notes on educational disciplines
PART I
LEGISLATIVE PROVISIONS ON TRADEMARK INFRINGEMENT AND THEIR PERCULIARITIES
The object of this part is to ascertain the legal contours of infringement. This part supports the assertion that, for trade mark counterfeiting to be successfully curbed, an englobing and extensive definition has to be given it. Such is of utmost importance in mapping out a selective punishment tool aimed at discouraging any willful and intentional engagement in this fraudulent activity. This part contains the first three chapters of the work.
CHAPTER ONE
TRADEMARK INFRINGEMENT PRESCRIPTIONS
Intellectual property is traditionally divided into two branches “copyright” and “industrial property”. The former, covers literary, artistic and scientific works. The latter which is of great concern to our work covers inventions and designs including trade marks, service marks, commercial names and designations including indication of source and appellation of origin and protection against unfair competition. Trademark owners typically use their marks to distinguish their products and services from others on offer. This, in the hope that, it will trigger-off, an association in consumers mind between origin and good value. When people make a fraudulent imitation of a mark in such a way as to mislead the buyer or make use of fraudulently imitated marks, they are trademark counterfeiters. The law of trademarks has ancient origins, which are preserved in the non-statutory law of passing off. In recent times, many international conventions and national legislation cover and regulate this area of the law.
It is trite knowledge that the Bangui Agreement is the special law applicable in the OAPI zone. However, it should be stressed that, its legal basis are found in article 19 of the Paris Convention. The article provides that
“…the countries of the union reserve right to make separately between themselves special agreements for the protection of industrial property in so far as this agreements do not contravene the provisions of this convention”.
The object of this article as summarized in the above citation is two fold. Firstly, that the rights relating to intellectual property as provided in the Bangui Agreement are national rights, subject to the legislation of each of the member states in which they have effect. Secondly, nationals may claim the application of other international instruments once such application is beneficial to them. This chapter of the work will indicate whether or not the communitarian text applicable in the OAPI zone conforms to the other international instruments that are essentially concerned with standard setting. It shall also be instructive as to whether the Bangui Convention adequately covers the crime.
1.1 PRESCRIPTIONS CONTAINED IN INTERNATIONAL CONVENTIONS
Outstanding international conventions and treaties include; the Paris convention and the TRIPS Agreement, the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks, September 1999 (see the revised version, that is the ninth edition infra).This is not an exhaustive list of Intellectual Property Conventions. These are those having a direct nexus with our work albeit their peculiarities. Other instruments like the Madrid Agreement 1891, the trade mark registration treaty 1973 the Madrid Protocol 1996 and the trade mark law Treaty 1994 as revised in march 2006 at Singapore, all concerned trade marks, but deal essentially with international registration of trade marks.
1.1.1 The Paris Convention
Basically, a trademark is protected because of its product differentiation value. This protection seeks to forestall possible harmful effects that are involved in imitating marks. Such practice is misleading and violates public order and morality
Article 9(1) of the Paris convention provides with respect to trade mark counterfeiting and especially to goods unlawfully bearing a mark or trade name or the identity of the products that any direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer or merchant, would lead to impoundment of the goods.
The Paris Convention in its Article 6 is elaborate in its definition of well known marks. Article 6 bis (1) provide that;
“The countries of the union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or cancel the registration and to prohibit the use of trade mark which constitutes a reproduction, an imitation or a translation, liable to create conclusion or a mark considered by the competent authority of the country as being already the mark of a person entitled to the benefits of this convention and the use for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion there with”.
A combined reading of the above prescriptions demonstrates the desire by member states of the Paris Convention to define trademark counterfeiting and to lay a basis for combating it. The provisions lay emphasis on the use of imitated marks on goods or identity of the producer liable to create confusion as key elements in the law of trade mark counterfeiting.
1.1.2 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)(1994)
The TRIPS Agreement in its Article 16(1) confers exclusive rights on the right holder to prevent third parties not having their consent, from using (offering for sale, selling etc) in the course of trade, marks, identical or similar to those in respect of which the trade mark is registered where such use would result in likelihood of confusion. To show their desire to fight this activity, Part III of the TRIPS Agreement deals with the enforcement of intellectual property rights. In this light, it prescribes civil and administrative procedures and remedies, provisional measures, special requirements to boarder measures and above all criminal measures. In fact, Article 61 states that:
“Members shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity in appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed willfully and on a commercial scale”
The TRIPS Agreement goes further in its endeavor to criminalize this act by defining counterfeit trade mark goods in its article 51,foot note 2. It disposes thus;
“Any goods, including packaging, bearing without authorization, a trade mark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trade mark and which thereby, infringes the rights of the owners or the trademark in question under the law of the country of importation”.
The typical infringer uses another’s registered mark or some confusingly similar sign as trade mark to indicate the source of goods or services. In a market of competitors, where undistorted trading is a desired objective, such fraudulent conduct has to be thoroughly checked.
Lastly, Article 10(2) of the TRIPS Agreement is also instructive in so far as counterfeiting of well known trade marks is concerned. What about prescription applicable within the zone?
1. 2. PRESCRIPTIONS APPLICABLE WITHIN THE O.A.P.I ZONE
Counterfeiting is not provincial to trademarks; it cuts across all the rights of holders of industrial property. Generally, it means the fabrication of a product through the illicit exploitation or use of a patented process or invention, trademark, geographical indication, utility models, industrial designs and integrated circuits. Illicitness indicates the fact that, the particular product in question has been imitated, copied or fabricated and put in the market place without authorization of the right holder. An underlying factor here is that, the counterfeit product is not only identical in the generic sense of the term but also gives the impression of being genuine and originating from the genuine manufacturer. The act of unauthorized exploitation, transforms the product into a counterfeit product, no matter what form the infringing act takes. Although it is not always the case, counterfeiting goods generally bear a trademark. This has the advantage of making counterfeiting actionable as trade mark infringement.
1.2.1 The Bangui Agreement.
The Bangui Agreement has 10 annexes and Article 4 (2) of the Agreement states that the Agreement and its annexes shall be applicable in their entirety to every state that ratifies or accedes to the said Agreement. Annex III is the special law on trade marks and as we said earlier in this work will always be referred to in this work as the Bangui Agreement. Article 2 of this Agreement defines a trademark as;
“Any visible sign used or intended to be used and capable of distinguishing the goods or services of any enterprise should be considered a trade mark or service mark, including in particular surnames by themselves or in a distinctive form, special arbitrary or fanciful designations, the characteristic form of a product or its packaging, labels, wrappers, emblems, prints, stamps, seals, vignettes, boarders, combinations or arrangements of colours, drawings, reliefs, letters, numbers, devices and pseudonyms”.
Trademark counterfeiting typically deals with the unauthorized use or imitation of another’s mark in business. It lays emphasis on such use that is liable to mislead the public or business circles as to the geographical origin, nature or characteristics of the goods or services in question. The Bangui Convention has criminalized this activity
Besides this activity which is our principal preoccupation, other trade mark infringements have been treated by the convention. Here we can cite parallel importation. It must be recalled here that, this activity is often tolerated as it is, a means of encouraging free trade, especially within organizations (for example economic integrations and other regional and sub-regional integrations). However, when it infringes the rules of exhaustion of rights (infra) or makes use of relabelling or repackaging, it becomes primer facie infringing.
Other trademark infringing activities include; intentional provision of a product or service other than that for which the trade mark was registered, not affixing on goods a mark that has been declared compulsory for the goods or services that they specify (even though the general principle is that Trademarks or Service Marks are optional) or selling or offering for sale goods that do not bear a mark declared compulsory. Incorporating compulsory marks in their marks as well as signs that are prohibited from being used as trade marks such as flags or other emblems, abbreviated name or acronym or an official sign of a state or intergovernmental organization established by an international organization (save where permission has been granted) and generally any sign contrary to public policy, morality or the law.
Another infringement activity that needs to be cited here is trademark piracy. This involves the registration or use of a generally well knows foreign trademarkthat is not registered in the country or is invalid as a result of non-use.
An infringing activity, which has not been mentioned in the Bangui Convention, is comparative advertisement. For example ‘Brand x is better/quirk/cheaper than Brand y’. Although it helps consumers to make informed purchasing decisions and reduces barriers faced by a new introduction to the market, it however filches the reputation and good will of leading brands. More still, when the information provided is partial, the public could be misled. Whatever the strength of these two arguments, there is no doubt that those in favor of the practice are, at present, in the ascendancy. For example, most industrialized countries now allow comparative advertisement in some form or the other, even if the precise rules may vary. The UK Trademark Act which came into force in October 1994 (hereinafter referred in this work as the 1994 TMA), is typically, a les restricted regime which allows it, provided the adverts are honest and made on an objective basis. In fact certain industries, such as the car industry, appear to waive their trademark rights and to allow comparative advertisement; others such as the pharmaceuticals do not and always act to prevent it. Thus, any comparative advertising activity, which causes harm to another’s mark, is consequently contrary to good business practice.
All of these activities, with trademark counterfeiting inclusive, are forms of unfair competition. The connecting factor between them is that, they can cause significant damage to the sales or reputation of a successful product or service.
Article 37 of the Bangui Agreement makes unlawful exploitation of trade marks illegal. The Article gives examples of what constitutes unlawful exploitation to include amongst others things, affixing fraudulently on goods or on objects traded, a mark belonging to another, selling knowingly or offering for sale one or more goods bearing a counterfeit or fraudulently affixed mark, making a fraudulent imitation of a mark, offering for sale one or more goods bearing a fraudulently imitated mark or information liable to mislead the buyer as to the nature of the goods, or those who provide or offer to provide goods or services under such a mark. This extensive definition of unlawful exploitation vividly ties with that provided by the TRIPS Agreement.
1.2.2 Other Applicable Instruments
Even though the Bangui Agreement (Annex III) is the “lex speciali” in the OAPI zone, it is not however the only text that is applicable in this domain. This is because Intellectual Property Law enforcement brings together, different domains of the law. These concern commercial law, civil law and criminal law.
1.2.2.1 The OHADA Treaty
Section 61 of the TRIPS Agreement states:
“Members shall provide for criminal procedures and penalties to be applied at least in cases of willful trade mark counterfeiting or piracy on a commercial scale…”
What commercial scale means is a matter traceable in national legislation, on commercial matters. These laws will definitely tell us whether a single sale of a limited number of articles for example T-shirts can amount to trading or not. Thus, countries within the zone (to the exception of Mauritania, Guinea and Guinea Bissau-non members of the OHADA Zone) would refer to chapter one of the Uniform Act relating to General Commercial Law. More over there is a Uniform Act on Intellectual Property that is pending. The correlation between the latter instrument and the Bangui Convention would certainly be one of multiplicity of texts. This problem is further compounded by article 10 of the OHADA treaty which makes the Uniform Acts, directly applicable on the territory of member states once enacted. Besides commercial law issues, other issues also arise within the enforcement of IP Law, which necessitates the application of the civil laws of various states within the zone.
1.2.2.2 Wholly Penal Instruments
Most countries within the OAPI zone dispose penal laws which also define trade marks counterfeiting. Some of the penalties provided in these laws even go beyond those provided by the “lex speciali”. For example, Article 330(1) of the Cameroonian Penal code disposes that;
“Whoever forges a registered trademark or uses any trademark so forged shall be punished with imprisonment for from three months to three years or with fine of from fifty thousands to three hundred thousand francs or with both such imprisonment and fine”
We observe here that, imprisonment term under this section is more than that provided in Article 37 of the Bangui Agreement (infra).However, this precision is purely academic one,for in matters of application and interpretation of the law, the rule ; lex speciale derogates lex generalis applies.
Also, unlike the OHADA Convention where the incriminating acts are defined and the national legislator ascribes the corresponding punishment, the OAPI legislator has not shared his competence. That is the same authority defines crimes and sanctions. These national texts however guard the judges.
These Penal laws are accompanied by criminal procedure codes which are of general application (save to provision contrary to the code of military justice or in any special law). An example of such a code is Law No 2005/007 of 27th July 2005 on the Harmonized Criminal Procedure Code in Cameroon
All that has been said above seeks to touch all that can be indicative of trademark counterfeiting. What is needed to successfully establish trade mark counterfeiting?
CHAPTER TWO
DETERMINATION OF TRADEMARK COUNTERFEITING
The essence of a trademark is that, it is a badge of origin. It indicates trade source. That is, translates the connection in the course of trade between the goods and the proprietor of the trade mark. The exclusive rights granted the owner of a mark are limited to use of a mark likely to be taken as an indication of his trade origin. Trademark counterfeiting is not limited to a few products and certain countries but it is a global problem affecting a wide range of industries. However, the most affected are the luxury goods and fashion clothes / sportswear industries where some consumers knowingly buy fakes and are not even prepared to pay the price of the genuine item. In the watches industry it is common occurrence to see false “ROLEX”, “CARTER” and other luxury watches. Other affected industries include; the perfumes, pharmaceuticals, spare parts and car accessories and soft ware and music recordings.
Counterfeiting can take many forms. For example, branded football shirts of a club are manufactured in a county without the club’s permission and by a company with which the club has no connection. Generally, large-scale counterfeiters of sport wear often target brands that are market leaders such as “ADIDAS”, “NIKE” and “PUMA”. Its common place within the OAPI zone to find counterfeits like “NIKKE”, “ABIBAS” etc, imported from neighboring countries to the zone. In this light, Nigeria has often been pointed an accusing finger for these products.
The counterfeit is an imitation which is identical in the generic sense of the term and gives the impression of being the genuine product, originating from the genuine manufacturer or trader. For example, a counterfeiter can sell a cheap imitation watch under the trade mark “OMEGA» when he fraudulently imitates the mark. This by using the mark “HOMEGAS” but he prints the first and last letters very faintly.
In this chapter, we look at those material acts which amount to infringement as well as the special intention that is required for the act to be consumed.
2.1 MATERIAL ACTS (actus reus)
A person commits an infringement when he:
- Affixes on goods or their packaging a sign identical to or likely to be mistaken for a registered trademark. Those who make fraudulent imitations of marks, in order to mislead buyers, or make use of fraudulently imitated mark.
- Uses in the course of a business, material bearing such a sign for labelling or packaging goods as a business paper in relation to goods or for advertising goods and
- Has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another.
These acts have been directly described by article 37 of the Bangui agreement. It is helpful to borrow from the English legislator (1994 Trademarks Act) who goes beyond the Bangui Agreement provisions in the matter to cover contributory infringement acts. The acts of printers or packagers have been targeted in the TMA. These include making articles specially designed or adopted for making copies of a sign identical to or likely to be misleading for a registered trademark and possessing or having custody or control of such articles in the course of business.
The following material acts are examined in this work
2.1.1 Use of a Sign Identical to the Trade Mark for Identical Goods or Services
It is infringement for a defendant to use in the course of trade, a sign identical to the trademark in suit, for identical goods or services to those for which the trade mark was registered. Article 7(2) of the Bangui Agreement states unequivocally that, the risk of confusion shall be presumed to exist in such a case. This is indicative of the fact that it is an absolute infringement .The court held in Saville Perfumery V. June Perfect that, in cases of ‘double identity’ or ‘absolute infringement’, it is not necessary to show the likelihood of confusion between the marks in question”. However, even if the claimant is dispensed of the need to prove likelihood of confusion, there is good reason to require that the twin identities be strictly proven. Thus, where it concerns the use of words for example, such ought to be the same both in spelling and sound. The European Court of Justice in Canon KKV.MGM made this precision. Where in Germany, MGM was seeking to register “Cannon” for films and related services but faced the earlier registration of “Canon” for cameras and various television devices.
Although parallel importation is often treated under a separate head of trademark infringement, it can as well be assimilated under trademark counterfeiting. We must naturally exercise reasonable care when carrying out such assimilation. Attention must be paid to the place where the product was first marketed and this following a core principle in Intellectual Property Law-the principle of exhaustion of rights. (The right of sale, after first sale or the right to control the resale, of the protected product after first sales by means of Intellectual Property). Exhaustion of rights can be international, national or regional. Regional exhaustion is mid-way national and international and does not apply globally but is treaty based and multilaterally agreed. Its territorial scope is limited to the respective signatory states. However, the starting point of regional exhaustion is the national law. Accordingly, Article 7(4) of the Bangui Agreement states that:
“Registration of a mark does not confer on its owner the right to prohibit a third party from making use of the mark in relation to goods that have been lawfully sold under the mark on the national territory of the member state in which the right of prohibition is exercised on condition that the goods have not undergone any alteration”.
Thus, if the national law empowers the right-owner to prevent parallel importation, then any such importation or dealing in parallels would amount to trademark counterfeiting. Also, when parallel importation is permitted (especially as it is a means of encouraging free-trade), any alteration on the goods sold under the mark or any repackaging or relabelling would be prosecuted for trade mark counterfeiting, as it will simply amount to fraudulently affixing on their goods or on objects traded by them, a mark belonging to another. What about free-riding on another’s reputation?
2.1.2 Use of an Identical or Similar Sign for Dissimilar Goods or Services
Where the trade mark ( be it registered or unregistered ) has reputation, that is, it is widely known to the trade and/or consuming public, it is possible for the owner to prevent or stop the use of the same or similar trade mark in relation to non-similar goods. This, since the alleged infringement takes unfair advantage, or is detrimental to the distinctive character or the repute of the trade mark. This is a national corollary (national adaptation) to the special international protection granted well-know trademarks (Protection over and beyond the principle of specialty). Under this head, the registered proprietor may sue where the mark has a “reputation”, it must not necessarily be well-known” or “famous”. The court held in General Motors V. Yplon (”Chevy, affectionate nickname for Chevrolets) that, “the reputation need exist only in part of the geographical area for which the registration pertains”. The High Commission of Appeal of the O.A.P.I. upheld this view in rejecting the arguments of Société ANHEUSER BUSCH INCORPORATED when they invoked notoriety on the mark, “BUDWEISER BUDVAR” by la Société BUDJOVICKY BUDVAR NARODNI PONIC. The commission stated that, the notoriety of the mark “BUDWEISER” is not extended to the OAPI zone where manifestly, the products to which the mark refers to (champagnes) are not known to a large public. Another aspect here is that, it is enough to show that a defendant is taking unfair advantage without showing that the proprietor is suffering detriment. Suffering detriment is simply presumed. This is because unauthorized use of another’s mark on products that do not compete with and have little connection with those of the trade mark owner (trade mark dilution) alters public perception of that mark making it lose its distinctiveness (Blurring). Such savoury and unflattering association weakens a mark (Tarnishment).
In fact, Article 37(2) (b) consecrates this when it stipulates that persons who make use of a mark bearing information liable to mislead the buyer as to the nature of the goods shall be punished. This, especially as the public will be misled to believe that, the owner of the mark with a reputation is extending his lines of Business.
2.1.3 Use of a Similar Trademark in Relation to the same goods
Trademarks play a role of product differentiation in business. They do not by themselves prevent any competitor from entering a market but merely prevent him from annexing the protected mark by using a similar or identical trademark in relation to the same goods or similar goods for which the mark has been registered. This implies therefore that, a valid trade mark deposition by a moral or natural person, for certain goods and services can equally be deposited by other persons for goods and services falling within a different commercial sector. Here there is no risk of confusion. However, when a similar mark is used in relation to same goods or services for which it was registered, there is a likelihood of confusion.
Trademarks can be more or less similar to each other. The test is confusing similarity. No intention to confuse on the part of the infringer or actual confusion is necessary. Some rules have been developed which help to define in specific cases whether, in view of similarity of the two marks confusion is likely to arise These rules include:
- The perception of the marks in the mind of the consumers.
- Marks are compared wholly with more emphasis on their similarities and not differences.
- Highly distinctive marks are more likely to be confused than marks with associated meaning in relation to the goods for which they are registered.
- Similarity can be deduced from the writing, pronunciation and the meaning of the sign.
- Independently of the above, special rules apply when it comes to figurative marks (devices). For example, for purely fanciful marks, the graphical impression conveyed by the two marks is decisive, etc.
Talking about the first criteria as expressed above, the court held in Sabel BV. PUMA AG, Rudolf Dassler Sportthat, the test is how the use of the sign would be perceived by the average consumer of the type of goods in question. In thatcase, the senior mark, a drawing of a springing puma, did not give rise to an objection on relative grounds to registration of a junior mark comprising a springing cheetah with the work “sable”. No danger of confusion to the relevant public could be found and it was not enough to find that, the public might assume an “association” between the two. The court insisted that attention must be directed to the fact that the average consumer normally perceives a mark as a whole and does not analyse its various details (global appreciation of the likelihood of confusion). The court held that;
“In that perspective, the more distinctive the earlier mark, the greater the likelihood of confusion will be. It is therefore not impossible that, the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to likelihood of confusion where the earlier mark has a particular distinctive character, either per se or because of the reputation it enjoys with the public”.
In Raven head Brick V. Ruabon Brick the plaintiff had used a registered mark “Rus” for bricks and tiles. They were entitled to object the use of “SANRUS” for brick facings not because the words would be confused either in written or oral form but because a purchaser would likely think that “SANRUS” was a mark being used by the plaintiffs. Laddie J. in Wagamama V. City Centre Restaurants relied upon this case Here, «Rajamama» was found infringing the mark «Wagamama» for restaurants.
The Cameroonian courts seem to have adopted the position of the Western Courts in the matter. In fact, the Douala High Court held in Société
La SEIGNEURIE c/. La Société SMALTO that from a phonetically and visual point of view, there can be no confusion between the products (paints) of the two companies for an average consumer not having the two marks in front of him at once. In that case, Société
La SEIGNEURIE brought a counterfeiting action against La Société SMALTO for slavishly imitating her mark in their mark “TROPIC FOAM”. For them, this was a clear reproduction of their mark “TROPIX” as the word “TROPIC” is contained in the former. They based their arguments on Article 7(1) of the Bangui, which (in relation to registered marks) accords exclusive rights of use of the mark or any sign resembling it. When the same issue was trailed before the High Commission of Appeal, the commission held that, trademark similarity is appreciated by taking in to account similarities and not differences. That “in the face of the present situation and from the documents presented, it can be proven that, the mark ‘TROPIC FOAM’, is a complete denomination linked to a geographical zone of production and sales and is not a counterfeit of the mark ‘TROPIX’. That no confusion is possible on this point between the goods of the two companies for an average consumer not having the two marks at once in front of him. That its decision is quite comforted by the differences that exist relatively in the conditioning of the two marks in question”.
Closely linked to the above, the commission held that a junior mark “VETO” registered for goods falling in class 3,4 and 5 by Colgate – Palmolive company in 1997 was not similar to the mark “VEET” belonging to Airwick industries and registered since 1964. It rejected the arguments that the visual, phonetic and synthetically appearance was a source of confusion and that “VETO” was simple a derivative of “VEET”. In another decision, the commission held that the mark “COCO” registered with the OAPI by CHANEL SA was being partially infringed by an anterior registration and use of the mark “KARICOCO” by Mme Françoise Hadife.
The above case-law analysis are indicative of the fact that, despite the rules put in place to establish confusing similarity between marks, it can not ipso – facto be said that there is confusing similarity once such a question comes up. The matter seems to be appreciated only in the particular cases as they come up by the judges. However, the above study also lends credence to the fact that, the plaintiff has the burden of proving “confusing similarity”.
2.1.4 Use of the same trademark in relation to similar goods
When a sign is already been used, by an owner to individualize and distinguish his goods, use of the same sign by another, on goods or services similar to those for which the original mark was registered, is intolerable. This is because, such use or association is likely to create confusion and consequently trade mark counterfeiting. This is squarely premised on the principle of “specialty” (protection for trade marks cover goods and services as well as similar goods or services for which the mark was registered.) The Bangui Agreement captures this so vividly when it states that;
“Registration of a mark confers on its owner the exclusive right to use the mark or a sign resembling it, in connection with the goods or services for which it has been registered and similar goods or services” (article 7).
The Agreement is however silent as to the definition of similar goods or services. W.R. CORNISHdefines such goods as “goods or services of the same description”. He proceeds to enumerate six factors that may be considered:
- The respective uses of the respective goods or services;
- The respective users of the respective goods or services;
- The physical nature of the goods or acts of services;
- The respective trade channels through which the goods or services reach the market;
- Whether in self – service stores they are found together or apart;
- The extent to which the respective goods or services are competitive (for instance, in the eyes of market research companies).
These six factors have been synchronised into a general rule by the WIPO Intellectual Property Handbook.
“As a general rule, goods are similar if, when offered for sale under an identical mark, the consuming public would likely believe that they came from the same source. All circumstances of the case must be taken in to account, including the nature of the goods, the purpose for which they are used and the trade channels through which they are marketed, but especially, the usual origin of the goods and the usual point of sale”.
The High Commission of Appealhas defined similar goods or services.
“Similar goods are those goods which a consumer by reason of their nature or destination can be attributed to the same origin”.
From the above definitions, it can be said here that objectively, similar products are quite proximate by their very nature and usage and that subjectively or economically, the public must have all reasons to believe that the goods or services come from the same manufacturer and have a common destination.
Whatever is the criterion that the courts follows, one thing is settled. There is no general requirement that the goods or services be in the same class. This means that the classification of goods is not decisive for the question of similarity. At times, totally different goods are listed in the same class for instance computers, eyeglasses, telephones in class 9 (Nice Agreement) while similar goods can be listed in different classes adhesives may fall into classes 1, 2,5 and 6). This intimates that, the international classification list, only has and organizational or administrative value and not a legal value. This position has been graphically explained by the High Commission of Appeal that goods of classes 24 and 25 materials, clothes respectively etc, extended to perfumes and cosmetics (class3) and vice – versa. The Commission proceeded by insinuating that, “common commercial practice has proven this especially when referring to the activities of legendary exploiters in this domain like; Yves Saint Laurent, Christian Dior, Gucci, Lacoste, Pierre Cardin, etc.
Quite separate and independent of the above, the French Court of Appeal held in Affair Clipper that, complimentary goods can also functionally be attached by the consumer to the same origin and can therefore be considered similar goods.
It can be observed here that the criterion for definition of similar goods is a seemingly moveable feast and must always be appreciated with a lot of caution and common sense. For example, trading practices change with time – some goods that were once sold through different trade channels may now be bought from a single store. By contrast, those that were available from a single outlet may now be on sale at separate specialist shops. More over, the Nice Agreement is always revised. Without such an approach adopted, competitors will find it increasingly difficult to annex trademarks to their new products. Thus, the essential deciding fact in this domain of similarity of goods and services is the established trading practice. It follows that if industries such as those producing cosmetics and pharmaceuticals have lived in trademark harmony for years, this should continue unless there is hard evidence of actual confusion between cosmetics and pharmaceutical products bearing the same or similar trademarks.
2.1.5 Use of a similar trademark, in relation to similar goods
Here again, a plaintiff must show that confusion is likely to arise. Article 7(2) of the Bangui Agreement covers this type of infringement when it warns that:
“Registration of the mark likewise confers on the owner the exclusive right to prevent all third parties from making use in business without his consent of identical or similar signs for goods or services that are themselves similar to those for which the trademark or service – mark has been registered…”.
This is obvious as such use will mislead the public as to the origin, nature or characteristics of the goods or services in question. In fact the High Commission of Appeal concerning the mark “SHALIMAR COUTURE + DESSIN”, upheld this view that, when it held that, despite Madame DIAKMATE DIOUMA’s arguments that her mark had earned reputation especially as it has been used by many international media and was even registered in the Dakar Trade Register as “SHALIMAR COUTURE SARL”, tolerated use could lead to a certain risk of confusion. Confusion especially in the pronunciation of; “SHALIMAR” as the public will be misled into believing that it is the earlier registered mark belonging to La Société Guerlain. For discussions on what possibly constitutes a “similar mark” and “similar goods or services” see analysis supra
2. 2 SPECIAL INTENTION (mens rea)
Intellectual property infringement be it piracy, bootlegging or counterfeiting generally necessitate prove of a special mens rea. It is encapsulated in the phrase “with a view to gain”. For example, piracy is generally defined as the unauthorised copying of copyright materials for commercial purpose and the unauthorised dealing in copyright materials. This special intention inherent in all intellectual property right infringements and more particularly trademarks counterfeiting indicates that, if any of the acts outlined above is posed without any intention to gain, there is no infringement. (An issue which shall be examined when studying limitations upon trademark counterfeiting).
This intention is simply presumed in the Bangui Agreement. The English legislator on his part expressly stipulates that any of the acts cited above has to be carried out with a view to gain for himself or another or with intent to cause loss to another and without the consent of the proprietor of the registered mark. (this is a cloak that covers all the sub-sections of section 92 of the TradeMark Act 1994). This meaning can be imputed into the word “knowingly” a cloak, the Bangui Agreement employs to vehicle the English legislator’s message. Actually and for example, Article 37(b) implicitly conveys this message.
“Those who knowingly sell or offer for sale one or more goods bearing a counterfeit or fraudulently affixed mark, or those who knowingly sell, provide or offer to provide goods or services under such a mark”.
With respect to contributing infringement, section 92(3) (a) of the 1994 TMA states that:
“A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another and without the consent of the proprietor makes an article specifically designed or adapted for making copies of a sign identical to or likely t be mistaken for a registered trademark”.
It should be recalled that, the goods or services are those for which the trademark was registered and similar goods or services.
CHAPTER THREE
THE BASIS OF TRADEMARK COUNTERFEITING
The protection that the law gives to a trade mark consist essentially in making it illegal for any entity other than the owner of the trade mark to use the mark or any sign similar to it, at least in connection with goods for which the trade mark was registered or with gods similar to such goods. Trademarks are not only used to distinguish or to refer to a particular enterprise or quality but to stimulate sales. In fact, trademarks are ciphers around which investment in the promotion of product is built and such investment is a value which deserves protection even where there is no abuse arising from misrepresentation either about origin or quality. This chapter will be consecrated to examining the ingredients of an infringement. That is, rules for determining counterfeiting. The chapter seeks to complete the first part of the work, which is consecrated to establishing the legal frame work of trademark counterfeiting. In fact, this chapter also serves as an introduction to the second part of this work in the sense that the rules to be examined are often referred to at times as pre-procedural rules. The rules include; registration, use and “likelihood of confusion which all have a particular role in the field of trademark counterfeiting. To ease apprehension of the work the various limitations upon infringement have been examined too. A joint reading of the rules as well as the limitations makes room for easy comprehension.
3.1 RULES FOR DETERMINING TRADEMARK COUNTERFEITING
3.1.1 Registration
It is settled with respect to trademark law that, with the exception of the owner of well-known trademark and marks acquired by use that, nobody regardless of the nature of the action brought may make a claim, if his trademark has not been registered. This is particularly obvious as it is a law of appropriation and like any other appropriation law; registration is an inevitable condition for the acquisition of exclusive rights under such protection. The Paris convention places contracting countries (over a one hundred and fifty states) under the obligation to provide trademark registers and full protection is properly secured only by registration.
It has been held obita by the South West Court of Appeal that “with the advent of the Bangui Agreement registration is carried out only by the OAPI” Registration creates a prima facia case of validity and infringement proceeding can only be initiated after actual registration. In this light, section 48 of the Bangui Agreement states that an infringement seizure shall be made only on condition that the mark is registered and that it has neither lapsed nor has been cancelled. Therefore, a trademark owner who has not registered his mark has no case in front of any counterfeiting activity on his mark. This point touches on the issue of well-known marks. It must be recalled that even though they benefit from a special form of international protection, courts sometimes require trademarks to be well known in the country where piracy is discovered. Protection can be denied, even if the true owner of the trademark proves that, it is internationally well known in a considerable number of other countries. This necessitates registration of such mark so as to avoid the risks of not being able to prove notoriety within a specific geographical, commercial or industrial area.
Any person wishing to obtain the registration of a mark, files an application form with the OAPI or ministry responsible for industrial property or send it by registered mail with a request for acknowledgement of receipt. This application, addressed to the Director General of the OAPI in a sufficient number of copies has to comprise amongst other documents;
- A document proving payment of filing fee,
- A reproduction of the mark including a list of the goods or services to which the mark applies with the corresponding classes. (Following the Nice Agreement concerning the International classification of goods and services for the purposes of the registration of marks)
- The required information concerning the name, address, nationality and domicile of the applicant.
- Signature (in the case of a legal entity, the identity and title of the signatory shall be specified)
- Where an agent has been appointed, that fact and the agent’s name and address (accompanied by an unstamped power of attorney)
When all these are met, coupled with a thorough examination the mark is registered and published in the special register of marks. A certificate is issued and the legal date or registration is that of the application. If after six months, no interested party makes an opposition and the registration is not cancelled, the registration of the mark remains valid for 10 years and can be successively renewed
Registration must be followed up by use of the trademark. Use here implies affixing the registered mark on goods, containers, packaging, labels etc, or in any other manner in relation to the goods for which it is registered. Thus, for ownership of a mark to be maintained, the mark needs to be used. The court can order the cancellation of a registered mark which for an uninterrupted period of five years prior the request of the interested party has not been used, except where the owner has legitimate reasons for having failed to use it. Also, a third party could be allowed to use a mark whose registration has not been renewed in respect of identical or similar goods or services when three years have elapsed since the term of the registration expired.
Registration therefore seems to be the starting point of trademark protection. Use is a corollary of registration. But what exactly is use? It is descriptive use or use in the sense of a badge of origin?
3.1.2 “Use”
An essential ingredient in trademark counterfeiting that flows from a reading of the Bangui Agreement is the “use” of a sign by a person or company. Use, generally means indications concerning the kind, quality, quantity, intended purpose, value geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services. It can involve the use of a mark where it is necessary to indicate the intended purpose of a product or service.
Basically trademark “use” entails indication of trade origin. (Badge of origin) it is a connection in the course of trade between the goods and the proprietor of the mark. Thus, an important prerequisite to infringement is use of a mark likely to be taken as an indication of trade source (origin). It becomes but natural that, use of a mark in a manner not indicative of trade origin of goods or services does not encroach upon the proprietor’s monopoly rights. The proprietor may not prohibit the use of a sign identical to the trademark for goods identical to those for which the mark is registered if that use cannot affect his own interest as proprietor of the mark having regards to its function. Thus, certain uses for purely descriptive purposes are excluded from the scope of “use”. A good example of use in a descriptive sense is found in visa international v Editions Liberna. In this case, the French cour de cassation refused to find the slogan “visa pour le muscle” when used on printed materials, as infringing the well-known credit card mark. It held that “Visa” was here used in the sense of passport.
Another case is that of the court of appeal in Mother Care UK Limited v. Penguin Books Limited. In that case, a publisher published a book named “mother care / other care (a serious study of the upbringing of young children of working mothers). The court held that there was no infringement of the registered trademark of mother care UK limited, despite the fact that the trademark is registered for many classes of goods, including books. Dillon LJ said that
“… it stands to reason that a Trademark Act would only be concerned to restrict the use of a mark as a trademark or in a trade sense… it descriptive words are legitimately registered… there is no reason why other people should not be free to use the words in a descriptive sense and not in any trademark sense…”
The learned judge proceeded to precise that, the words “mother care” in the title of the book are not used in any trademark sense but are merely used descriptively as describing, with the words “other care» what the book is about.
The European court of justice in Arsenal Football club plc v Reed held trademark use Arsenal Football club (AFC) is the proprietor of four trademarks including two word marks (“Arsenal” and “Arsenal Gunners”) registered for (among other goods) clothing and sports footwear. Mr Reed had since 1970 been selling clothing (especially scarves) marked “Arsenal”. He displayed prominent notices disfavouring “any affiliation or relationship with the manufactures or distributors of any other product”. The court held that Mr Reed’s use of the Arsenal sign took place in the context of sales to consumers and was not intended for purely descriptive purposes. The use was such as to create the impression that there was a material link in the course of trade between Mr Reed’s goods and AFC. From the above, it can be observed that, a plaintiff can succeed in an action under trademark counterfeiting if he proves that; the defendant’s use of the trademark was in a trademark sense. For if such use is descriptive, then he will have no case.
3.1.3 “Likelihood of Confusion”
It was observed earlier; in this work that, there are certain material acts of trademark counterfeiting where in, likelihood of confusion is presumed and need not be proven. However, it remains an essential ingredient to be proven when alleging infringement. This is more so as it remains the primary criterion for testing the prime purpose of trademark protection (indication of source). Confusion is not just about direct visual or aural mistakes but is founded only where there exists “a real tangible danger of confusion” and not merely “a possibility of confusion. It must not be forgotten that it must be appreciated as causing confusion to source and it must be sufficient enough to lead the public to the believe that the owner of the marks is extending its lines of business especially where such an extension is an inherent likely one.
The Bangui Agreement makes use of the words “confusion” and “mislead” interchangeably. The High commission of Appeal in dismissing the opposition formulated against the registration of the mark “CAMGAZ” (belonging to La Société Camerounaise de Transformation Métallique (SCTM), by la société Application des GAZ (owner of the mark CAMPING GAZ) is instructive. It shows that the courts are naturally reluctant to prevent one trader from employing a word or other sign (on the basis of confusion), which corresponds, to another’s mark where potential damage and undue misappropriation is slight.
The commission held that there was no risk of confusion between “CAMPING GAZ and CAMGAZ. That phonetically, the risk of likelihood of confusion is put off especially as domestic gas is a product of current consumption. Their common syllable “CAM” does not illustrate any alleged fraudulent imitation of “CAMPING” for which the whole mark is formed.
However, issues relating to “likelihood of confusion” can easily be settled where one of the mark (the earlier mark) is more distinctive. Confusion can be construed here from proof that, the first was known and that the public would in the loose sense associate the second with the first.
Thus, for establishing likelihood of confusion, all circumstances in play must be carefully examined.
3.2 LIMITATIONS UPON INFRINGEMENT
This portion of the work is not based on those instances where a proprietor has concerted to the use of his mark like, licensing and assignment. Here we shall examine legitimate uses of the mark by an unauthorised user, exhaustion of rights and even conflicts between marks.
3.2.1 legitimate uses of the mark by an unauthorised user
Here, three issues are briefly raised, namely; legitimate forms of trading, purely descriptive use and the issue of comparative advertisement.
In the realm of industrial and commercial matters, certain practices are considered as honest practices as they do not have any effect on the proprietor’s interest. As regards this therefore, Article 7(3) of the Bangui Agreement states:
“Registration of the mark does not confer on its owner the right to prohibit a third party from making use in good faith of his name or address, a pseudonym a geographical name or accurate information concerning the nature, quality, quantity, purpose, value, place of origin or time of production of his goods or rendering of his services in so far as the use in question is limited to the purpose of mere identification or information and cannot mislead the public as to the source of the goods or services”.
Another issue that arises under this permitted use or fair dealing concerns, use for purely descriptive purposes. In Bravado Merchandising V. Mainstream Publishing (Edinburgh) Ltd, the pop – group, “wet, wet, wet” name, registered as a mark, was allowed to be used, in a book title, about the group. The Decision of the Federal Court of Australia in Musidor BV V. Tansingis also instructive. In that case, the court was divided as to whether the trademark Rolling Stones (registered in respect of compact discs as well as other goods) was infringed by bootleg discs (using recordings made at live concerts in the 1960s) the words Rolling Stones was used on each disc and on its case insert. The majority of the court held that this was not trademark use but Davies J dissenting held that there had been trademark use. The House of Lordsseem to have followed this dissenting opinion to hold that there was trademark infringement by ‘Robert Alexander Johnstone. Who had in his possession, in the course of business, a compact disc entitled “The B sides collection” volume one and Two bearing the trademark “Bon Jovi”.
Therefore, purely descriptive uses of the mark by an unauthorised user cannot amount to infringement.
Comparative advertisement is another element that touches this issue of fair dealing. It helps the consumers to make informed purchasing decisions and reduces barriers faced by a new introduction into the market. When it takes advantages of the reputation and goodwill or when information given is partial and misleading, infringement proceedings can be initiated, as it is no longer an honest practice nor is it made on an objective base. This form of permitted use is more regular amongst traders as they can always advertise their products as useable in other products or can replace other products. For example, a trader can advertise their films as useable in a “Kodak” camera or as a replacement (in the case of spare parts or accessories).
3.2.2 Exhaustion of rights
As we noted earlier, the concept of exhaustion of rights is relevant to goods, which emanate initially from an intellectual property owner or associated enterprises (subsidiaries, licensees, distributors, etc). Its particular relevance has always been in relation to the parallel importation of goods between different states. To this effect, the Bangui Agreement states in article 7(4) that;
“Registration of a mark does not confer on its owner the right to prohibit a third party from making use of the mark in relation to goods that have been lawfully sold under the mark on the national territory on the member state in which the right of prohibitions is exercised, on condition that the goods have not undergone any alteration”.
This general exemption from liability does not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods especially where the condition of the goods is changed or impaired after they have been put on the market (that is after first sale). The law governing parallel importation within the OAPI zone has not yet been well developed but examples of interferences or improper reference to trademarked by parallel imports within the EEA – European Economic Area are illustrative. In such instances, infringement would arise in situations where a distributor may repackage legitimate goods or label them with a different trademark. Graphically, two European Court of Justice Decisions, on repackaging and labelling are examined in this work.
In Hoffmann – La Roche V. Centrafarm the practice in Germany was to supply certain drugs in packages of 1000 while in Britain, sales we in lots of 10 or 250. A parallel importer from Britain accordingly repacked the smaller lots into the larger, re – using the mark and indicating that he was the importer. The court held that, this was repackaging and consequently an infringement as the “essential function of the mark as a guarantee of origin would in fact be jeopardised if it were permissible for a third party to affix the mark to the product, even to an original product”. This decision was followed in Bristol – Myers Squibb V. Paranova
In American Home Products V. Centrafarm (a case concerning application of a different mark), the plaintiff marketed essentially the same tranquilliser sold as “serenid D” in Britain as “seresta” in the Netherlands.
Thus apart from those circumstances where the goods have undergone alteration, parallel importation serves as a limitation upon trademark counterfeiting.
3.2.3 Conflicts between marks
Where a mark has been filed by a person who at the time of filing knew, or should have known that another person had prior rights to use the said mark, the latter may file a claim of ownership of the mark (especially as ownership shall vest in the person who files it first) with the organisation. This provided he does so within six months following the publication of the record of the first filing. If such a mark is successfully registered, its use in its registered form, cannot amount to infringement of any other mark. This situation is often contained in the defence of peaceful co – existence of the two marks. However, it should be precise here that, this defence cannot prohibit an original mark owner from preventing further registration. Conversely too, a trader, wishing to subsequently use the mark cannot argue that it has been the object of other registrations. This was the decision arrived at by the High Commission of Appeal It held that there is no provision of the Bangui Agreement, which provides that; exclusive proprietorship is a condition for opposing registration of a mark. That, an owner could not be denied the right to protect his mark, under the guise that a similar mark or marks have been previously registered.
The above precision notwithstanding, it is settled that co – existence of marks have the effect of limiting the right of an original proprietor of a trademark.
All rights reserved by Ngang Andrew
Magistrate, Yaounde
