Introduction
Facts
Decision
Comment
Trademark systems aim to protect identifying signs that help customers to determine the source of particular goods or services. Words, names and logos are noticeable identifiers, but colours, shapes and trade dress are also distinguishing factors for a brand. Therefore, their protection is available in many jurisdictions.
However, the understanding of trademarks in Nigeria appears limited to conventional word marks and logo designs or devices. While recognition of unconventional marks (eg, shapes and colours) may be inferred from the Trademarks Act 1990, not many applications are filed at the Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment for the registration of shapes and colours of goods.
In Duracell Batteries BVBA v Mczen, the Federal High Court set a clear legal precedent by recognising the existence of proprietary rights in shapes and colours of goods.
Since 1966 Duracell Batteries BVBA has been the registered owner of the trademark DURACELL in Nigeria in respect of batteries. For the specific purpose of further identifying its goods and distinguishing them from those of others, the company filed the distinctive figurative trademark COPPER AND BLACK COLOUR GET UP OF DURACELL, which was registered in 2000 with exclusive proprietary rights to claim the combination of copper and black get-up for batteries.
The plaintiff discovered that copper and black batteries made in China which were not of its own manufacture were being offered for sale in Nigeria.
Duracell Batteries BVBA filed a class action against the defendants for infringement and passing off by imitating the trade dress of its batteries. The action was brought by the plaintiff even though none of the defendants’ products were branded with the DURACELL mark; instead, they were manufactured, imported and marketed under the brand names Mczen, Toku, Tika, KUC, Destiny Super and Xiong Jiang.
The plaintiff established the four conditions for infringement – namely, that:
- the trademark was a registered trademark;
- the defendants had infringed the trademark;
- the act of infringement had been performed without the plaintiff’s consent or licence; and
- the defendants’ acts were not covered by the claims of their patents.
The plaintiff further argued that the unique battery shapes and colours were a design particular to Duracell batteries and not a generic design for batteries in general. It claimed that imitating the copper and black colours was akin to adopting the Coca Cola contour bottle and affixing a different name to it to market a cola beverage.
The court granted:
- a perpetual injunction to prevent the defendants and their privies and agents from:
- infringing the plaintiff’s COPPER AND BLACK COLOUR GET UP OF DURACELL trademark, which had been registered for the plaintiff’s exclusive use in respect of its batteries;
- passing off, attempting to pass off or causing or assisting others to pass off by offering for sale batteries in the colour combination of copper and black which the plaintiff did not manufacture or merchandise;
- the manufacture, import, sale, offering for sale or supply of batteries in the colour combination of copper and black under the brand names Mczen, Toku, Tika, KUC, Destiny Super and Xiong Jiang or any other representations or forms which closely resembled the plaintiff’s colour combination that were calculated to lead to the belief that batteries which the plaintiff did not manufacture were the plaintiff’s products;
- an order permitting the court’s bailiffs and sheriffs to enter the defendants’ various premises to seize and destroy all batteries with the brand names Mczen, Toku, Tika, KUC, Destiny Super and Xiong Jiang which were manufactured, imported, displayed and sold by the defendants and all of their agents at any place, shop, store, office or premises and wherever the defendants or any of those on whose behalf the defendants had been sued were performing the manufacture, sale and storage of the offending batteries which infringed and passed off the plaintiff’s COPPER AND BLACK COLOUR GET UP OF DURACELL trademark;
- an order restraining the defendants from further import of the illegal batteries into Nigeria from China or other countries;
- an order directing the comptroller general, officers and the Nigerian Customs Service to prevent further entry into Nigeria of such illegal batteries which contravened the law and to ensure the seizure and destruction of all batteries, other than those of Duracell, in the colour combination of copper and black that were labelled as Mczen, Toku, Tika, KUC, Destiny Super and Xiong Jiang or any other brand names which entered Nigerian ports; and
- leave to the plaintiff to obtain and use the protection of the Nigerian Police Force to carry out the execution of the court’s orders.
In the absence of contemporary trademark legislation that expressly provides for the protection of trade dress and get-up, this judgment will be welcomed by trademark owners. It may give applicants confidence to file and register their distinctive colours and shapes and creates a precedent for the courts to protect such trademark rights.
For further information on this topic please contact Fisayo Tifase at Abdulai Taiwo & Co by telephone (+234 1 496 7982) or email ([email protected]). The Abdulai Taiwo & Co website can be accessed at www.abdulaitaiwo.com.
