The study of the law of passing off and its application in Nigeria is necessary because there is a high rate of infringement regarding trademark and products in Nigeria. The situation in Nigeria has become one that the majority of the population do not even know what constitutes passing off and what does not constitute passing off.
The law of passing off is of great importance to trademark and copyright protection in Nigeria and we need to:
- Identify the law of passing off and its importance to the growing business sector in Nigeria.
- Identify the instances where the law of passing off is said to have occurred in Nigeria.
- Highlight the problems encountered as a result of the law of passing off and provide appropriate solutions
- Analyze the existing laws laid down for the law of passing off and its application in Nigeria.
- Allow for a more comprehensive understanding of passing off laws in Nigeria
One cannot talk about ‘passing off ‘without talking about ‘torts,’ which is the umbrella that covers passing off and other related laws.
The law of Torts is said to have originated from the Latin word ‘tortus’ which means ‘twisted,’ whose meaning turned to ‘wrong’ and is still in use by the French. Torts come to mean ‘a legal wrong’ or an infringement on the right of a person that will attract liabilities and remedies.
According to Kodilinye torts can be defined as a ‘civil wrong involving a breach of duty fixed by the law, such duty being owed to persons generally and its breach of being redress-able primarily by an action for damages.’
Tort is a part of civil law whose intent is to prevent people doing wrong to others and when that wrong actually occurs, the law of torts grants the injured party a right in action as well as award remedies and liabilities.
Some of the areas covered by the law of torts includes: Liability for animals, Economic torts, Trespass to Land, Trespass to person, vicarious liability, Defamation, Passing off etc. For instance, a breach of contract between one person and another or accidentally bashing another person’s car falls under the law of tort.
Meaning of passing off
Passing off is a branch under the law of tort that focuses on a representation of a person’s business or product by another in such a way that it deceives the society as to the relationship between the products. If someone opens a company with the name ‘Aeli Ltd’ and another person opens another company with the name ‘Eli Ltd’ there is a ninety percent chance that the general public can get confused and believe that these two companies have a relationship to each other.
So, passing off is said to be a false representation of one’s product as that of another person which deceive the general public into patronizing that product. Where a person uses another person’s name, trademark, description or uses any other form to take advantage of another person’s goodwill and reputation by making the general public believe that the product belongs to that other person, he is said to have committed the tort of passing off.
Passing off is in consonance with the fundamental maxim of ‘ubi jus ubi remedium’ – when there is a wrong, there is a remedy. In the sense that an unregistered owner of certain goods and services is not without remedy when there is an infringement on his products, trademark, trade name etc.
According to the Trademark Law, “a man is not to sell his own goods under the pretence that they are the goods of another man.”
Lord Parker in the case of Spalding & Bros v. A.N Gamage LTD held that the basis of passing off is a false representation of the defendant and it must be proved in every case that a false representation has been made.
Lord Kingslow said that “the fundamental rule is that no man has a right to put off his goods for sale as the goods of a rival trader.”
It was held in the case of Bryon v. Johnston that it is an actionable tort of passing off for a book publisher to advertise and sell books of poems with the name of Lord Bryon at the title page when in fact, the famous poet had nothing to do with the authorship.
Lord Langdale in the case of Perry v. Truefitt stated that “a man is not to sell his own goods under the pretence that they are the goods of another person; he cannot be permitted to such practice such as deception, nor to use any means which contributes to that end.”
Typical forms of passing off in Nigeria
Everyone has a right to enjoy the benefits of what they create, be it monetary benefit or even simply the goodwill and reputation that comes with it. In a country such as Nigeria, where people have little or no regards for the rights of other people, infringement on the trademark of many people has become of great concern to the public. It is common to see goods in the shops bearing almost the same name or trademark or even having similar packages .
The most common forms of passing off in Nigeria includes: using a name that closely resembles the name of an existing product, imitating the appearance of the plaintiffs products, producing fake products using the plaintiffs trademark, copying the plaintiff’s advertisement, selling the plaintiffs expired or inferior products thereby causing an injury to the plaintiffs reputation etc.
Another problem that is quite difficult to ascertain what exactly constitutes ‘goodwill’ when suing for an action in passing off. Goodwill is an important element in succeeding in an action of passing off, however, the existence of goodwill alone will not be enough to fulfill the other ingredients required for the Tort of passing off.
The House of Lords in the case of IRC v. Muller Margarine described goodwill in relation to the tort of passing off as ‘the benefits and advantage of the good name, the reputation and connection of a business. It is the attractive force which brings in custom.’
There is also the problem of jurisdiction. For the past few decades an important discourse has been going on regarding the jurisdiction of passing off in Nigeria and the question ‘whether Federal High Court and the State High Court could assume exclusive or concurrent jurisdiction in passing off?’ and the circumstances, if any, that would surround them. Even though this issue appears to be straightforward, it is a little more complicated than expected.
Grounds of passing off
The law of passing off is designed to prevent misrepresentation in the course of trade in a business which is likely to confuse the public. Passing off does not confer monopoly rights to any names, get up, marks etc., it does not recognize them as a property in its own right unlike under trademark.
The grounds for passing off includes trading with a name resembling that of the plaintiff, marketing a product as that of a the plaintiff, marketing goods with a name resembling that of the plaintiff’s goods, marketing products with the plaintiff’s trademark or it’s imitation, imitating the get up of the plaintiff’s product, imitating the plaintiff’s advertisement or selling inferior or expired goods of the plaintiff as a current stock.
An action for copyright will lie where a defendant is involved in business very similar as a plaintiff and adopts a name which will make the public believe that his business and that of the plaintiff are the same or connected. In the case of Beecham Group Ltd v. Esdee Food Product Nigeria Ltd it was held that the trademark ‘glucose-aid’ is calculated to deceive the public in sound in consideration of the trademark ‘Lucozade.’
In the case of Niger Chemist v. Nigerian Chemist , Palmer J said that “it seems to me a matter of common sense that when two firms trade in the same town, in the same street and in the same line of business, one calling itself ‘Niger Chemist ‘ and the other “Nigerian Chemist,’ there must be a grave risk of confusion and deception.
In Ogunlende v. Babayemi the plaintiffs were building and civil engineering contractors carrying on business as ‘Mercury Builders’. They were granted an injunction to refrain the defendants from carrying out a similar business name as ‘Mercury Builders Nigeria Ltd .’
In the case of UK Tobacco Co Ltd v. Carreras Ltd, the defendants marketed cigarettes called ‘ barrister’ with a picture of a white man in a wig and gown. This was restrained from imitating the appearance of the plaintiff’s cigarettes known as ‘band’ which had a picture of a man in a band master’s uniform .
Elements of passing off
The elements of passing off are the requirements that a person must prove in order to succeed in a claim of passing off. There are three elements of passing off known as the ‘classic trinity’. These three elements were reduced by Lord Oliver from Lord Diplock’s five elements as laid down in the case of Erven Warnink v. Townend & Sons Ltd . This is also known as the ‘advocate case.’
They are:
(i) Goodwill owned by the trader
(ii) Misrepresentation
(iii) Damage to goodwill
(i) Goodwill owned by the trader
The plaintiff must have acquired some kind of goodwill from the product that he feels necessary to protect. The existence or otherwise of a course of action in passing off and the existence of established goodwill will then have to be decided by the court in each particular case.
In the case of ICR V Muller Margarine goodwill and reputation with respect to passing off was defined as ‘the benefits and advantages of a good name, reputation, and connection of a business. It is the attractive force which brings in customers.”
The establishment of goodwill is key to proving a claim of passing off but it cannot by itself suffice without the other two key elements of the classical trinity.
(ii) Misrepresentation
The plaintiff has the burden to prove that there had been a misrepresentation, whether intentional or otherwise, capable of misleading the public. There must be a likelihood, actual deception or confusion by the public. It is the court’s duty to decide the similarity or identity of the goods or services. The criteria used in measuring this are usually; visual, aural and conceptual similarities.
(iii) Damage to goodwill
It is not enough to prove that there is an existence of goodwill or misrepresentation; it is necessary to show that damage had occurred as regards to that misrepresentation. He must show that he had suffered or is likely to suffer loss from that misrepresentation.
The plaintiff does not need to prove actual or special damage; real or tangible probability of such damage will suffice. However, the damage must be reasonably foreseeable.
In such instances, the court must use common sense in determining the case based on the evidence provided and judicial discretion in opposition to witnesses.
Disclaimers may not be enough to avoid liability in cases of passing off.
Legal protection of products in Nigeria
Protecting your product can be the best thing you can do especially in a country like Nigeria where there is a high rate of passing off and copyright infringement. In cases of unregistered trademarks, a person may need to bring an action to prevent ‘passing off. A person can prevent others from selling or marketing his products or confuse the public into believing they are one and the same products by proving the extent to which his goods are being sold.
The period of protection against passing off is indefinite as a person is allowed to take legal action for as long as his goods or services are being infringed on. Although, there are laws on the books dealing with intellectual property violations, Nigeria’s legal and institutional infrastructure for protecting intellectual property rights is in need of further development.
Legal protection of products in Nigeria is regulated by The Copyright Act, 1988 as amended in 1992 and 1999, the Trademarks Act of 1965, and the Patent of Designs Act of 1970.
One of the most common forms of passing off is passing off on the name of a business. A business name indicates what a business stands for. The Companies and Allied Matters Act (CAMA) in S30 (a) and S579 (d) and (e) requires that every individual, firm or corporation having a place of business in Nigeria, whether such a person is carried on in the individual’s name or in a corporate name, must be registered at the Corporate Affairs Commission within a period of 28 days of the commencement of such a business; and this is to ensure that no trade name can be used to deceive or cause confusion as to the distinctiveness of two different businesses in Nigeria.
In Continental Pharmaceutical Ltd v. Sterling Products Nigeria PLC and SmithKline Beecham Plc, the plaintiff, Continental Pharmaceutical Ltd were manufacturers of a registered trademark designed with the words ‘Conphamol’ brought an action against the defendants for allegedly infringing on the salient features only substituting Conphamol for Panadol. It was held that passing off had occurred due to the infringement of the Plaintiff’s registered trademark.
Passing off law does not only highlight what constitutes an infringement in that aspect, rather it grants appropriate remedies to those whose products or business has been infringed upon whether there is a proof of actual damage or not, so long the ingredients of what constitutes an infringement is satisfied.
Passing off is something that needs to be taken seriously in this country because a lot of people have fallen victims to lack of knowledge on how to protect their goods or ensure that they get the right remedy when such infringement occurs.
