Design registration can't justify TM infringement, rules Nigerian court

In a recent ruling, the Nigerian Federal Court of Appeal has upheld the principle that the mere existence of a design registration is not a justification for the use or infringement of a trade mark belonging to a third party. This case, Alliance International Limited v Saam Kolo International Enterprises Ltd, also established that certificates of trade mark and design registration are of equal status before the law: they are issued for different purposes and perform different functions, so neither takes precedence over the other by virtue of its status.

According to Uwa Ohiku (Jackson Etti & Edu, Lagos), this ruling will serve to educate officials at the Nigerian trade marks and designs registries, who often allow parties which have no legal rights to a trade mark to file and register it as a 'design’ with the intention of using it as a justification for infringing the trade marks of others.

Afro Leo understands that a search mechanism is currently being discussed, which would enable searches to be conducted at the Trade Marks Registry when design applications are being filed, so as to ensure that a corresponding trade mark has not already been applied for or registered.

Source: Uwa Ohiku, Jackson Etti & Edu, Lagos, writing for World Trademark Review