THE VALIDITY OF OMOTOLA’S TRADEMARK REGISTRATION FROM A LEGAL STANDPOINT.
Awoyemi A. and Koko B.
INTRODUCTION
The recent news of Omotola Jalade Ekeinde’s successful trademark of “OMOTOLA” has resulted in heated debates and arguments online. Many have condemned this legal step expressing concern that it puts “every other OMOTOLA” out there in a disadvantaged position which precludes them from using their birth names as they please. This piece will be tailored towards demystifying the concept of Trademark registration as well as examining the validity of this popular reservation from a legal stand point.
THE GENERAL CONCEPT OF TRADEMARK
The TradeMarks Act of Nigeria in section 67 defines a mark as any device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. World Intellectual Property Organization (WIPO) also defines a trademark as “any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.” Thus a trademark is a symbol created by a manufacturer which makes his product distinct from other products within its class.
To individualize a product, there must be a symbol or name that points to a particular source (creator). This symbol or name, need not inform the consumers of the actual manufacturer or producers but points the consumers to the products. For example, when you see the tick sign, what automatically comes to the mind of the consumer is NIKE. The tick sign and the name Nike is not the actual name or identity of the producers, what that sign does is to distinguish the product and give them a unique identifiable character.
WHY ARE TRADEMARKS IMPORTANT
Trademarks are important in business because they define the identity of the products to the consumers. According to WIPO, Trademarks can serve as an important tool for advertisement and they serve the economy in a general sense by helping to rationalize the commercialization of goods. Trademarks also promote the goodwill and reputation of a business. A bad encounter with a particular product will be solved by not picking that product up from the counter, this can be done by knowing the name or symbol of the product. It safeguard the private rights of the proprietor of the trademark in business, reputation and goodwill. It also safeguards the public interest by protecting consumers from confusion and deception in the marketplace.
THE “OMOTOLA” TRADEMARK
It is not uncommon for celebrities to register their names as trademarks as it allows them to control how their names and brands can be used and exploited in the marketplace. This is usually with the intent of preventing others from exploiting the goodwill attached to their names. Nigerian celebrities like Davido and Omoni Oboli have also trademarked their names. It should however be noted that the celebrity status of an individual does not exempt them from the strict requirements of a Trademark registration. Specifically, Section 9(1a) of the Trademarks Act establishes the name of an individual as an essential element which can make up a valid trademark. It is important to point out that there are 45 different classes of products and services under which an individual can register their trademark and registration in one class does not preclude a registration in another class.
The implication of this is that while celebrities like Omotola may decide to trademark their names under classes like Entertainment, Fashion or Cosmetics, this will not stop anyone else from registering their trademarks under other classes. Also, by virtue of the provisions of Section 7, the proprietor or a
registered user of a registered trade mark cannot interfere with or restrain the use of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used the trade mark.
This is exemplified in the case of American Cyanamid Co Vitality Pharm Ltd (1991) 2 NWLR (Part 171) 15.
Section 8 of the Act specifically prevents the registration of a trademark from interfering with the bona fide use of a person’s name or the name of a place of business. [Baume v Moore (1958) Ch. 907.] To this effect, the registration of the “OMOTOLA” trademark does not prevent any other person from bearing the name Omotola or using the name in any way as long as it is not inconsistent with Omotola Jalade Ekeinde’s registration under the entertainment class.
CONCLUSION
Trademarks exist as a veritable tool for product differentiation in the market place as well as maintaining the integrity of a brand. However, it is evident from the provisions of the law that the registration of a name as a trademark does not translate to blanket disapproval of the use of such name by any other individual.
