Defensive Registration Of Trademark As A Tool For The Prevention Of Trademark Dilution

By Agukwe Lynda Chinenye

A trademark is a unique sign or symbol used to identify particular goods of a proprietor as distinct from the goods of the competitors. Trademark indicates the source of products/services.

In Society Bic S.A & ors v Chazin industries(2014)JELR 33561(SC),a trademark was defined as a distinctive mark of authenticity through which the product of a particular manufacturer may be distinguished from those of others by word, name, symbol or device.

The essence of trademark is to link a particular product or service to a particular source thus aiding consumers to identify and distinguish the source of particular goods of one proprietor from those of others in the course of trade. A mere trademark has no built-in value. Its value lies in it’s goodwill, that is, good reputation in favour of the trademark owner which results from the ability of  the consumers to associate the mark with a particular company whose product or (and) services exist in the market place.

In Nigeria, a trademark is required to be registered before the proprietor could sue a third party for infringement. This however does not preclude the rights of the proprietor of an unregistered trademark from suing for passing off his mark.

Trademarks are registered in different classes of goods and services either in part A or B for the owner to enjoy the full benefits and protection provided for under the law.

For a proposed trademark to be registerable under Part A of the register, it must have passed the test laid down in section 9 of the Trademark Act, that is, such trademark must be inherently distinctive. On the other hand, a trademark is registerable under Part B if it is capable of acquiring a distinctive character through use or (and) adaptation. The registration of a trademark gives the registered proprietor the exclusive right to use the said trademark for the goods or similar goods for which the trademark is registered.

In practice, there are 45 classes of goods and services according to the Nice Classification. A trademark Proprietor is obligated to register his trademark in classes for which his goods and services fall in.

It is pertinent to note that use is not a compulsory requirement in registering a trademark in any of the forty-five classes. However, with respect to the stipulations in section 31 of the Trademark Act, a trademark would be removed from the register on the ground of non-use if the trademark, after which it became a registered mark, was not used in the course of trade for the goods/services for which it was registered for a continuous period of 5 years counting backwards from a month before the application for removal of the mark on the ground of non-use is presented.

Application for removal of a trademark on grounds of non-use could be made by a concerned person to the court or at the option of the applicant to the Registrar on either of the following grounds;

1. The trademark was registered without a bonafide intention by the applicant that it should be used in relation to the goods for which it is registered and that there has in fact, been no bonafide use of the mark by any proprietor up to one month before the date of the application to remove the mark; or
2. That a continuous period of five years or longer has elapsed during which the mark was registered and during which there was no bonafide use by the proprietor of the mark in relation to the goods for which it was registered.

For a proprietor to oppose an application to remove a trademark based on non-use, he must ensure that the mark in question is actively used in the class in relation to the goods or services for which they have registered them. Mere assertion of use is not enough. There must however, exist a clear and compelling evidence showing that the mark has been used in the market place in relation to the goods.

However, a proprietor of a well-known mark who does not intend to use his trademark in relation to goods or services beyond that for which they were originally registered, but wishes to allot his trademark additional statutory protection, may opt for a defensive registration of his trademark. Defensive registration of trademark is an exception to the requirement that a trademark must be “used or proposed to be used” in relation to the goods/services for which it was registered.

Defensive Registration of trademark is a form of trademark registration used to prevent trademark dilution. Here, the proprietor of a well-known mark is allowed to register its mark in unrelated classes to ensure that no other party is allowed to register same or similar mark in that class. Thus, where this is done, the law would not require the proprietor to use the mark on the unrelated goods/services and as such the mark will not be liable to be removed from the register on the grounds of non-use.

The mark sought to be registered as a defensive mark must be such that the use of the mark immediately signifies a connection in the course of trade between the mark and those entitled to use the mark. It is the connection in the course of trade that is sought to be protected by defensive registration.

As the name suggest, defensive registration acts as a defence, and not a sword. Its purpose is to protect the uniqueness of a well-known trademark, and to prevent third parties who wish to take advantage of the absence of registration in particular classes of goods and services and exploit the trademark for unrelated goods or services. This also secures the proprietor’s right in the related/unrelated classes of goods or services in the event of product expansion.

The import of defensive registration is to prevent the approval of third party application, thereby avoiding the need for lengthy and most times, costly opposition proceedings or litigation that may follow for trademark infringement.

Defensive registration of a trademark guards against dilution of the mark. If a well-known mark has garnered goodwill amongst the purchasing public in relation to a particular brand of product or service, any use of the same or closely resembling mark on unrelated goods to the proprietor’s good may likely be understood that the products have a common origin/source.

Dilution of trademarks applies to famous marks because any other use has the possibility to cause confusion in the public domain since consumers may assume affiliation with the owner of the mark regardless of the product or services. For instance, Indomie has grown to become a well-known mark in Nigeria for noodles. Any use of the mark Indomie on clothing, milk, etc may be taken to have the source of origin with the noodles. The unrelated goods by the other entity may be of inferior quality thereby any consumer that is disappointed with the product may likely take it that all such products sold under that trademark, including that of the true proprietor of the mark, are of inferior quality.  Based on this, the law allows the proprietor of the Indomie to register its mark in any or all classes of goods and services. By doing so, no other party would be allowed to register same or similar mark in any of the classes.

Defensive registration of trademark may be applicable to non-famous trademark upon a condition that the alleged infringing use creates a state of confusion as to the source of the products. An owner of a famous trademark in a suit for dilution need not show that both parties are in a competition. It is irrelevant whether or not goods and services are familiar.

There are basically two ways in which dilution of a trademark could occur-Blurring and Tarnishment.

Blurring refers to the loss of uniqueness of a trademark because of its association with goods and services other than those of the trademark owner. When deciding whether there exist dilution by blurring, there are certain factors that ought to be considered They are: Degree of similarity between the trademark that was blurred and the other, How recognizable the famous mark is, intention of the defendant in creating an association with the famous mark, degree of distinctiveness of the famous trademark and lastly, whether the famous product is related to the inferior product.

Tarnishment is a type of dilution that happens when the reputation of the famous mark is harmed through the association of an inferior trade mark.

To prevent dilution of trademarks, a defensive registration is a better option to curtail effect of trademark dilution.

Defensive Registration gives a better protection to well known or famous marks because by it’s allowing registration of trademark in more than one class, it prevents a third party use of the registered trademark in another class which has the ability to cause confusion between goods or services of the third party and the designated goods or services pertaining to the original trademark owner.

In conclusion, it is advisable that defensive Registration of trademarks should often be considered by owners of famous trademark to ensure an ideal and certain protection under the law.

Written by Agukwe Lynda Chinenye,a 300 level law student at University of Nigeria,Nsukka