In 2002 Ocean Waves Corporation Limited applied for the registration in Class 9 in Nigeria of the trademark QLINK. The company has been using the mark since 1996. The application was accepted and subsequently advertised in the October 2002 Trademark Journal.
FAPA Company Limited opposed the application and subsequently applied for registration of the trademark in the same class. The registry advised FAPA to seek redress in the Federal High Court based on Section 13(3) of the Trademarks Act.
Section 13(3) states that where separate applications are made by different persons to be registered in respect of the same goods or description of goods, as proprietors of trademarks that are identical to or closely resemble each other, the registrar may refuse to register any of them until their rights have been determined by the court or settled by agreement in a manner approved by either the courts or the registrar.
Based on Section 13(3), FAPA sued Ocean Waves in the Federal High Court, claiming proprietorship of the trademark. The matter was struck out for being premature. FAPA appealed to the Court of Appeal, but eventually withdrew the appeal voluntarily.
In 2014 Ocean Waves brought a suit – Ocean Waves v Registrar of Trademarks – to the court claiming ownership of QLINK in Class 9. It also sought a declaratory order demanding, among other things, that its name be entered in the register as owner of the trademark. The reliefs were granted and Ocean Waves was duly entered in the register as proprietor of the trademark.
As a result, FAPA filed a fresh action against Ocean Waves and the registrar of trademarks, asking the court to overturn the orders. FAPA argued that the judgment was null on the grounds that it breached its constitutional rights to a fair hearing, as the judgment directly and adversely affected its interests.
The trial judge declined jurisdiction on the grounds that it had no powers to review or set aside the ruling of the court of coordinate jurisdiction. Dismissing the suit, the judge upheld the preliminary objection filed by Ocean Waves in this respect. FAPA therefore appealed to the Court of Appeal.
The main issues were:
whether the trial judge was right when he entertained the preliminary objection; and
whether the trial judge was right when he held that he had no jurisdiction to review the judgment of another court of coordinate jurisdiction.
The Court of Appeal held that since the question of jurisdiction was not a mere irregularity, but relied on the competence of the court, the trial court was right in entertaining the preliminary objection because a preliminary objection regarding jurisdiction and issues of law can be raised at any stage or for the first time on appeal.
A judge cannot sit or review an appeal regarding the decision of another judge of coordinate jurisdiction, but can set aside a decision of another judge where it is null and void.
The decision was referred to the Federal High Court for a new trial.
It should not always be expected that a fair hearing is the foundation of every case. Where this foundation is not met, any derivative decision is likely to fail. However, in FAPA the appeal was voluntarily withdrawn. It may be implied that the company relinquished its interest in the trademark. As a result, FAPA’s interest and rights over the trademark were accepted.
The court in Ocean Waves may have acted properly when it refused to treat FAPA as an interested party whose interest would be directly and adversely affected by the judgment. Following the decision, FAPA’s interest in the trademark ceased.
The confusion regarding QLINK’s rightful owner is based around Nigeria’s first-to-file rule. Brand owners seeking to rely on trademark registration in Nigeria must be aware that Nigeria follows the first-to-file rule not only for patents, but trademarks as well.
The rule means that the first person to apply for and register a trademark automatically acquires title over the mark and priority over any other person who has been using the marks before its registration, irrespective of whether the mark is well known and has acquired a reputation or goodwill through prolonged use. This rule was applied in Intel Corporation v Dusayo Investment (NIG) Ltd and Nabisco Inc v Allied Biscuits Company Limited.
It is imperative that brand owners seek registration in Nigeria as a priority when preparing or planning to enter the market, especially if they wish to avoid losing their rights.
The legal regime regarding trademarks and other IP laws in Nigeria must be amended to bring them into line with international standards. Nigeria’s existing trademark law was enacted in 1965, having been copied from the UK Trademarks Act 1938. The United Kingdom has since enacted a new law, yet trademark rights in Nigeria are still governed by a law conceived in 1938, making it obsolete. This has created numerous loopholes and instigated many disputes regarding the protection of IP rights in Nigeria.
Written for and first published by World Trademark Review, May 2017