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  • Nigerian Trademarks and Patent Law Newsletter

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    Blackfriars LLP
    189 vizualizări2 pagini
    Unregistered Trademarks and Jurisdiction of Courts: Did the Supreme Court Err in Aymans’ Case 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 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 passing-off under section 3 of the Trade Mark Act is statutory and id derived from that Act and not the common law.

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    Unregistered Trademarks and Jurisdiction of Courts: Did the Supreme Court Err in Aymans’ Case 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 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 passing-off under section 3 of the Trade Mark Act is statutory and id derived from that Act and not the common law.

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    Attribution Non-Commercial (BY-NC)
    Descărcați ca PDF, TXT sau citiți online pe Scribd
    Indicator pentru conținut neadecvat
    189 vizualizări2 pagini

    Nigerian Trademarks and Patent Law Newsletter

    Încărcat de

    Blackfriars LLP
    Unregistered Trademarks and Jurisdiction of Courts: Did the Supreme Court Err in Aymans’ Case 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 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 passing-off under section 3 of the Trade Mark Act is statutory and id derived from that Act and not the common law.

    Drepturi de autor:

    Attribution Non-Commercial (BY-NC)
    Descărcați ca PDF, TXT sau citiți online pe Scribd
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    din 2

    WWW.BLACKFRIARS-LAW.

    COM

    Unregistered Trademarks and Contemporaneously with the filing of


    Jurisdiction of Courts: Did the the writ of summons, the appellant also
    filed both an ex parte and a motion on
    Supreme Court Err in Aymans’
    notice for Anton Piller injunction. The
    Case trial court granted the ex parte
    application and adjourned the suit for
    March 2009 Vol. 22: Issue # 3 hearing of the motion on notice.

    In Ayman Ltd v. Akuma Ltd, the Nigerian On the return date, the respondent filed
    Supreme Court held that the Federal a motion praying the court to vacate all
    High Court, a special court with special the orders made ex parte. After taking
    jurisdiction over intellectual property arguments from counsel, the trial court
    disputes, including trademarks, does refused the respondents application.
    not have jurisdiction on actions in The core issued raised was whether the
    passing-off anchored on unregistered Federal High Court had jurisdiction to
    trademarks. entertain the action having regard to the
    fact that the action was founded on
    Given that the compelling reason for the passing-off of an unregistered
    establishment of the Federal High Court trademark. Dissatisfied with the
    in Nigeria is to create special courts with decisions of both the trial court and the
    expertise and coherent jurisprudence on Court of Appeal on the issue of
    the subject-matter of intellectual jurisdiction, the respondent appealed to
    property rights, the decision of the the Supreme Court.
    Supreme Court in Ayman’s case is
    puzzling indeed. It must strike In resolving the appeal, the Supreme
    trademark agents and lawyers as odd Court considered the following relevant
    that the jurisdiction of a specialized statutory provisions:
    court devoted to issues such as Section 230 (1) (f) of the
    intellectual property rights disputes Constitution of the Federal Republic of
    would be narrowly circumscribed by the Nigeria, 1979 as amended by Decree No.
    Supreme Court. 107 of 1993 which states:
    Notwithstanding anything to the
    In Ayman’s case, the appellant contrary contained in this Constitution
    instituted an action against the and in addition to any such other
    respondents in the Federal High Court, jurisdiction as may be conferred on it by
    Lagos, claiming, in the main orders of an Act of the National Assembly or a
    injunction and damages for passing- off Decree, the Federal High Court shall
    of the appellant’s products.

    ©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.
    WWW.BLACKFRIARS-LAW.COM

    have jurisdiction to the exclusion of any mark, the trade mark allegedly
    other court in civil causes and matters infringed must have been infringed.
    arising from:- According to the Supreme Court, this is
    Any Federal enactment relating so because the right of action in passing-
    to copyright, patents, designs, trade off under section 3 of the Trade Mark
    marks and passing-off, industrial Act is statutory and id derived from that
    designs and merchandise marks, Act and not the common law. (TO BE
    business names, and commercial CONTINUED)
    industrial monopolies, combines and
    trusts, standards of goods and industrial For further information, please contact:
    standards.”
    Ms. Nkeiru Onyeaso
    Section 7 (1) (c) (ii) of the Federal High Tel: +234 808 718 0833
    Court Act, 1973 which reads: Email: Nkay@blackfriars-law.com
    The court shall have and exercise Fax: +1 646 536 8978
    jurisdiction in civil causes and matters
    arising from any enactment relating to Ms. Clara Ndive
    copyright, patents, designs, trade marks, Tel: +234 802 220 4755
    and merchandise marks. Email: pius@blackfriars-law.com
    Fax: +1 646 536 8978
    Section 3 of the Trade Marks Act, Cap 436
    Laws of the Federation of Nigeria, 1990 Dr. Chidi Oguamanam
    which provides: Email: chidi@blackfriars-law.com
    No person shall be entitled to Phone: +234 1 739 0397 (Lagos)
    institute any proceeding to prevent, or Phone: +1 902 494 7125 (Halifax)
    to recover damages for, the Fax: +1 646 536 8978
    infringement of an unregistered trade
    mark, but nothing in this Act shall be This newsletter has been sent to you by
    taken to affect rights of action against BLACKFRIARS LLP, a full-service law firm, in
    the genuine belief that its contents would be of
    any person for passing-off as the goods
    interest to you. If you have received this
    of another or the remedies in respect newsletter incorrectly, or if you do not want to
    thereof.” receive further information about legal
    developments in Nigeria and West Africa,
    In the reasoning of the Supreme Court, please accept our apologies. To unsubscribe
    from future newsletters from BLACKFRIARS
    for the Federal High Court to have
    LLP please send an email to info@blackfriars-
    jurisdiction over a passing-off claim law.com with "unsubscribe" in the subject line.
    arising from infringement of a trade

    ©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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