Trademark Infringement by Company Names in Nigeria- THE SANOFI CASE
The Federal High Court of Nigeria recently made a landmark judgement which should permanently resolve the conflicts between registered trademarks and company names in Nigeria.
In 2019, the French multinational pharmaceutical company, Sanofi S.A. lodged a complaint at the Corporate Affairs Commission (CAC), demanding that three Nigerian companies Sanofi Integrated Services Limited, Sanofi Nigeria Enterprises Limited and Sanofi Nigerian Enterprise which incorporated its registered trademark, “Sanofi” into their company names, alter the names of their companies as the use SANOFI by the companies is an infringement of their existing Sanofi trademark.
The CAC issued a directive to the three companies to voluntarily change their names, however the companies failed to comply with this directive. As such, Sanofi S.A. instituted an action for trademark infringement at the Federal High Court. The presiding judge, Justice Omotosho upheld the directive of CAC, granted injunction and damages against the infringing companies for trademark infringement.
The judgement of the Federal High Court will undoubtedly put to bed the conflict between prior registered trademarks and company names in Nigeria. Most importantly, the judgement is in compliance with the provisions of the Companies and Allied Matters Act (CAMA), the principal legislation governing companies’ registrations in Nigeria.
Section 30(4) of the Act provides that
“Nothing in this Act precludes the Commission from requiring a company to change its name if it discovers that such a name conflicts with an existing trade mark or business name registered in Nigeria prior to the registration of the company and the consent of the owner of the trade mark or business name was not obtained.”
The provision of this section is clear and unambiguous. A trademark which was registered in Nigeria prior to the registration of a company name takes priority over the company name. The vested rights in the registered trademark are protected by this provision against all forms of unauthorized use by a third party.
In addition, Section 852(1) of CAMA 2020 expanded the scope of protection of trademarks. The section states thus:
“an applicant can object to a registered company name, limited liability partnership, limited partnership, business name or incorporated trustees on the ground that it is:
"(a) the same as a name associated with the applicant in which he has goodwill; or
(b) sufficiently similar to such a name that its use in Nigeria would be likely to mislead by suggesting a connection between the company, limited liability partnership, limited partnership, business name or incorporated trustee and the applicant”.
(d) in the opinion of the Commission, would violate or conflict with any existing trademark or business name registered in Nigeria or body corporate formed under this Act unless the consent of the owner of the trade mark, business name or trustees of the body corporate has been obtained
From the section 852 (1), the application to the CAC for the alteration of company names that are in conflict with an existing trademark in Nigeria can be initiated by either:
Owner of a prior registered trademark or
An Applicant that has a goodwill to protect or
the CAC.
Sections 30(4) and 852 (1) of CAMA are fundamental in ensuring that due diligence is exercised by individuals seeking to register a company or business in Nigeria to ensure that the names are not in conflict with an existing trademark.
Finally, the judgement would boost the confidence of Investors and rights owners in the Nigerian judiciary, thereby increasing FDIs and economic growth of the country. Also, it will encourage right owners to assert and enforce their legal rights in Nigeria and further strengthen the importance of trademark protection as a panacea of economic development in the country.
