IN DEFENSE OF HOMECOMING CONCERT: FAIR DEALING UNDER TRADEMARK ADMINISTRATION IN NIGERIA

INTRODUCTION

In a recent post made by the “HOMECOMING” concert in Nigeria, the flier announcing the lineup of artists billed to perform has been a subject of several debates on social media with trademark professionals inquiring into the legal of trademark laws in Nigeria with respect to the flier. The flier as shown above modified several brands' logos including Coca-Cola, Milo, Indomie, Fanta, etc. While there are praises as to the ingenuity of the creative designers, the possibility of a legal liability for such design cannot be ignored. This article will attempt to deep dive into the concept of Trademark protection in Nigeria.

CONTEXTUALISING THE CONCEPT OF TRADEMARK

The extant law on Trademark protection in Nigeria is the Trademark Act and the interpretation section defines it as “a mark used or proposed to be used in relation to goods to indicate, or to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark…” this implies that it is a distinctive mark of trade protected against the unauthorized use an infringing third-party.

In 2001, Addidas recorded a settlement of $305 million in Trademark infringement action against Payless. In 2012, a US Court ruled in favour of Gucci, awarding damages of $4.7 million against Guess. In 2023, the Nigerian court ruled in favour of Sanofi (a French pharmaceutical company) and directed Corporate Affairs Commission to withdraw the registration of infringing business entities. This is how far the law can go to protect the trademarks and identities of businesses universally against infringing third parties. The next important question is; What constitutes trademark infringement?

In the case of Ferodo Ltd v Ibeto Ind Ltd where there was a trademark infringement allegation on the defendant, the court identified what qualifies as trademark infringement highlighting the two conditions;

1. infringement of a trademark consists of unauthorized use or colourable imitation of a trademark on substituted goods of the same class as those for which the mark has been appropriated.
2. Infringement of a trademark occurs when there is a deliberate or even chance occurrence by the defendant to make its own product almost similar to the plaintiff’s product to such an extent that intending customers would readily confuse one product for the other.

This can be translated to mean that there must be a deception to confuse the customers through the imitation of the trademark infringers.

However, there are instances where the use of a third party could qualify as “Fair Dealing” under the Nigerian jurisprudence. Similarly, under Nigerian law, per OGUNWUMIJU, J.C.A held in the case of P&G Co v. Global Soap & Detergent Industries Ltd & Or that;

“The Plaintiff must establish his title either as proprietor or as a registered user entitled to sue. He must then prove that the defendant has acted or threatens to act in a way as to infringe the right conferred upon him by the registration of the trademark under the Act.”

Having established what qualifies as infringement, it is pertinent to examine what the established defenses are under the Nigerian. Under Nigerian law, there are several defenses such as bonafide use, vested Rights, Fair Dealing, etc. The doctrine of fair dealing is most applicable in this context and this shall be exhaustively discussed below.

OPERATION OF FAIR DEALING: IN THE DEFENSE OF “HOMECOMING CONCERT”

The concept of fair dealing for copyrighted works is somewhat more straightforward as the Copyright Act provides reasonable grounds such as parody, research, and news reporting because they are artistic expressions. However, it could be an elusive concept under Trademark administration. In this instance, the Homecoming concert published a flier with edited trademarked logos of companies to announce their artiste lineup for their upcoming concert. The valid question here is whether this act constitutes trademark infringement under Nigerian law or can be categorized under the defense of fair dealing.

Fair dealing (also known as “Fair Use” in other jurisdictions) is a defense for alleged infringement because it allows for a third-party use so far it is not for the intention of confusing or deceiving unsuspecting customers. In this case, the logos of the brands used in the flier could be captured under the concept of fair dealing because it is not used to market similar goods and neither it is to confuse or deceive unsuspecting customers. It is also not likely to cause economic loss or amount to passing-off on those brands. Hence, the use of the brand identities of companies such as Coca-Cola, Fan Milk, Chicken Republic, Mtn, etc for fliers would easily be captured under fair dealing.

Another argument in the defense of HOMECOMING CONCERT is parody which is an item under fair dealing. While it is clear that the Copyright Act provides for parody as a veritable fair dealing defense, it is however unclear whether that could be extended to Trademark. The concept of Trademark parody is provided for under United States Trademark laws as it qualifies as fair use (fair dealing), in reality, the company can sue if such parody is capable of ruining the reputation of the company. Foreign principles such as this have a persuasive effect under Nigerian law. Since the HOMECOMING CONCERT is not in any way damaging the reputation of those brands, the argument of trademark parody could be applied in defense of the graphic design.

CONCLUSION

It can be reasonably concluded that there is hardly a clear case of trademark infringement in this instance case. Although it may appear that the HOMECOMING CONCERT flier utilized trademarked logos for design, it wouldn’t amount to infringement due to the defense of fair dealing and the evident reality that the company was not trying to confuse customers to sell similar products or lead to economic loss or damage reputation of these brands. However, seeking permission from these brands before use could eliminate legal uncertainties.