Nigerian Trademarks And Patent Law Newsletter

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Unregistered Trademarks and Jurisdiction of Courts: Did the Supreme Court Err in Aymans’ Case March 2009 Vol. 22: Issue # 3 In Ayman Ltd v. Akuma Ltd, the Nigerian Supreme Court held that the Federal High Court, a special court with special jurisdiction over intellectual property disputes, including trademarks, does not have jurisdiction on actions in passing-off anchored on unregistered trademarks. Given that the compelling reason for the establishment of the Federal High Court in Nigeria is to create special courts with expertise and coherent jurisprudence on the subject-matter of intellectual property rights, the decision of the Supreme Court in Ayman’s case is puzzling indeed. It must strike trademark agents and lawyers as odd that the jurisdiction of a specialized court devoted to issues such as intellectual property rights disputes would be narrowly circumscribed by the Supreme Court. In Ayman’s case, the appellant instituted an action against the respondents in the Federal High Court, Lagos, claiming, in the main orders of injunction and damages for passing- off of the appellant’s products.

Contemporaneously with the filing of the writ of summons, the appellant also filed both an ex parte and a motion on notice for Anton Piller injunction. The trial court granted the ex parte application and adjourned the suit for hearing of the motion on notice. On the return date, the respondent filed a motion praying the court to vacate all the orders made ex parte. After taking arguments from counsel, the trial court refused the respondents application. The core issued raised was whether the Federal High Court had jurisdiction to entertain the action having regard to the fact that the action was founded on passing-off of an unregistered trademark. Dissatisfied with the decisions of both the trial court and the Court of Appeal on the issue of jurisdiction, the respondent appealed to the Supreme Court. In resolving the appeal, the Supreme Court considered the following relevant statutory provisions: Section 230 (1) (f) of the Constitution of the Federal Republic of Nigeria, 1979 as amended by Decree No. 107 of 1993 which states: Notwithstanding anything to the contrary contained in this Constitution and in addition to any such other jurisdiction as may be conferred on it by an Act of the National Assembly or a Decree, the Federal High Court shall

©Blackfriars LLP 2009. All rights reserved. This document is for general guidance only. Definitive advice should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative office in Toronto, Canada.

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have jurisdiction to the exclusion of any other court in civil causes and matters arising from:Any Federal enactment relating to copyright, patents, designs, trade marks and passing-off, industrial designs and merchandise marks, business names, and commercial industrial monopolies, combines and trusts, standards of goods and industrial standards.” Section 7 (1) (c) (ii) of the Federal High Court Act, 1973 which reads: The court shall have and exercise jurisdiction in civil causes and matters arising from any enactment relating to copyright, patents, designs, trade marks, and merchandise marks. Section 3 of the Trade Marks Act, Cap 436 Laws of the Federation of Nigeria, 1990 which provides: No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this Act shall be taken to affect rights of action against any person for passing-off as the goods of another or the remedies in respect thereof.” In the reasoning of the Supreme Court, for the Federal High Court to have jurisdiction over a passing-off claim arising from infringement of a trade

mark, the trade mark allegedly infringed must have been infringed. According to the Supreme Court, this is so because the right of action in passingoff under section 3 of the Trade Mark Act is statutory and id derived from that Act and not the common law. (TO BE CONTINUED) For further information, please contact: Ms. Nkeiru Onyeaso Tel: +234 808 718 0833 Email: [email protected] Fax: +1 646 536 8978 Ms. Clara Ndive Tel: +234 802 220 4755 Email: [email protected] Fax: +1 646 536 8978 Dr. Chidi Oguamanam Email: [email protected] Phone: +234 1 739 0397 (Lagos) Phone: +1 902 494 7125 (Halifax) Fax: +1 646 536 8978 This newsletter has been sent to you by BLACKFRIARS LLP, a full-service law firm, in the genuine belief that its contents would be of interest to you. If you have received this newsletter incorrectly, or if you do not want to receive further information about legal developments in Nigeria and West Africa, please accept our apologies. To unsubscribe from future newsletters from BLACKFRIARS LLP please send an email to [email protected] with "unsubscribe" in the subject line.

©Blackfriars LLP 2009. All rights reserved. This document is for general guidance only. Definitive advice should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative office in Toronto, Canada.