Growth in IP awareness in Nigeria: comedian takes on Friesland Foodsand UACN Foods

By Nkechi Echeanyanwu (Okey IP)

Nigerian comedian Oga Sabinus owns the registered trademark SOMETHING HOOGE in Class 36
The comedian’s management agency filed legal notices against Friesland Foods for using the phrase ‘something hooge’ toadvertise its milk product
It also demanded the sum of N100 million from UACN Foods for using the animated image of the comedian in an advertfor a sausage roll

Background

IP rights protection aims to protect the limited right to exclude others from using original works of authorship, inventions ortrademarks, among others, without the permission of the owner. It also encourages innovators to invest time and money inintellectual property with a view to gaining financial benefits. Further, it creates a safe space for creative expression to thrivewithout third-party interference.

While most of Nigeria’s population lacks a true understanding of how IP rights can promote innovation in the economic sector,IP rights awareness has recently grown and gained traction in Nigeria.

Sabinus v Friesland Foods and UACN Foods

Recent cases involving Nigerian comedian and skit maker Chukwuemeka Ejekwu, popularly known as Oga Sabinus (an AfricaMagic Viewers' Choice Awards winner), are instructive in this respect.

In 2021 Sabinus filed and registered his trademark SOMETHING HOOGE (Application No NG/TM/O/2021/48316) in Class 36.Recently, the comedian’s management agency filed legal notices against Friesland Foods Wamco Nigeria Plc, the producers ofthe popular evaporated Peak milk, for the unauthorised use of the comedian’s trademark. Friesland Foods, in an Instagram postdated 24 May 2022, had used the phrase ‘something hooge’ to advertise its Peak milk product.

The comedian’s agency also demanded the sum of N100 million (approximately $240,000) from United African Company ofNigeria Foods (UACN Foods) for using the animated image of the comedian striking a pose in an advert for the Gala sausageroll. The images of both unauthorised uses are reproduced below:

It is accepted that the phrase ‘something hooge’ was filed and registered by the comedian. As such, he is entitled to theprotection afforded to a trademark proprietor. However, a case of infringement may not have been strictly established by theuse of the trademark by Friesland Foods for an online advertisement, which was outside of the protection of Class 36. Class 36covers “insurance; financial services; real estate agency services; building society services; banking; stockbroking; financialservices provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financialinformation”, while Class 35 covers “advertisements” and similar matters.

Further, the question remained as to whether Sabinus could claim damages based on dilution of his trademark, as the phrase“something hooge”, prior to its registration by the comedian, had been used in popular ‘street language’ and could be classifiedas generic or commonplace. Common words and phrases can be trademarked if the applicant can demonstrate that the phrasehas acquired a secondary meaning distinct from its original meaning. That secondary meaning must identify a particular good or service.

In respect of the UACN Foods case, although the animated image of Sabinus is yet to be registered as a trademark, the lattercan still bring an action under the common law principle of passing off, which is codified in Section 3 of the Trademark Act (rightof an unregistered trademark owner to sue for passing off).

Comment

These cases have drawn attention to, and increased the visibility of, the importance of IP rights protection in Nigeria. Celebritiesand other business entities are now more interested in protecting their various brands. As such, there has been a recent spike inIP applications in Nigeria. Hopefully, this interest will be sustained and further encouraged by the government by making theprocessing of applications as seamless as possible.