Trademarks_ And Patent Law Newsletter_may2009

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Unregistered Devices in the Context of Registered Trademarks: Lessons from the Ferodo Case for Trademark Agents in Nigeria May 2009 Vol. 22: Issue # 5 In the case of Ferodo v. Ibeto, the Nigerian Supreme Court held that where only a word or words are registered as a trademark, any associated get-up or device which is not registered cannot form the basis of an action in infringement of the registered word or words. Thus, unless the “get up” or device associated with a word or words is registered as a trademark, an action in infringement of the registered word or words cannot be sustained on the basis of an alleged infringement of the surrounding get up of the substantive trademark. The facts of the Ferodo case are fairly straightforward. The appellants in the Ferodo case are manufacturers and sellers of a brand of brake linings for motor vehicles sold in cardboard packages under the name of “FERODO” which was registered as a trademark in Nigeria. The appellants claimed that they had been in the Nigerian market for ten years prior to their suit against respondent with their distinctive trademark “FERODO” in the context of a specific graphic design which

comprises of a large red rectangle, a black and white chequered strip stretching from one side to the other lower end of the rectangle; and a small black rectangle centrally positioned in the upper-half of the rectangle in which “FERODO” is inscribed in white capital letters. The appellants sued the respondents for infringement of the appellant’s trademark; and for passing off the respondent’s brake lining as the appellant’s brake lining. The appellants contended that what was registered as a trademark is the entire representation of the word “FERODO” and the graphic backdrop of same as described above. The certificate of registration, however, indicates that only the word “FERODO” was registered as a trademark. The narrow question that fell for determination was whether in the absence of a specific indication of the face of the certificate of registration that what was registered included the backdrop, an action in infringement could be sustained on the basis of the backdrop to the registered word. In its judgment, the trial court found that there was no infringement of the appellant’s trademark firstly because it was only “FERODO” that was registered as a trademark. Neither the application for registration nor the certificate of registration evinced any

©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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intention on the part of the appellants to register the device associated with the word “FERODO”. The court held that the get up or backdrop to the registered word were mere embellishments and garnishes of the name “FERODO”. Being dissatisfied with the judgment, the appellants appealed to the Court of Appeal which affirmed the judgment of the trial court. Upon further appeal to the Supreme Court, the appellants contended that it was not only the word “FERODO” that was registered as a trademark but all the components, representation of the trademark were intended to be included and were included in the registration of the trademark. In the unanimous decision of the Supreme Court, what the appellant registered as a trademark is “FERODO”; the backdrop to the registered word “FERODO” are mere ornamentations and flourishes devoid of legal protection unless they had acquired a distinct association with the goods of the appellants. The import of the Ferodo case for trademark agents is that the litigation and expenses might have been avoided by including the device as part of the word “FERODO” in the application for registration of trademark. It is not uncommon for trademark agents, for

reasons ranging from mistake, carelessness or lack of attention to details to omit certain characteristic contexts or backdrops to a trademark when applying for registration. It is hoped that the Ferodo case will serve as a timely reminder to trademark agents to exercise care when preparing applications for registration of trademarks, especially, trademarks that have accompanying devices. 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

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©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.