Famous and well known marks action : AELEX successfully defends Mandarin

In this case, Fan Milk International A/S  (the Appellant), proprietor of the Fan Milk Trademark registered in classes 29, 30, and 32, opposed Mandarin’s Trademark Applications in classes 36 and 43 on the grounds that they were similar to its marks.  However, following a ruling against the opposition by the Registrar of Trademarks, the Appellant filed an Appeal before the Federal High Court seeking to set aside the ruling.

In raising its arguments, the Appellant claimed that the Registrar of Trademarks erred when he held that Mandarin’s Fan Devices in classes 36 and 43 were not identical to that of the Appellant’s Trademark in class 29, 30, and 32 as to be likely to deceive and/or cause confusion.

It also contended that the Registrar  erred when he held that the Appellant cannot claim rights over an alleged conflicting Trademark that is registered in a different class. The Appellant also claimed that the Registrar of Trademarks was wrong to hold that the benefits accorded to “famous and renowned marks” under the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement could not apply in this situation and protect its marks since same has not been domesticated in Nigeria.

In arguing against the Appeal, AELEX, on behalf of Mandarin contended interalia, as follows:

• The mark sought to be registered by Mandarin is sufficiently distinct from the mark of the Appellant and as such not likely to cause confusion
• The Appellant is not entitled to enjoy protection under classes 36 and 43, being that it is a proprietor of a mark in classes (29, 30 and 32) distinct from the class under which Mandarin seeks to register its mark.
• The Appellant is not entitled to the benefits accorded to “famous and renowned” Trademarks under the TRIPS Agreement as the said Agreement is yet be domesticated as Nigerian Law.

The Federal High Court aligned with Mandarin’s position and dismissed the Appeal in its entirety for want of merit.

The AELEX team that successfully prosecuted the appeal was led by Davidson Oturu (Partner) with support from Rebecca Ebokpo (Senior Associate) and Frances Obiago (Senior Associate).