There are concepts that are similar to the concept of passing off but differ in some aspects. These other aspects of the law can easily confuse a layman as to its relation to the law of passing off. Some of these concepts include:
1. Unfair competition
With respect to both registered and unregistered trademarks, there is a distinct cultural difference between legal regimes that give primary importance to preventing consumer deception and those that treat this goal as subsumed within the larger goal of regulating competition.
Judge Jacob in the case of Hodgkinson & Corby Ltd v. Wards Mobility Services Ltd recognized the tension between the common law of passing off and the border doctrine of unfair competition as follows:
“Never has the tort shown even a slight tendency to stray beyond cases of deception. Were it to do so it would enter the field of honest competition, declared unlawful for some reason other than deceptiveness. Why there should be any such reason, I can’t imagine. It would only serve to trifle competition.“
There is a cultural clash between passing off and unfair competition especially in recent cases of comparative advertising or in laws pertaining to character and personality merchandising.
2. The tort of deceit
The tort of deceit is an economic tort protected by common law. The origin of the tort of deceit in the English courts can be traced to the case of Pasley v. Freeman. Deceit consists of the act of making a willful statement with the intent that someone will act on it with the result that he suffers harm from that act.
However, in the tort of passing off the defendant does not play deception against the plaintiff directly for he uses deceptive devices against the customers of the plaintiff but in the tort of deceit deceptive devices are used against the plaintiff directly.
In other words under the tort of deceit, the defendant uses deceptive devices against the plaintiff directly while in passing off the defendant uses these devices against a third party, which in most cases are the customers or consumers of the plaintiff’s product.
3. Copyright laws
Copyright is the distinct right of an author of a book or any other composition, such as drama, art, photograph etc. to publish that work or make copies or performances in public. The aim of copyright is to provide a monopoly of reproduction in exclusion of others without consent so that others may not unjustifiably profit from that creation at the detriment of the author.
According to Abul Hassan “Protection of copyright is the best means of protecting creativity, stimulating men and women of creativity to create further works and thus building up the national heritage. Lack of protection kills talent and even National prestige.”
Copyright also prevents others from infringing on the rights or property of other people for financial gain. But copyright focuses on registered property and does not have to be misrepresented to the public to be proved which is not the case in cases of passing off.
4. Trademark infringement
The concept that comes closest to the law of passing off is Trademark infringement. Trademark infringement deals with registered rights . Although, the two concepts are related for when someone uses the unregistered trademark of another in such a way as to mislead the public as to the relationship between the two products, passing off is said to have taken place. Therefore, trademark deals only with registered marks while passing off deals with unregistered trademarks.
Also, passing off unlike trademark infringement does not have specific legislation to offer protection. In the case of Durga Dutt Sharma v. N.P Laboratories, it was held that ‘an action for passing off is a common law remedy. Being in substance an action for deceit, that is, a passing off by one person of his own goods as those of another. But that is not the gist of action of infringement. The action of infringement is a statutory remedy conferred on the registered proprietor of a registered trademark for the vindication of the exclusive right to use the trademark.”
Unlike in passing off, there is no need to prove the likelihood of confusion in trademark cases.
Jurisdictions in action of passing off in Nigeria
Jurisdiction has different implications in international and municipal laws. Jurisdiction in International laws is the power of the sovereign to affect the right of persons to legislation, executive decree of judgment of the court is intimately connected with the concept of independence and of territory. However, in Municipal law jurisdiction it is the authority of the court to decide matters presented in a formal way for its decision. In order words, jurisdiction is the right a court has to entertain a particular subject matter.
In Nigeria, there is always an issue of jurisdiction every time an action of unregistered trademark comes into play. A person must know the appropriate court to approach, whether it is a federal or state high court. Both the jurisdictions of Federal and State High court have been constitutionally provided.
S 251 (1) OF the 1999 Constitution provides as follows:
“That the Federal High Court shall exercise exclusive jurisdiction in respect of any federal enactment relating to copyrights, patent designs, trademarks and passing off, industrial designs and merchandise marks, business name, commercial and industrial monopolies, combines and trust, standards of goods and commodities and industrial standards.”
However, the paragraph was not part of the 1979 constitution before it was incorporated into the 1999 constitution.
S272 (1) of the 1999 Constitution also provides thus:
“subject to the provision of S251 and other provisions of this constitution , the High court of the State shall have jurisdiction to hear or determine any civil proceedings of which the existence or extent of legal right, power, duty, liability, interest, obligation or claim is in issue.“
It should be noted that prior to the 1999 constitution, the State High Court used to have ‘Unlimited Jurisdiction’ in all matters, including passing off and other supportive reliefs.
In relation to the issue of passing off in The Trademark Act 2004, it is provided that:
“No person should be entitled to institute any proceeding to prevent it to recover damages for the infringement of an unregistered trademark, but nothing in this Act shall be taken to effect the right of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”
The above provision can be said to be a little bit confusing in the sense that the first part of the provision seems to be preventing a person for suing against the infringement of an unregistered trademark and the second part suggest that the non-registration of a trademark does not necessary impede on a registered owner or proprietor the right to sue for registered trademark infringement and passing off, as the two concepts are conterminous.
The codification of passing off laws in the Trademark Act remains the most controversial provision in relation to court jurisdictions in respect to passing off. The Nigerian courts have continued to struggle with the exercise of exclusive or concurrent jurisdiction between the Federal High Court and The State High Court in passing off breaches.
In the case of Alhaji Elebute & Or v. Olugbenga Ogunkua , The Federal High Court held that a person can only institute proceedings to prevent or recover damages for the infringement of a trademark if the trademark is registered and where the trademark is not registered ,is remedy lies in a state high court. And the plaintiff’s mark was not registered so he wasn’t supposed to have taken the action to a Federal High Court.
In the case of Patkum Industries Limited v. Niger Shoes Manufacturing Company Ltd an issue arose on whether the Federal High Court has jurisdiction in an action of infringement on a registered trademark where damages for passing off of goods has been claimed. The Supreme Court held on appeal that a passing off arising from the infringement of a plaintiff’s registered trademark is within the jurisdiction of the Federal High Court.
However, the above case was in 1988 before the amendment of the 1999 Constitution and it was not concerned with an action of passing off arising from an unregistered trademark.
The Federal High court only has jurisdiction over registered trademark as this provision is statutory under S3 of the Trademark’s Act and not common law. The Supreme Court claimed based on the provision of the Act that the Federal High court does not have jurisdiction to try cases in relation to unregistered trademark.
Though this section has codified the common law rule of passing off giving sufficiency to the right of a registered trademark owner, it has created two potential problems which relates to the status and scope of codification.
Therefore, although a Federal High Court has exclusive jurisdiction to try cases relating to registered trademarks and passing off relating to registered trademarks, it does not enjoy exclusive jurisdiction in respect to common law action of passing off which can be entertained in a State High Court.