Legality of Service Marks in Nigeria


The protection of trade marks in Nigeria has been guaranteed since 1967. Ultimately, this protection guarantees the rights of the trademark owner against unauthorized use by a third party. Before 2007, trade marks were registered solely as goods, so trademarks covering services could only be registered in class 16 – as printed matter and related materials.

Throughout the Trade Marks Act 1990 Cap 436 Laws of the Federation of Nigeria 1990 (the “Act”), the word “services” is used in relation to the service of documents and the Federal Civil Service Commission and not in the sense of a product that can be trade-marked. It is therefore safe to assume that the intention of the draftsmen was to strictly limit the use of trade marks to the protection of goods.

However, and curiously too, the Nigerian Minister of Commerce and Industry in 2007 amended the Trade Marks Regulations (the “Regulations”) to extend the initial classification of items that can be registered under the Trademark Act to cover both goods and services. This has presented a new legal question as to the legality or otherwise of the amendment to the Regulations.

Enabling Provision

To provide for the registration of services as trademarks, the Nigerian Minister of Commerce and Industry in 2007 purportedly acting under the authority of Sections 42 (1) and 45(1) amended the Regulations to extend the initial classification to cover both goods and services. While Section 42(1) of the Act empowers the Minister to make regulations for adapting the designation of goods or classes of goods registered to any amended classification, Section 45(1)(b) of the Act empowers the Minister to make regulations for classifying goods for the purposes of registration of trademarks. It is pertinent to mention that while “goods” is used across the Act and is not defined, the word “services” is neither mentioned nor defined in the Act.

Legality of Service Marks

As the main object of statutory interpretation is to discover the intention of the lawmaker, which can be deduced from the letters of the law[1], Section 45 is clear on the scope of the regulations the Minister can make, limiting this to the classification of “goods” for the purposes of registration. Consequently, the powers of the Minister to make regulation is limited to goods alone and does not extend its application to services. In Oviawe v. Integrated Rubber Products Nigeria Limited & Anor[2], the Supreme Court held that where the words of the statute are in themselves precise and unambiguous then no more can be necessary than to expound those words in the natural and ordinary sense. Whilst arguments have been canvassed to extend the meaning of goods as used under the Act to services on the premise that services may be classified as intangible goods, the wording in Sections 42 (1) and 45 (1) of the Act are clear and lack any form of ambiguity.

In Famfa Oil Limited V. A-G Federation & Anor[3], the Court held that it is the law that subsidiary legislations must conform with the principal law which provides the source of their existence. In relying on this decision, the amendment of the Regulations to include “service marks” does not conform with the provision of the Act, therefore it may be argued that the amendment was issued ultra vires the powers of the Minister.

Similarly, in Agbareh & Anor. v. Mimra & Ors.[4], the Court held that, “it is well established rule of interpretation of deeds and statutes that the expression of one thing is the exclusion of another. The principle is expressed in the latin maxim: expressio unius personae est exclusion alterius or expressum facit cessare tacitum. The term means that the expression of one person or thing implies the exclusion of other persons or things of the same class, but which are not mentioned”. From the foregoing, it is our view that the amendment of the Regulations by the Minister expanding trademark registration to cover services was issued ultra vires the powers conferred on him by Section 42(1) of the Act, he indeed exceeded the limits set by Section 45(1) of the Act. The amendment is therefore null and void ab initio. Instructively, this conclusion of ours finds good company in the decision of Justice M.B Idris of the Federal High Court in the unreported case of Ramhead Industrial & Commercial Co. Ltd v. Ekulo International Ltd & 2 Ors[5] where the Court defined trademarks and specifically noted that services are not covered under the Act. The Court stated as follows:

Trade marks …(iii) the use must be in relation to goods. The act in its present form does not cover service marks (marks used by service organisations to distinguish their services from those of others). See Akesa (Nig.) Ltd v. Union Bank of Nigeria Ltd Unreported Suit No. FHC/L/95/81.

Conclusion

While the protection of service marks is a noble and good idea, the question is: whether the process of its introduction into the Nigerian legal system has followed due process and is in consonance with existing laws on the subject? And the answer is in the negative. The decision of Justice Idris having not been appealed remains the extant law and therefore there is the urgent need for legislative amendment of the Act to enable the Minister exercise the powers of regulating the registration of services as a trademark.

Aside being a potential source of huge revenue for government – as services contributes to our Gross Domestic Products –this practice will bring Nigeria in tune with global best practice in the realms of trademark registration and protection of intellectual property rights.

[1] . Saraki v. FRN (2016) LPELR – 40012 (SC)

[2] .(1997) LPELR-2837(SC)

[3] .(2007) LPELR-9023(CA)

[4] . (2008) LPELR-235 (SC)

[5][5] Suit No: FHC/L/CS/256/2012 unreported, delivered 7/6/2017