Consumer
Festus Akanbi examines the unfolding issue of trademark infringement between Rite Foods Limited and the Nigerian Bottling Company (NBC), producers of Fearless energy drinks and Predators, respectively, saying the legal battle will end up confusing consumers of the two products, unless an amicable settlement is urgently worked out
Globally, business owners make use of distinctive features such as trademarks for product identification, in order to carve a niche for their organisations and to effectively compete in the market they operate.
Its usage, which dates back to pre-historic times, has evolved over time to this contemporary era, and it is a type of intellectual property consisting of a word, phrase, symbol, or design that distinguishes a product or service of an organisation from those of competitors.
Over time, the use of marks for product identification led to its registration and protection, with the earliest trademark legislation known as the Bakers’ Marking Law, enacted by the British Parliament in 1266.
Subsequently, this development spread to other parts of the globe so we had the United States Federal Trademark Act of 1870, the French Manufacture and Goods Mark Act in 1857, followed by Merchandise Mark Acts of 1862 in England, as well as the Japanese law in 1884.
In Africa, the situation is the same, with businesses making use of trademarks in markets where they operate, as also evident in Nigeria, the largest economy on the continent, with over 200 million people, making it the most populous and lucrative investment destination on the continent.
Indeed, the strive for market share has made it necessary for organisations to be identified with one trademark or the other, and it is governed by the Trademarks, Patents and Designs Registry, Commercial Law Department of the Federal Ministry of Industry, Trade and Investment, under the Trade Marks Act, Cap T 13, Laws of the Federation of Nigeria 2004 and the Trademark Regulations 1990.
However, the importance of trademark and product style protection against passing-off by others trying to deceive the consumers to believe their product share same quality with the original cannot be overemphasised.
Some cases of trademark infringements in the country include that of Alban Pharmacy Ltd. V Sterling Products International Incorporated, in 1968, over the mark Casorina, which the appellant (Sterling Products) said infringes on its ‘ Castoria’ which was registered on November 26, 1958, in Class 3 for medicinal products.
After the trial court has passed judgement of non-similarity in favour of the defendant, the Supreme Court overruled that the issue of resemblance was not the right approach, that what the learned judge had in mind was a case of passing-off which must be distinguished from infringement.
It therefore ruled that if the proposed trademark ‘Casorina’ is allowed to be registered, the syllable ‘Cas’ will no doubt form the essential part of the name of the medicine and would likely cause confusion in the minds of the public.
Again, the court stated that the last syllable in the mark ‘Casorina’ namely ‘RINA’ in itself was not free from causing confusion with ‘RIA’ in ‘Castoria.’
In the judgement, Ademola CJN, was of the view that in determining what constitutes an infringement, “the mark sought to be registered must not when compared with what is already registered, deceive the public or cause confusion.”
Another example was that of Beecham Group Ltd. And ors. V Essdee Food Products Ltd (1985). In the Suit No: CA/L/12/84, the plaintiffs/respondents, Beecham Group, who were the owners of the registered trademark ‘Lucozade’ with the mark numbers 5452 and 5456, filed an injunction restraining the defendant, Esdee Food from infringing with the trademark ‘Glucos-Aid.’
At the trial court, it was held that ‘Glucos-Aid’ is confusingly similar in sound to the trademark ‘Lucozade’, and as such contravenes the provision of Section 5(1)of the Trademark Act of 1965, and consequently, N5,000 was awarded as damages to the plaintiff.
In the appeal suit by Essdee Foods at the Supreme Court, the counsel to the plaintiff cited the case of ‘Bell Sons and Co. V Godwin Alco & Others’ to support the point that the ears and the eyes must be together involved in the exercise of comparison.
In the judgement, the Supreme Court dismissed the appeal and held that ‘Glucos-Aid’, in sound, is confusing to ‘Lucozade’ and it will undoubtedly mislead the public. And N300.00 was awarded in favour of the plaintiff.
Indeed, the current battle between Rite Foods Limited and the Nigerian Bottling Company (NBC) brings to the fore the stiff competition that arises in reaching the consumer.
A Form 48, and in the Suit No: PHC/L/CS/92/2021, at the Federal High Court, Lagos, published on Friday, March 19, 2021, in THISDAY and Guardian Newspapers, the plaintiff, Rite Foods, alleged that NBC has infringed on its trademark with its Predator energy drink, which has adopted a lion insignia in resemblance of the mark on its Rite Foods’ which has been using and trading with lion imagery for its Fearless energy drinks three years before the NBC’s Predator came into the market.
The alleged trademark infringement, according to Rite Foods, has damaged its goodwill and it is seeking reliefs which include injunctions and damages for its loss.
Indeed, an exparte injunction has been secured against NBC while another for interlocutory is yet to be decided.
The report also contain a notice of consequences of disobedience of order of court issued to the NBC’s MD, Mathieu Seguin, and ex parte order restraining the company from promoting or using any sales promotion material for its Predator energy drink in a manner that infringes or passes off or that is capable of infringing or passing off the plaintiff’s Fearless energy drink, until the interlocutory application for injunction is determined.
However, investigation reveals that the Plaintiff, Rite Foods’ Fearless energy drinks were launched into the Nigerian market in June 2017, and has become well known with great market share before the NBC’s Predator brand which made entrant in June, 2020, three years after, Fearless entrant.
After the publication of the court proceedings and the matter brought to the public, in what appears like a feeble response, the NBC insisted it will defend itself, stating that it will contest the case vigorously in court.
In a statement, the NBC affirmed its confidence in the court and contended that the bottles and logos are not confusingly similar and that the Predator brand and logo are in use in other markets of the globe. It added that neither the company nor its MD has breached any court order.
There are claims the trademark may have been in use by NBC trade partners in other countries before the product launch in Nigeria in 2020, the issue of trademark concerning businesses and products, it is believed, is territorial.
According to the report, what this means is that a product or trademark registered or used in Brazil or America for example, will not be recognised in Ghana, if it has not been registered or being in use and identified with a product in the country.
The plaintiff, the publication posits, owns the exclusive right to the trademark which has been a mark of identifying its market leading product, Fearless energy drinks since 2017, that with the alleged infringement by NBC, consumers are likely to assume (mistakenly) that the Fearless and Predator brands are from the same source and may also share the same quality.
It further stated that Rite Foods claimed the degree of similarity between the lion symbols on its Fearless brands and that of the NBC’s Predator energy drink is high, and that since both compete in the same market spectrum, the mark is likely to cause confusion in the minds of consumers, about the source or sponsorship of the brands offered under the defendant’s mark.
However, an important question posed on this dispute is why NBC waited for three years after Rite Foods’ Fearless energy drink was introduced before coming out with a look alike of the trademark used by Fearless energy drink, if indeed its partner had used the trademark or style in another country?
A marketing analyst, Mr. Kayode Adewale, wondered why a big multinational company will be playing a catch-up marketing strategy to the point of using a trademark similar to an indigenous company, who had successfully gained market acceptability with the trademark unique packaging.
He affirmed that Fearless introduced in a PET bottle and its unique taste was the game changer, rather than the trademark. However, this product identification with a particular trademark need not be passed off by another in a healthy competitive market like Nigeria.
The industry analyst stated that the alleged infringements negates the provision of the Trade Marks Act, Cap T 13, Laws of the Federation of Nigeria 2004 and the Trademark Regulations 1990, which grants Rite Foods the exclusive owner of the mark for identification of its products within the country.
But there is a new twist to the case with the application of committal filed against the NBC and its MD for contempt of court.
The Rite Foods’ application for committal states that the contemnors, the NBC and its MD have disobeyed interim injunctions granted by Hon. Justice Aneke of the Federal High Court on February 9, 2021.
In the application which was published in the THISDAY and Guardian Newspapers of April 6, 2021, the plaintiff, Rite Foods, is seeking an order committing the contemnors to purge themselves of the contempt of court.
The court papers filed by Rite Foods through its lawyer, Muyiwa Ogungbenro of Olajide Oyewole LLP, shows that the court would be moved at the instance of Rite Foods for an order committing the contemnors to prison for disobeying a court order.
According to the application of committal in both national newspapers, the NBC and its MD are restrained from promoting or using any material for its Predator energy drink in a manner that infringes or passes off Rite Foods’ Fearless energy drinks.
The documents also states that NBC and its MD are in breach of the court order for failing to remove from public domain, promotion materials already released including those released through Taaooma.
It further mentioned that the NBC’s boss is responsible for the company’s breach of the court orders, as Rite Foods alleges that Seguin (NBC’s MD) has the power to command its obedience.
As the matter is now before the court, it is hoped that consumers’ interest will be protected while the dispute is being settled.
