DIKE GEO MOTORS LTD. V. ALLIED SIGNAL INC (2024)10 NWLR 201(SC)
ON WHETHER REGISTRATION OF TRADE MARK COMPLETE DEFENCE TO ACTION FOR INFRINGEMENT OF TRADE MARK OR PASSING OFF
The registration of a trade mark may not in all cases provide a complete defence to an action for infringement of trade mark or passing off. The basis of the concept and principle of passing off action is that a man is not to sell his own goods under the pretense that they are the goods of another man. There is no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. Thus, the courts may refuse to interfere to protect the use of a defective trade mark or to assist a trader who is using his mark for the purpose of a fraudulent trade. This is encapsulated in the maxim ex turpi causa non oritur actio as a rule of law. Also, the registration of a trade mark does not give the owner of the trade mark the right to use the trademark so as to deceive the public into believing that the goods of the owner of the trade mark are the goods of some other person. In the instant case, the fact that the appellants’ “Allied and Device” trademark became registered after the institution of the suit did not inescapably doom the respondents’ claims for infringement of trade mark to failure. Also, the mere fact of registration of trade mark No. 53200 did not constitute a defence to the claim for passing-off. (P. 229, paras. A-H).
DIKE GEO MOTORS LTD. V. ALLIED SIGNAL INC (2024)10 NWLR 201(SC)
ON STATUS OF REGISTRAR OF TRADE MARKS AND THE FEDERAL HIGH COURT OVER TRADE MARKS
By virtue of section 56(a) of the Trade Marks Act, any application before the Registrar of Trade Marks is deemed to be an application before the court or, at best, a Tribunal which, upon hearing and making a decision, is subject to appeal to the Federal High Court. In other words, the Federal High Court has appellate jurisdiction with respect to matters aforementioned. It thus does not have original jurisdiction in relation thereto. (P. 231, paras. D-F).
