Authored By: Iruayenama Gladys Ibifaka
Rivers State University
INTRODUCTION
In a rapidly evolving commercial environment, brand identity has become one of the most valuable assets a business can possess. They rely on names, logos, words, phrases and symbols as a means of identification for their businesses. From multinational corporations to small-scale Nigerian entrepreneurs, the ability to distinguish one’s goods or services from competitors is essential for survival and growth. Intellectual property (IP) law provides mechanisms to protect this identity, particularly through trademark law and the common law doctrine of passing off.
However, the dichotomy between registered and unregistered marks has created a legal imbalance. In Nigeria, a noticeable gap exists between the protection afforded to registered trademarks and unregistered marks. This gap raises critical questions: Is statutory trademark protection sufficient? Does passing off adequately fill the void? And more importantly, how can Nigerian law better harmonize both regimes?
This article critically examines the relationship between passing off and trademark infringement in Nigerian law, highlighting their differences, overlaps, limitations, and the need for reform.
CONCEPTUAL FRAMEWORK
Trademark
Trademark is an aspect of Intellectual Property that is concerned with the goodwill and reputation of a brand or business. Trademark infringement is a statutory remedy governed primarily by the Trade Marks Act. It occurs when a person uses a mark identical or deceptively similar to a registered trademark without authorization.
Under Nigerian law, only registered trademarks enjoy protection for infringement. This principle is reinforced by Section 5 of the Act, which grants exclusive rights to the registered proprietor to use the mark in relation to the goods or services for which it is registered. In Ferodo Ltd v Ibeto industries Ltd where the court emphasized the necessity for registration before a claim for infringement can succeed.
Thus, trademark infringement is registration-based, and without registration, no action for infringement can succeed.
Passing Off
Passing off, on the other hand, is a common law tort designed to protect goodwill and prevent unfair competition. It arises when one trader misrepresents their goods or services as those of another, thereby causing damage. The classical definition of passing off is rooted in misrepresentation likely to deceive consumers and damage goodwill.
The statutory relevance of passing off in Nigeria is recognized under Section 3 of the Trade Marks Act, which provides that while unregistered trademarks cannot be enforced through infringement actions, the right to sue for passing off remains unaffected .
The Elements of Passing Off
In Erven warnik BV and anor v J Townend and sons1979] AC 731 , Lord Diplock established 5 guidelines to prove the tort of passing off
- A misrepresentation
- That it was made by a trader in the course of trade
- To prospective customers of his or to ultimate customers of goods and services supplied by him
- Which is calculated to injure the business or goodwill of another trader
- That causes actual damage to a business or goodwill of the trader by whom an action is or will be brought.
The modern formulation of passing off is based on the “classic trinity ” established in Reckitt & Colman Products Ltd v Borden Inc which states that no man may pass his goods off as that of another. The following elements must be present in a claim for passing off:
- Goodwill – In IRC v Muller & CO’s Margarine Ltd , goodwill was defined as the attractive force that brings in customers. The claimant must establish reputation in the market, that is existence of a protected goodwill in their goods, services , name , mark and so on.
- Misrepresentation – The defendant must have made a false representation of the goods or services to the public.
- Damage – The claimant must show proof of actual damage or likely damage as a result of the defendants misrepresentation.
These elements have been adopted in Nigerian jurisprudence and remain the cornerstone of passing off claims.
Key Differences Between Passing Off and Trademark Infringement
Nature of Rights
Trademark infringement is statutory while passing off is common law based, though recognized statutorily.
Requirement of Registration
Infringement requires registration while passing off protects unregistered marks based on goodwill .
Burden of Proof
In trademark infringement, the plaintiff only needs to prove the similarities of the mark and the likelihood of confusion while in passing off, the claimant must prove the 3 elements ; goodwill, misrepresentation, and damage.
Scope of Protection
Registration of Trademark is prima facie evidence of ownership. Therefore trademark registration offers nationwide protection and protection is limited to registered classes of goods. While in passing off, protection is limited to specific geographical area where reputation is established. It may extend beyond identical goods if confusion arises.
Complexity
Passing off is more complex and evidence heavy because it requires the plaintiff to prove the goodwill, misrepresentation and damage. While trademark infringement is relatively straightforward because by providing evidence of similarities of the mark and likelihood of confusion.
JUDICIAL AUTHORITIES IN NIGERIA
Nigerian courts have consistently recognized both doctrines:
- In Patkun Industries Ltd v Niger Shoes Ltd (1988) JELR 47914 (SC)
The plaintiff owned a registered trademark“NISHMACO” for footwear. The defendants allegedly infringed the trademark, and passed off their goods as those of the plaintiff. The suit combined trademark infringement and passing off claims in the Federal High Court. The key issue was whether the Federal High Court had jurisdiction to hear both claims together. The Supreme Court dismissed the appeal and upheld jurisdiction. The Federal High Court has jurisdiction to hear both trademark infringement and passing off claims together, and where both claims arise from the same set of facts, they should not be split between courts. This avoids multiplicity of actions and promotes judicial efficiency. The case clarified the relationship between statutory trademark rights and common law passing off.
- In Niger Chemists Ltd v Nigeria Chemist ltd [1961] NGHC 8
The plaintiff, Niger Chemists Ltd, had an established chemist business with several branches and goodwill in Eastern Nigeria. The defendants opened a similar chemist business in the same town and street using the name “Nigeria Chemists.” The plaintiff objected, arguing the name was deceptively similar and likely to mislead customers. The defendants refused to change the name, leading to an action for passing off and injunction. The court granted an injunction restraining the defendants from using “Nigeria Chemists. And stated that It is not necessary to prove actual deception or intention to deceive and is sufficient that the name is likely to cause confusion. The court found a high likelihood of confusion and protected the plaintiff’s goodwill.
These cases demonstrate that Nigerian courts are willing to protect goodwill even in the absence of registration.
- Starbucks Corporation v Sardarbuksh Coffee & Co (2018)
The plaintiff, Starbucks, owned the well-known “STARBUCKS” trademark and logo. While the defendants operated a café named “Sardarbuksh Coffee & Co.” They phonetic resemblance (Starbucks vs Sardarbuksh), similar logo style and branding elements, identical business (coffee services). Starbucks claimed trademark infringement and passing off.
The Delhi High Court found deceptive similarity and stated that thee defendant’s mark was likely to confuse consumers and the defendant was restrained and required to change its name.
PRACTICAL ILLUSTRATIONS
Example 1: Small Business Without Registration
A small Nigerian skincare brand operating without registration may be unable to sue for infringement but can rely on passing off if it proves goodwill, misrepresentation and damage. For instance, a Lagos-based skincare brand operates under the name “Glow Naturals” but has not registered its trademark. Another company begins selling products under “Glow Naturalz” with similar packaging. The original business cannot sue for trademark infringement. However, it may bring an action for passing off, provided it proves goodwill and consumer confusion.
Example 2: Registered Brand Protection
A registered company discovers another firm using an identical logo. The company can sue for trademark infringement, which is easier to prove. It may also combine this with a passing off claim for broader protection. For instance, On 23rd March 2025, the Federal High Court in Lagos ordered MTN Nigeria Communications Limited to pay N840,000,000 (Eight Hundred and Forty Million Naira) in damages to Citilink Accesscorp Limited for infringing its registered trademark “WEBPLUS.”
Example 3: E-commerce and Social Media
In the era of e-commerce and social media, passing off extends to online misrepresentation, such as imitation of branding on platforms like Instagram and Tik Tok. An online fashion vendor copies another brand’s Instagram aesthetics and branding style, leading customers to believe both brands are related. This scenario highlights how passing off applies in modern digital commerce, where misrepresentation extends beyond physical goods.
THE PROTECTION GAP IN NIGERIAN IP LAW
The protection gap between passing off and trademark law in Nigeria is a well recognized issue in intellectual property law, particularly because both mechanisms aim to protect business goodwill but operate under very different legal frameworks, scopes, and evidentiary burdens. Despite the coexistence of both doctrines, a significant protection gap remains. Businesses without registration are legally vulnerable despite having established market presence.
Trademark law excludes unregistered marks from statutory protection. This is problematic in Nigeria, where many SMEs do not register trademarks due to cost, ignorance, or bureaucracy, while Passing off requires proof of goodwill, which can be difficult for emerging businesses. Courts demand evidence such as sales records, advertisements, and customer recognition. Even when rights exist, enforcement is slow and expensive. Passing off actions are often described as complex and time-consuming .
CRITICAL ANALYSIS
Passing off and trademark law operate as two sides of the same coin, yet they leave a significant protection gap. The dual system of trademark infringement and passing off creates both complementarity and tension.
On one hand, passing off fills the gap left by the rigid registration requirement. It ensures that businesses with established goodwill are not left without remedy. On the other hand, the doctrine is inherently limited, it protects only existing goodwill, not new or emerging brands, it is reactive, not preventive and it imposes a high evidentiary burden.
Trademark infringement, while stronger and promotes formal business registration processes also protect brands even when goodwill is weak, However , trademark is also flawed because it excludes unregistered marks in entirety and it is often inaccessible to small businesses.
Thus, neither system alone is sufficient. The current framework creates a tiered protection system, where registered brands enjoy stronger rights, while unregistered ones rely on uncertain common law remedies.
COMPARATIVE INSIGHT
Trademark protection in Nigeria, the United Kingdom, and the United States combines statutory rights with common law passing off (or its equivalent).
In jurisdictions like the United Kingdom, the Trademark Act which offers robust, well-developed and passing off principles that effectively complements trademark law. Also, courts are more flexible in recognizing goodwill and misrepresentation.
Nigeria relies on the Trade Marks Act and the tort of passing off, however, still struggles with procedural delays, limited judicial specialization in intellectual property, limited awareness and inconsistent application of principles of the law.
In the US, trademark protection is governed by the Lanham Act, with unfair competition doctrines resembling passing off, providing broader and more commercialized protection mechanisms.
RECOMMENDATIONS
To bridge the protection gap, several reforms are necessary:
Simplification of Trademark Registration
The government should streamline registration processes, reduce costs, and increase accessibility for SMEs.
Codification of Passing Off
Passing off should be more clearly codified within Nigerian statutes to provide certainty and reduce reliance on complex common law principles.
Public Awareness Campaigns
Entrepreneurs should be educated on the importance of trademark registration and passing off as an available legal remedy for small businesses.
Judicial Capacity Building
Specialized IP courts or trained judges would improve consistency and efficiency in adjudication.
Integration of Digital Protection
Laws should explicitly address online misrepresentation, domain names, and social media branding.
Hybrid Protection Model
Nigeria could adopt a system where prior use confers limited statutory protection, reducing reliance on passing off alone.
CONCLUSION
Passing off and trademark infringement serve as twin pillars of brand protection in Nigerian IP law. The protection gap between passing off and trademark law reflects a tension between formal registration and equitable protection of goodwill. While trademark infringement offers strong statutory protection, it is limited to registered marks. Passing off, though flexible, is complex and burdensome. Trademark law offers certainty, exclusivity, and statutory remedies but remains underutilized, especially among small businesses due to cost and limited awareness. Passing off, though flexible, imposes a heavy evidential burden, making enforcement difficult. This dual system leaves many businesses inadequately protected. Bridging this gap requires increased awareness, simplified registration processes, and possible legal reforms to harmonize both regimes, ensuring that commercial goodwill is effectively protected regardless of formal registration status. Ultimately, a balanced and inclusive IP framework is essential not only for protecting businesses but also for fostering innovation, fair competition, and economic growth in Nigeria.
REFERENCE(S):
Cases
- Ferodo Ltd v Ibeto Industries Ltd (2004) 5 NWLR (Pt 866) 317 (SC).
- Erven warnik BV and anor v J Townend and sons1979] AC 731
- Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873
- IRC v Muller & Co’s Margarine Ltd [1901] AC 217 (HL)
- MTN v Citilink Accesscorp Ltd FHC/L/CS/1124/2014
- Patkun Industries Ltd v Niger Shoes Ltd (1988) JELR 47914 (SC)
- Starbucks Corporation v Sardarbuksh Coffee & Co (2018)
- NIGER CHEMISTS LTD. V (1) NIGERIA CHEMISTS (2) D. K. BROWN [1961] NGHC 8
Legislation
- Trade Marks Act, Cap T13, Laws of the Federation of Nigeria 2004.
- Trade Marks Act 1994 (UK).
- Lanham Act 1946 (US) (15 USC §§ 1051–1127).
Secondary sources
- Brand Protection Law : Key points on passing unregistered trademarks.
- Passing off – Learn Nigerian Law
- Oyewunmi OA, ‘Trademark Law and the Protection of Brands in Nigeria’ (2015) Journal of Intellectual Property Law & Practice.
- Wadlow C, The Law of Passing-Off: Unfair Competition by Misrepresentation (5th edn, Sweet & Maxwell 2016).
- Ogbuabor, Chukwunweike & Anya, Sylvester. (2013). JURISDICTION IN ACTIONS FOR INFRINGEMENT OF TRADE MARKS AND PASSING-OFF IN NIGERIA. The Nigerian Juridical Review. 11. 83-114.
