Recent developments involving popular comedian and skit maker, Chukwuemeka Ejekwu, also known as Oga Sabinus, threatening to sue Friesland Foods, makers of Peak milk brand and UAC Foods, the makers of sausage roll—Gala. He claimed that the two companies used his trademark and image without his authority. His claims are simply considered Intellectual property theft.
Intellectual property theft—or IP theft—refers to the robbing of people or companies of their ideas, inventions, and creative expressions (i.e., their IP) resulting in serious economic damage, loss of competitive edge, goodwill and decreased business growth.
The skit maker is demanding N1 billion from Friesland as compensation and damages for the use of the catchphrase, something hooge, in an advert on its social media handle, and N100 million from UAC for the use of his picture in one of its ad campaigns.
Is Sabinus stricto sensu entitled to damages for the use of his registered trademark, something hooge, with file number: NG/TM/O/2021/48316. And Sabinus calculating posture in an image?
Trademarks protections are registered in classes. Classes 1-34 deal with protection of different goods. Classes 35-45 deal with different services. For one to simpliciter enjoy trademark protection, one must register his goods or services in any of the classes. Registered marks are protected only in respect of those classes. It is only when a similar infringing goods or services infringes that mark that the proprietor (owner) can claim damages or seek redress.
This case has attracted arguments and raised IP consciousness amongst Nigerians. It is typical to see a Nigerian doing business without even registering his business name/company talk less of protecting his trademark(s). It is also not uncommon with registered companies/business names assuming IP Protection because of their corporate protection.
Sabinus acceptance letter showed that the trademark was registered only under Class 36. Class 36 covers Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information. This means that Sabinus’ claim of “something hooge” trademark infringement can only succeed if it was used in the same line of business it was registered. This is a probable strong defence for Friesland Foods.
With available facts in circulation and relayed above, Sabinus would probably have a strong case under trademark dilution. Trademark dilution extends beyond classes and refers to the unauthorised use of and/or application for a trademark that is likely to weaken the distinctive quality of or harm a famous mark. The question of whether a famous trademark is diluted is a separate question from whether the mark is infringed, i.e., whether the unauthorised use is likely to cause consumer confusion. The trick for s successful claim is to allege both dilution and infringement together. Though trademark dilution is not expressly provided for in our Trademarks Act, nothing prevents a persuasive argument for same.
Trademark dilution does not necessarily involve the unauthorised use of a mark in connection with goods or services that are confusingly like those offered in connection with the famous mark. It protects marks that are so well-known, highly reputable, or famous that jurisdictions have decided they deserve protection whether their unauthorised use is likely to cause consumer confusion.
To be considered well-known, highly reputable, or famous, a trademark must be recognisable to the public, i.e, it must be a household name. For example, the following would likely be considered famous trademarks in many countries around the world: Google, Coca-Cola, Sony, Nike, Adidas, etc. The question now would be is something hooge famous to succeed under trademark dilution?
Sabinus must show that the mark is famous, there was an unauthorised use of his trademark on products, in this case milk and gala, that do not compete with, have little or no connection with those of the trademark owner and creates a likelihood of confusion as to the source of the product or service being identified by the allegedly infringing use.
Image rights are the expression of a personality in the public domain. Image rights concern the various rights an individual holds in his/her own persona (including name, photo and likeness, signature, personal brand, slogans, or logos). Other rights that an individual can possess in his/her own persona include appearance, silhouette, feature, face expressions (verbal or facial), mannerisms, and the likes.
Sabinus image in question must not be registered before he can validly lay such claims, it is important to note that image rights unlike other IP’s need no further protection as the use of one’s image without his or her consent amounts to an infringement, though the quantum of damages may be determined by other factors. Once one is not associated or contracted to promote a particular brand, the use of his or her image without his or her consent makes the infringer liable. Thus, Sabinus here has a good and stronger claim against UAC Foods Ltd, makers of gala as against Friesland Foods, makers of Peak milk brand
In conclusion, as the case of Sabinus has arisen the IP consciousness amongst Nigerians, Individuals and corporate entities are enjoined to make frantic efforts to ensure they do not infringe on other people’s intellectual property right.
Adick, an intellectual property/sports and entertainment lawyer, writes via [email protected]
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