9 October 2023
It is not uncommon to find a registered trade mark also registered as a company/business name in the corporate register by a different company from the trade mark proprietor. Sometimes it is simply a coincidence, while other times it is done in a bid to claim the goodwill associated with the trade mark.
The Companies and Allied Matters Act 2020 (hereinafter referred to as “the Act”) in an attempt to address this provides in section 30(4) that where a registered company/business name is identical to a registered trade mark and the registration of the company/business name was done without the consent of the trade mark proprietor, the Corporate Affairs Commission (hereinafter referred to as “CAC” or “the Commission”) can request a voluntary change of name from the company. Where the company fails to change its name after a formal request from the Commission, the trade mark proprietor is empowered under the Act to object to the company registration at the Administrative Procedure Committee (hereinafter referred to as “APC”) that functions as a tribunal for CAC or institute an infringement suit at court. Section 857 of the Act provides the grounds upon which the registration of a company/business name can be challenged before the APC, which includes that the name is the same as the name associated with the applicant in which he has goodwill, or the name is sufficiently similar to a name that its use in Nigeria would be likely to mislead by suggesting a connection between the company and the applicant. The provision contained in section 857 appears to expand the earlier provision in section 30 to indicate that well known marks can also take advantage of this provision and challenge the registration of a company/business name on the ground of goodwill and likelihood of confusion. Prior to the institution of the APC under the Act in 2020, the sole recourse available to a trade mark proprietor when a company refuses to change its name after a notification from CAC was to institute an infringement proceeding against the company at the Federal High Court of Nigeria.
Recently, the Federal High Court delivered a judgment in the case of Sanofi S.A. v Sanofi Integrated Services Ltd and 3 Ors. that has lent judicial voice to this issue and established that the registration of a registered trade mark as a company/business name constitutes trade mark infringement and is liable to damages. In this case, Sanofi S.A, a foreign multinational pharmaceutical company with a registered trade mark in Nigeria, discovered that its trade mark, SANOFI, has been registered as a company name at CAC by three business organisations, namely Sanofi Integrated Services Ltd, Sanofi Nigeria Enterprises Limited and Sanofi Nigeria Enterprise (hereinafter referred to as “the Defendants”). Sanofi S.A.’s trade mark registration was dated 1987 while the company and business name registrations of the Defendants occurred in 1992 and 2011 respectively. As a first step, Sanofi S.A. notified CAC who in turn sent an official notification to the company requesting a voluntary change of name in line with section 30 of the old Companies and Allied Matters Act 1990 (which is identical to section 30(4) of CAMA) on the basis that the name is identical to a registered trade mark. The Defendants ignored the Commission’s notification, thus forcing Sanofi S.A. to institute an infringement suit against the three business entities at the Federal High Court. The court found in favour of Sanofi S.A .and stated that the Defendants’ company/business name registration was unlawful as it violates Sanofi S.A.’s existing trade mark registration.
Although the decision of the court has provided judicial backing for the provisions of the Act, certain practical challenges exist that would result in continued duplication of registered trade marks as company/business names. Chief of the challenges is the fact that CAC does not have access to the trade mark register and as such cannot conduct a prior search of the trade mark register to verify that the proposed company name is not identical to an existing trade mark. Until there is an amalgamation of both registers or the Commission is granted access to the trade mark register, the duplication will persist. For now, businesses could take the initiative and conduct a search of the trade mark register before initiating a registration with CAC.
On the other hand, a necessary question is, what is obtainable if the reverse is the case i.e., what happens when a company name is registered as a trade mark by another company? The Trade Marks Act is silent in this regard and there is no mention of this in the Companies and Allied Matters Act. The judgment in Sanofi’s case provides some answers to what might apply in such situation. According to the judge, “a trade marked name takes precedence over a business name”. Although a registered company name might not affect the subsequent registration of the name as a trade mark by another party, the owner of the company name might be able to bring a passing off claim against the trade mark registration especially if the both registrations cover a similar line of business.
In conclusion, business entities should be wary of incorporating a registered trade mark into their company/business name and vice versa. It will save the organisation a lot in the long run and help reduce the risk of financial loss through court action or loss of reputation.