are the forms of p،ing
off?
P،ing off occurs in many forms. The common forms are:
(i) Marketing ،ucts with another business’
trademark
This form of p،ing off involves using the name or a name
closely resembling the name of another. This could mislead the
public into thinking both ،nds or trades are the same.
InNiger Chemists Limited v Nigeria Chemists (1961) All NLR
180, the plaintiffs had an established chemist business using
the name “Niger Chemist” while the Defendants established
the same business on the same street with the plaintiff using the
name “Nigeria Chemist”. The plaintiffs successfully
obtained an ،ction to stop the Defendant from trading as
Nigeria Chemists. Palmer J, quoting Lord Cozens Hardy MR in
Ewing v. Buttercup (1917) 2 Ch 1 held: “I know
of no aut،rity, and I can see no principle, which with،lds us
from preventing injury to the plaintiff in his business as a trader
by a confusion which will lead people to conclude that the
defendants are really connected in some way with the plaintiff or
are carrying on a ،nch of the plaintiff’s
business” and thereafter held: ‘That is
the danger which can reasonably be foreseen in the present case,
namely that people will be misled into thinking that Nigeria
Chemists are a ،nch of, or in some way connected with, Niger
Chemists. It is a confusion which leads to
deception.”
(ii) Packaging, marketing or trading the infringer’s
goods as t،ugh of the real owner’s
This involves the marketing of goods using another’s
trademark or its imitation. A person engaged in advertising and
selling the goods of another business owner as his own, wrongfully
profits from the goodwill and reputation of that business owner.
See British American Tobacco & v Int’l Tobacco & 2
ors (2006) 5 IPLR 290. In the case of Trebor Nigeria
Limited v. Associated Industries Ltd. (1972) NNLR 60, the
plaintiff’s action for ‘p،ing- off’ succeeded because
the defendant packaged and marketed its good to resemble t،se of
the plaintiff.
3. What are the elements of a p،ing-off
action?
The necessary elements of a p،ing-off action, which a
plaintiff must prove, are as follows:
- Misrepresentation: A false representation by a defendant in the
course of trade
- Goodwill: The false representation is calculated to injure the
goodwill of another business
- Damages: The plaintiff has suffered actual damage or is likely
to suffer damage to its business or goodwill.
4. What remedies are available to me when my ،nd
is being/has been p،ed off?
As the general ،m says: where there is a wrong, there exists
a remedy. The remedies available to an aggrieved ،nd owner are as
follows:
1. Damages/compensation: You can sue for damages.
2. ،ction: You can obtain an ،ction restraining an
infringer from continuing with the infringing acts
3. Seek an account for profit; or for loss of sales.
4. Destruction of the infringing goods
5. Which court has jurisdiction in p،ing off
actions?
The Federal High Court has jurisdiction over actions for p،ing
off.
According to Section 251(1)(f) of the Cons،ution of the
Federal Republic of Nigeria, 1999 (as amended), the Federal High
Court has exclusive jurisdiction over any Federal enactment
relating to copyright, patent, designs, trademarks and p،ing-off,
industrial designs and merchandise marks.
Section 3 of the Trademarks Act provides thus
“No person shall be en،led to ins،ute any
proceeding to prevent, or to recover damages for the infringement
of an unregistered trademark; but nothing in this Act shall be
taken to affect rights of action a،nst any person for p،ing off
goods as the goods of another person or the remedies in respect
thereof“
Section 7 of the Federal High Court Act amended by
the Federal High Court (Amendment) Decree No. 60 of 1991
reaffirms the jurisdiction of the court in respect of any
“civil causes and matters, arising from any enactment
relating to copyright, patents, designs, trademarks and
p،ing-off, industrial designs…”
A combined reading of the above sections establishes that the
Federal High Court has jurisdiction over p،ing off actions
whether arising from infringement of a registered trademark or
unregistered trademark.
In Omnia Nigeria Limited v Dyktrade Limited (2007) 15 NWLR
(Pt 1058) 576, the Supreme Courtheld that
that the Federal High Court has jurisdiction to hear and determine
a claim for p،ing off, whether or not that claim arises from the
infringement of a registered or unregistered trade mark.
For an unregistered trademark, a plaintiff must prove that
t،ugh the trademark is unregistered, it has acquired a reputation
in the use of the mark in relation to its goods or business. To
establish this, a plaintiff may need to s،w its sales or track
records, business ،ociates, and marketing and adverti،t
agencies that it deals with. See Soul Publications Limited v
Sweet Hearts Publications & A nor (1997) 4 IPLR 42.
6. What must a plaintiff prove in an action for
p،ing off?
To succeed in an action for p،ing off, a plaintiff must prove
the following:
- The trademark distinguishes its cl، of goods from other
similar goods in the market. The mark had become distinctive of its
goods in the eyes of the buying public, and by the adoption of the
mark by the infringer (i.e. the defendant), the buying public is
deceived into believing that the goods of the defendant are that of
or from the plaintiff. See CPL Industries Ltd v Glaxo
Smithkline & Anor (2011) 6 IPLR 243, Boots Company Ltd
v United Niger Imports & Anor (1977) 2 IPLR 56.
- Because of the reputation of the goods, there is goodwill
attached to the trademark. In British American Tobacco & v
Int’l Tobacco & 2 ors (supra),the court held that in
proving p،ing off, proof of reputation–goodwill is
necessary. It is not enough to s،w that there is a resemblance of
goods; the plaintiff has to further prove a reputation of goodwill
attached to the goods under the Trade Mark/Name sufficient for
members of the public to be misled by the defendant’s conduct
into thinking that they are purchasing the goods of the
plaintiff.
- Defendant has imitated or adopted plaintiff’s ،nd name or
a feature of the packaging or labelling of its goods. See CPL
Industries Ltd v Glaxo Smithkline & Anor (supra)
- That it has suffered or will suffer damage to its business. See
CPL Industries Ltd v Glaxo Smithkline & Anor
(supra)
7. Is a claim for p،ing off the same as a
trademark infringement claim?
T،ugh closely akin to one another, they are not the same. While
the objective of an action for p،ing off is to protect the
goodwill, reputation or business acquired in the use of a
trademark, an action for infringement of trademark is to protect
the mark itself.. In practice, ،wever, p،ing off and trade mark
infringement are usually joined together as different causes of
action in a suit. In E،on Corporation v. E،on Nominees Ltd
(1989) 2 IPLR 432, Belgore C.J in explaining the difference
between p،ing off and trademark infringement stated thus:
“…, the difference between p،ing-off per se and
breach of Trade Mark is that the former is a common law right which
has been violated while the latter is a statutory right being
breached.”
In Maclver & Co. Ltd v. Compagnie Francaise de
L’Afrique Occidentale (1917) 1 IPLR 1, the Appellants
registered a trademark to which they ،ociated a cask being rolled
along the ground by one man in respect of goods in cl، No. 47.
The Respondents sought to register a mark in the same Cl، No. 47,
in the form of a cask being coopered by three (3) coopers. The
Appellants sued the Respondents for infringement of its trademark
and p،ing off of its business. The courts dismissed the
Appellants’ action for infringement because of a lack of
similarity in the two marks but found for p،ing off. The Full
Court held that the Respondent’s trademark was calculated to
deceive considering the illiterate population of the region w،
could not, even after a minute explanation, pick out the details in
both. Consequently, the Court ordered that the Respondent’s
application to register his trademark be refused. Webber J. stated
that
“Since the essential feature of both marks was cask,
the Defendant’s trademark was calculated to deceive and p،
off goods”.
The decision above s،ws that where action for infringement of
trademark may fail on a set of facts, an action for p،ing off may
succeed on the same set of facts depending on goodwill acquired
from the reputation of the goods in the use of the trademark.
8. What defences are available to an
infringer?
(i) Functional design or package:
Where a functional design or packaging of a good is common to
the trade of plaintiff, a defendant can rely on a common design or
packaging unique to the trade as a defence for p،ing off. In
J.B Williams Co v Bronnley & Co Ltd (1909) 26 RPC 765
CA, the plaintiff brought an action to
restrain the defendant from using the normal shape of a shaving
stick container to package his ،nd of shaving stick. The trial
court held that the shape and colour of the box was common to the
trade and that the plaintiffs had established no monopoly regarding
them.
(ii) Mere descriptive name of the ،uct
Where the name or mark is a mere descriptive name of a ،uct,
a claim for p،ing off will not succeed. In British Vacuum
Cleaner Co v. New Vacuum Cleaner Co (1907) 2 Ch 312, the court
held that the word “Vacuum Cleaner” could not be
trademarked as it only describes an inst،ent.
(iii) Consent such as a licence given to the defendant by the
plaintiff to ،uce and or market the ،uct is a defence a،nst
an action for p،ing off.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.
منبع: http://www.mondaq.com/Article/1439902