Nigerian court finds for foreign trade mark owner

The Italian scooter manufacturer, Piaggio, was successful in legal proceedings in Nigeria, where the company’s former distributor had misappropriated trade marks.

Piaggio has a global business and it uses various trade marks including the word Piaggio and a hexagonal device. Piaggio registered its trade marks in Nigeria, before going on to appoint Nigerian company, Autobahn Techniques, as its local distributor. The relationship did not last and in 2010, Autobahn Techniques filed seven trade mark applications for the word Piaggio together with the hexagonal device. Piaggio opposed these applications on the basis that Autobahn Techniques could not claim to be the true proprietor of the trade mark. Autobahn Techniques, in turn, applied to cancel Piaggio’s registrations for non-use.

Judge Tsoho handed down judgment in the case of Piaggio & C.S.P.A v Autobahn Techniques Limited and the Registrar of Trademarks, Federal High Court, Lagos on 30 November 2017. The judge held that the oppositions should succeed and the applications for cancellation should fail. The judge also issued a declaration to the effect that Piaggio is the true owner of the trade marks in Nigeria.

The focus of the decision is very much on the concepts of true proprietorship and bad faith. As the Nigerian Trade Marks Act 1990 resembles the old British Trade Marks Act of 1938, the judge referred to some old UK decisions dealing with these issues. Some readers may be familiar with Re: Vitamins TM (1956) RPC 1, which says that where a company has first use of a trade mark in its own country and the goodwill attached to the trade mark extends to another country, the courts in the second country should not allow a local company to copy it. Or Al Bassam Trade Mark 1995 RPC 511, which tells us that if there are multiple claims to proprietorship of a trade mark the true proprietor is the person who first used it and, in the event of no use, the inventor of the trade mark. Or Sidewinder’s Trade Mark (1988) RPC 269, which says that a licensee/distributor cannot assert ownership of a trade mark owned by its licensor.

The judge had no doubt that the relationship between the two companies was one of principal and agent, and that sales made by Autobahn Techniques had been as a distributor of Piaggio’s business. These sales therefore did not confer any goodwill in the trade marks.

As regards ownership of the trade marks, the judge said that it was clear that Piaggio had first used the trade marks. In addition, Autobahn had acknowledged Piaggio’s ownership of the trade marks. It was, said the judge, quite clear that Piaggio ‘as inventor of the mark and its first user will have superior claim to proprietorship.’

This decision is important. Cases of misappropriation of trade marks by distributors or agents are unfortunately not uncommon. This decision will therefore provide some comfort to international companies. Having said that, it is important to register as early as possible.

Date published: 14 March 2018
Author: Spoor & Fisher

Tags: Nigeria trade marks