Meaning of “genuine use” of a trade mark is the same in Europe as is in Nigeria

Here's another guest post by Chijoke Ifeoma Okorie, whose previous blog post attracted a record ten comments from readers (so far).  This is a reminder that readers' comments, and indeed any form of participation, is hugely welcome on this weblog.  Anyway, Chijoke writes as follows:

In its decision of 24 January, 2012, Appeal No. CA/L/369/2008: The Procter and Gamble Company v. Global Soap and Detergent Industries Limited and the Registrar of Trade Marks here, Nigeria’s Court of Appeal accepted the definition of “genuine use” of a trade mark proffered in the European Court of Justice decision in Ansul BV v. Ajax Brandbeveiliging BV (C-40/01) (2003) RPC 40 and held that Procter and Gamble has by advertisements in international media, registration of the Ariel detergent with the National Agency for Food and Drug Administration (NAFDAC), etc. made bona fide use of its trade mark in Nigeria.

The Procter and Gamble Company sued Global Soap and the Registrar of Trade Marks seeking several declaratory reliefs to the effect that as the registered proprietor since 3 December, 1969 of the trade mark “ARIEL” in respect of goods/products in Class 3 (detergents, bleaching preparations and other substances for laundry use) and also being

the proprietor of over 600 identical trade marks, some with additional suffixes spanning over 160 countries, it is entitled to the exclusive use of the ARIEL trade mark in relation to goods of that class and that the Registrar of trade marks should be compelled to rectify the Register of trade marks by expunging the trade mark “ARIEL AUTOMATIC” and atomium device owned by Global Soap. Global Soap’s trade mark was alleged to be a deceitful duplication of the ARIEL trade mark and likely to cause confusion.

Global Soap counterclaimed contending that prior to obtaining registration of its “ARIEL AUTOMATIC” trade mark, it searched the Register of trade marks and did not see the Procter and Gamble ARIEL nor was there any opposition to its registration of ARIEL AUTOMATIC when same was published in the Trade Marks Journal. Global Soap sought an order of court rectifying the Trademarks Register by expunging the ARIEL trade mark from it on the grounds that the ARIEL trade mark has been wrongfully remaining in the Regsiter.

The court of first instance (Federal High Court) dismissed the appellant’s case and entered judgment in favour of the first respondent making an order expunging the trade mark ARIEL from the Register of trade marks. On appeal, the Court of Appeal overturned the decision of the High Court and reversed the expunging of the ARIEL trade mark from the Register of trade marks. The Court also expunged the ARIEL AUTOMATIC trade mark owned by Global Soap, from the Register holding that the its use of the word ARIEL (suffix or different packaging notwithstanding), is a “recipe to create confusion in the mind of the average consumer”.

There are several important aspects of this decision:

 The Court of Appeal distinguished between the components and consequences of “non-registrability” of a mark (covered by Section 9 of the Trade Marks Act) and non-use of a mark (covered by Section 31 of the Act).

 To establish non-use, an applicant must prove a lack of “bona fide use” of the trade mark in Nigeria and courts must interpret “bona fide use”, liberally. Bona fide use of a mark in Nigeria will include international publications of advertisements in foreign media insofar as an impression is made to the Nigerian public that a product with this reputation exists and is available for purchase in Nigeria. The lower court had held that advertisements must be directed and issued to the Nigerian public in order to qualify as advertisement.

 By Section 31(2)(a) of the Act, two ingredients must co-exist in order to conclude that a registered mark has not been used: absence of bona fide intention to use the mark at the time of registration and ;absence of bona fide intention to use the mark up to one month before the application to remove the mark is made. The only other available ground upon which a mark may be expunged from the Register for non-use is where the mark has not been used in the 5 years preceding 1 month from the date of application to expunge.

 A mark that qualifies for expunction for non-use cannot become generic. A valid trademark can only become generic if the public misuses the mark sufficiently for the mark to become the generic name for the product (in this case, ARIEL would have to become the name of every detergent).

 Global Soap argued that if there has been use of the ARIEL mark, such use was by The Procter and Gamble Company and not the registered proprietor in Nigeria – Procter and Gamble Nigeria Limited. The Court of Appeal disagreed taking the view that use of a mark by the Nigerian subsidiary of a foreign company suffices as use by the foreign company.

 Even without executive or legislative ratification of TRIPS, Nigerian courts will protect well known marks.

 By virtue of section 9 of the Trade Marks Act, whether a trade mark is invented by its proprietor or not is not of complete importance to the issue of whether such mark is valid. A mark may be invented, be the name of a company or individual represented in a special manner, be a signature of its proprietor etc insofar as such mark is distinctive.

Whilst one appreciates this decision, this writer cannot help but think that this suit ought not to have seen the light of the day if the Trade Mark Registry kept proper record of registered marks. How on earth could Global Soap be able to find any mark with ARIEL available in the same Class 3? It is just as well that the Registrar of Trademarks was absent and unrepresented at the proceedings otherwise it would have been a “show of shame”.

Further, Procter and Gamble would not have wasted time with this case (spanning 14 years from 1998) or expended funds in attorney’s fees (SANs are not cheap!) if it had been diligent in searching the Trade Marks Journal. In any event, one of the delights of court decisions is that everyone gets to learn something.