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By Godwin H. Richard

WHAT was in force at as January 1, 1900, as received Law on Trade Marks in Nigeria was PATENTS, DESIGNS AND TRADE MARKS ACT, 1883 (Great Britain). In 1905, Great Britain enacted its TRADE MARKS ACT 1905, which (not directly applicable in Nigeria) repealed all prior trade mark statutes in that country. But the definition of 'trade mark' as enacted in TRADE MARKS ORDINANCE (CAP 199) LAWS OF THE FEDERATION OF NIGERIA 1958 is in pari materia with Section 3 of TRADE MARKS ACT 1905, which ran in its Section 67 follows:

"In and for the purposes of this Act, (unless the context otherwise requires) a trade mark shall mean a mark used or proposed to be used upon or in connexion with goods for the purpose of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with, or offering for sale."

Then came the enactment in Great Britain of the TRADE MARKS ACT 1938 (HALBURY'S STATUTES OF ENGLAND, 3rd Edition, Vol. 37) with a new definition of Trade Mark in its section 68(1) which reads as follows:

"In this ACT, unless the context otherwise requires, the following expressions have the meanings hereby assigned to them respectively, that is to say .... 'trade mark' means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under Section 37 of this ACT."

This said 1938 ACT of Great Britain also introduced the requisite of 'distinctiveness' as a condition for registration in part A of their register of Trade Marks, for the first time. THE TRADE MARK ACT 1965 was modelled on the said 1938 Act of Great Britain, with its revised definition of trade mark as aforesaid and the aforesaid requisite of 'distinctiveness' in its Section 9(1).

This said definition of 'trade mark' in the British TRADE MARKS ACT 1938 (and also in Nigeria's TRADE MARK ACT 1965 No. 29) is in pari materia with Section 67 (1) of the TRADE MARK ACT (CAP 436) LAWS OF THE FEDERATION OF NIGERIA, 1990 (The ACT).

In FERODO V. IBETO 2004 5NWLR 317, Paragraph C - D Page 347 the Supreme Court re-stated and confirmed the aforesaid definition of trade mark in Section 67(1) of the ACT and went on in its paragraphs B - C to also confirm that 'the essence of a trade mark is that it indicates a (sic) connection in the course of trade between the goods and some person having the right to use the same.' It should be noted that there is no mention of 'Services' and that only 'Goods' are expressly mentioned. From where, then, could it be inferred that service marks are registrable as trade marks under the ACT. Let us go back in time to see what the true position is.

In Aristoc V. Rysta Ltd 1945 AC 68 Lord Maugham in the House of Lords in Great Britain, while interpreting the aforesaid Section 68 (1) of the British 1938 ACT, (which is pari material as aforesaid) confirmed the view that the essential attribute of a trade mark is to indicate origin. He Held, further, in this illuminating Judgement that 'It must be observed that there is a very striking difference between a mark intended to indicate origin and one intended to signify repair, cleaning, or some analogous process after, and it may be long after, the goods have come upon the market. The former will indicate a character or quality which will ordinarily remain so long as the goods remain recognisable. The latter may indicate a purely temporary connection with the goods such as repairing, washing, cleaning or adjusting them; and I am not able to see why the principle should not extend to the connection by warehousing or carrying the goods". In other words, the Learned Justice was saying that these services are ephemeral and not capable of establishing the kind of 'connection' that is envisaged under Section 68 (1) of the British TRADE MARKS ACT 1938 (which is in pari materia as aforesaid). His Lordship also confirmed that the new definition in the 1938 ACT did not introduce anything new to the function and meaning of trade mark as understood before 1938.

In Halbury's Laws of England (4th Edition) Vol.48, at page 21, paragraph 27 it is stated that trade mark requires 'a connection in the course of trade between the proprietor, the goods and the use of trade mark must be in relation to goods. Accordingly, although 'trade' is interpreted widely under the terms of the said TRADE MARK ACT 1938, there could be no registration of a mark for service.

The Minster of Commerce (Minister) and the Registrar of Trade Marks (Registrar) in Nigeria are purporting to extend the classification in the Fourth schedule of the ACT. The purported extensions to schedule Four of the ACT are as follows: New Classes Services

35 - Advertising, Business management, Business Administration, Office functions.

36 - Insurance, Financial Monetary Affairs & Real Estate Affairs.

37 - Building Construction, Repair, and Installation services.

38 - Telecommunications.

39 - Transport, Packaging & Storage of goods, Travel Arrangement.

40 - Treatment Materials.

41 - Education, providing of Training, Entertainment, Sporting & Cultural Activities.  

42 - Scientific & Technological Services & Research & Design relating thereto industrial analysis Research services, Design and development of computer, Hardware and software.

43 - Services for providing Food and drinks, Temporary Accommodation.

44 - Medical services, Veterinary services, Hygienic & Beauty care for Human Beings or Animals, Agriculture, Horticulture & Forestry services. 

45 - Legal Services, Security Services for the protection of property and individual, personal and social services rendered by others to meet the need of individual.

The said purported extensions are intended to make trade marks registrable under the said extended classifications. It is my humble view that the said services are not cognizable under the ACT.

According to Kelly's Laws of Trade Marks (10th Edition) paragraph 8-05, "No trade mark can be properly registered unless it contains one or more of the essential particulars enumerated in the Trade Marks Act". This is clear from the cases e.g. : (i) Orr - Cowing V Registrar of T. Ms 48 LJ. Ch 707.

(ii) Bradlays T.M (1892) 9RPC, 205, 207.

(iii) Price Patent Candle Co. Ltd 1884 27 Ch. D 681.

My submission is that one such requirement is that there must be a connection in the course of trade between the goods and either the proprietor or a registered user of the mark. There can be no such connection between the purported services listed in the said purported sections 35-45, as these are not goods.

If services were not registrable before the enactment of the ACT, from where, if I may humbly ask, would the REGISTRAR, the MINISTER or anybody acting on his behalf derive the power with which to make the services listed in the said purported sections 35-45 registrable under the Act?

Section 4 of the ACT specifies that 'trade mark' must be registered in respect of goods or classes of goods. Under Section 18 of the Act "any person claiming to be a proprietor of a trade mark must apply to the Registrar in the prescribed manner". The 'manner' is prescribed in Section 23 of the ACT, which stipulates that:

The applications must be in forms 2, 5, & 32 ; and

Each application shall be for a registration in respect of goods in one of the classes of the Fourth Schedule only.

It should be noted that the use of the word 'only' in (b) above is a word of limitation (restriction). Besides, each of the forms stated in (a) above requires the applicant to specify the goods in respect of which he proposes to use the mark for which he is seeking registration. The use of the words 'goods' repeatedly and use of 'only' above indicates, in my view, that registration is only admitted in the case of goods as stated in the Third and Fourth Schedules of the ACT.

I humbly submit that, on proper construction of Sections 42 and 45 of the ACT and Regulation 5 of the Trade Mark regulations (Regulations) under the Act: 

The minister has no power to amend the Act in any manner whatsoever, including extending the Fourth Schedule to the Act. The minister only has power to make regulations for the amendment of the Register in the classification of goods in so far as such amendment is within the purview of the Third Schedule (if registered before the Act) and Fourth schedule (if registered after the ACT). So as to put matters beyond doubt:

a) It would seem, the National Assembly in Section 42 (2) of the ACT expressly provided that the power of the REGISTRAR to re-classify goods is limited to trade marks that are already on the Register of Trade Marks; and

The power of the minister to make regulations under Section 45(b) is limited to the classification of goods as listed in the Third and Fourth Schedules of the Act.

The words used in the said Sections and the regulations are clear and unambiguous and so should be given their literal meaning (see Buhari V. Obasanjo 2005 13 NWLR 1, Page 206 Paragraph C-D).  

As stated in Re: POWELL'S TRADE MARK 1893 2 CH 388, 403 & 404 'The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the origin and quality of the goods. Lord Macmillan in the ARISTOC case (supra) accepting this definition of trademark in that case Held that a repairer (i.e. the service that was in issue in that case) does not contribute in anyway to the production of goods before they reach the market; repairs are not goods and so cannot be put on the Register of trade marks. By an extension of the same line of argument, the services listed in the said purported extension of the Fourth Schedule to the ACT are not goods and therefore are not registrable under the Act.

If the Act had contemplated the registration of services as trade marks it would have stated so in clear words. I am given to understand that the registrar in reliance on the purported extension of the Fourth Schedule to the ACT by executive fiat has made a practice of now registering the services purportedly listed in the said purported extension to the Fourth Schedule of the ACT. The minister and the registrar may well argue that this is advantageous in the public interest. That may well be so. But, (quoting Lord Wright in the ARISTOC case (supra) "It is however, clear that if such a practice does not come within the terms of the Act it is not lawful, however convenient. If the law is to be altered, that must be done by parliament." Even in Britain, services marks were not registrable until the Trade Marks (Amendment) Act 1984 made it so i.e. by Legislation.  

My submission is that if the ACT is to be altered, that must be done by The National Assembly. It is my respectful contention that:

i) The purported extensions to the Fourth Schedule to the ACT are purported attempts to amend the ACT; and

ii) Neither the REGISTRAR nor the MINISTER has the power to amend the ACT.

It is an elementary rule for the construction of statutes that one should presume that the Legislature does not intend to make any substantial alteration in the law beyond what it explicitly declares either in express terms or by clear implication.

In the construction of statutory provisions, where specific things are mentioned, the intention is that those not mentioned are not intended to be included See OLUWALOGBON V. GOVERNMENT OF UK 2005 14 NWLR 760 (Part 946), Page 787, Paragraph B - C. Again, in the OLUWALOGBON case (supra) it was Held that "Enactments must always be interpreted as they are, rather than as they ought to be. Where the intention of the law giver is manifest from clear words of the statute being interpreted, the Court must without further ado give effect to that intention as conveyed through the words employed. The statute should be holistically considered anytime a part or section of it is being interpreted in order to avoid inconsistency or repugnancy...."

Looking specifically at the Third and Fourth Schedules of the ACT, there is no mention of 'services' or 'service marks' anywhere; nor is any class designated for registration of service(s); All references are to goods and good against which trade marks can be registered under the ACT.

Again, looking holistically at the plain words of the ACT, there is no suggestion anywhere that service marks are envisaged to be admitted in the Trade Marks register. Where the MINISTER or the REGISTRAR have formed the view that it is advantageous in the public interest for trade marks to be registered in respect of service (s) then the proper line of action would be, in my view, to sponsor a bill in that behalf to THE National Assembly. It is when such a bill becomes an ACT of THE National Assembly that the registration of service marks will be lawful. Before then, all purported registrations in the purported extensions to the Fourth Schedule of the ACT are unlawful. The purported extension of the Fourth Schedule of the ACT is a usurpation of the prerogative of THE National Assembly, which is unconstitutional and therefore unlawful.

The Law of Trade Marks in Nigeria has always been that service marks are not registrable, as services are not goods. It was so under the TRADE MARKS ACT 1883 of Great Britain, which was the Received Law on trade marks at 1st January 1900, and has remained so up to and including the date of the ACT. If it is contended that the ACT has altered the law on trade marks so as to make service marks registrable under the ACT, those who make that assertion should be able to point to clear language that achieves that result. See BISMAG V. AMBLINS 1940 Ch 667 per Lord Wilfred Green (MR). 

I am humbly of the view that it will yield much dividend to compare, side by side, the NICE AGREEMENT (1957) (NICE AGREEMENT) on the international classification of goods and the Fourth Schedule to the ACT. It will be discovered that NICE AGREEMENT is divided into two parts: one part with the sub-heading: 'GOODS' and another part with the sub-heading: 'SERVICES.' Also, it will be discovered under the said sub-heading -'GOODS' are - listed goods, which are in pari-materia, in all respects with the listing and classification of goods in the Fourth Schedule of the ACT. What is conspicuously absent in the Fourth Schedule is the listings on 'services'. This, in my view, is an eloquent testimony that:

The National Assembly in the ACT enacted the goods listed in 'GOODS" section of the NICE AGREEMENT, making it a part of the law in Nigeria; and the National Assembly deliberately omitted the listings in the 'SERVICES' section of the NICE AGREEMENT, thus excluding service mark as a registrable trade mark under the ACT. 

This is further evidence that it is the intention of the National Assembly that service marks should not be registrable under the ACT.

It could be argued that, as the ACT has not defined 'goods' - not even in section 67 - the definition of 'goods' could be stretched to include 'intangible goods', because services are intangible. With respect, in my view, this would be an abuse of language. It might as well be argued that the definition of 'goods' should be stretched to include 'tangible services'. Now, that would be preposterous.

A mark may be used in the course of trade in various ways:

A person who carries on some trade (e.g. money lender advertising practitioner, banker, legal practitioner, hotelier etc) in the course of which he uses certain goods (e.g. camera, stationery, computers, motor-cars etc) may put a distinctive mark on them to indicate that they are his property; this is not, it is submitted, within the definition of trade mark under Section 67(1) of the ACT. 

A person who performs an occasional service in relation to goods already marked and now private property (e.g. washing, cleaning, tuning of pianos, sporting and cultural activities, education, training etc) may use a mark on these goods, but this is not, it is submitted, trade mark use.

A trader may put a mark on goods so as to indicate to the purchaser that he takes responsibility for their quality i.e. that he has given them some character either by manufacture or selection; that, it is submitted, is the true use of a trade mark. This is because it has satisfied the requirement in section 67 (1) of the ACT in establishing 'a connection in the course of trade' between the goods and the proprietor or registered user of such trade mark.

A fortiori, mark that is used in a sense that does not establish 'a connection in the course of trade' is not a trade mark under the ACT. It is submitted that service marks do not establish this 'connection' and so are not trade marks under the ACT.

Extending the Fourth Schedule of the ACT to include marks for services is an attempt by the MINISTER to Legislative on trade marks, which is unconstitutional. PART II, Section 4 (2) of the Constitution of the Federal Republic of Nigeria, 1999 (Constitution) has charged The National Assembly with the responsibility of making laws for the peace, order and good government of the Federation or any part thereof with respect to any matters included in the Exclusive Legislative List set out in Part 1 of the Second Schedule to the Constitution. Trade Marks is item No 43 on the said list.

This said Legislative power has not been delegated to either the minister or to the registrar. Consequently, the purported extension of the Register without any enabling ACT of the National Assembly in that behalf is a usurpation of the constitutional prerogative of The National Assembly.

In Alamieyeseigha V. Igoniwari (No 2) 2007 7 NWLR 524, 577 Paragraph C - D it was Held that the Court has the duty to prevent the infringement of the constitution.

The usurpation of the Powers of the National Assembly is an infringement of the constitution and the Court has the power to prevent such infringement.

The direct implication of all this is that all Legal Practitioners and Trade Mark Agents concerned in the practice of intellectual property law in Nigeria are left in an ethical quandary. Do they( under the desire of earning increased / additional professional fees at a time that the underlying real sector of the economy is not doing so well in Nigeria) condone this illegality by looking the other way, or is it meet to speak up at all times and defend due process and the rule of law? And there are international ramifications to this concern. Take a look on the internet and see how foreign law firms are advertising and informing the whole wide world that service marks are now registrable in Nigeria, inviting applications for service mark registration in Nigeria.

We are all aware that commerce in Nigeria has developed to such a stage that service marks ought to be registrable in Nigeria. You cannot be inviting the international community to come and invest in Nigeria without complying with international best practices. Yet, you should not be seen to be short circulating due process and attendant legality, no matter how inconvenient it might be. The snag in falling asleep while you are being dragged through illegality is that you deprive yourself of the moral high horse from which to pontificate at other law breakers.

THE words used in the said Sections and the regulations are clear and unambiguous and so should be given their literal meaning (see Buhari V. Obasanjo (2005) 13 NWLR 1, Page 206 Paragraph C-D)

As stated in Re: Powell's Trade Mark (1893) 2 CH 388, 403 & 404 'The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the origin and quality of the goods. Lord Macmillan in the ARISTOC case (supra) accepting this definition of trademark in that case Held that a repairer (i.e. the service that was in issue in that case) does not contribute in anyway to the production of goods before they reach the market; repairs are not goods and so cannot be put on the Register of trade marks. By an extension of the same line of argument, the services listed in the said purported extension of the Fourth Schedule to the Act are not goods and therefore are not registrable under the Act.

If the Act had contemplated the registration of services as trade marks it would have stated so in clear words. I am given to understand that the registrar in reliance on the purported extension of the Fourth Schedule to the Act by executive fiat has made a practice of now registering the services purportedly listed in the said purported extension to the Fourth Schedule of the Act. The minister and the registrar may well argue that this is advantageous in the public interest. That may well be so. But, (quoting Lord Wright in the ARISTOC case (supra) "It is however, clear that if such a practice does not come within the terms of the Act it is not lawful, however convenient. If the law is to be altered, that must be done by parliament." Even in Britain, services marks were not registrable until the Trade Marks (Amendment) Act 1984 made it so i.e. by Legislation.

My submission is that if the Act is to be altered, that must be done by The National Assembly. It is my respectful contention that:

i) The purported extensions to the Fourth Schedule to the Act are purported attempts to amend the Act; and

ii) Neither the Registrar nor the Minister has the power to amend the Act.

It is an elementary rule for the construction of statutes that one should presume that the Legislature does not intend to make any substantial alteration in the law beyond what it explicitly declares either in express terms or by clear implication.

In the construction of statutory provisions, where specific things are mentioned, the intention is that those not mentioned are not intended to be included See Oluwalogbon V. Government of UK 2005 14 NWLR 760 (Part 946), Page 787, Paragraph B - C. Again, in the Oluwalogbon case (supra) it was Held that "Enactments must always be interpreted as they are, rather than as they ought to be. Where the intention of the law giver is manifest from clear words of the statute being interpreted, the Court must without further ado give effect to that intention as conveyed through the words employed. The statute should be holistically considered anytime a part or section of it is being interpreted in order to avoid inconsistency or repugnancy...."

Looking specifically at the Third and Fourth Schedules of the Act, there is no mention of 'services' or 'service marks' anywhere; nor is any class designated for registration of service(s); All references are to goods and good against which trade marks can be registered under the Act.

Again, looking holistically at the plain words of the Act, there is no suggestion anywhere that service marks are envisaged to be admitted in the Trade Marks register. Where the Minister or the Registrar have formed the view that it is advantageous in the public interest for trade marks to be registered in respect of service (s) then the proper line of action would be, in my view, to sponsor a bill in that behalf to the National Assembly. It is when such a bill becomes an Act of the National Assembly that the registration of service marks will be lawful. Before then, all purported registrations in the purported extensions to the Fourth Schedule of the Act are unlawful. The purported extension of the Fourth Schedule of the Act is a usurpation of the prerogative of the National Assembly, which is unconstitutional and therefore unlawful.

The Law of Trade Marks in Nigeria has always been that service marks are not registrable, as services are not goods. It was so under the Trade Marks Act 1883 of Great Britain, which was the Received Law on trade marks at 1st January 1900, and has remained so up to and including the date of the ACT. If it is contended that the Act has altered the law on trade marks so as to make service marks registrable under the Act, those who make that assertion should be able to point to clear language that achieves that result. See Bismag V. Amblins (1940)Ch 667 per Lord Wilfred Green (MR).

I am humbly of the view that it will yield much dividend to compare, side by side, the Nice Agreement (1957) (Nice Agreement) on the international classification of goods and the Fourth Schedule to the Act. It will be discovered that Nice Agreement is divided into two parts: one part with the sub-heading: 'Goods' and another part with the sub-heading: 'Services.' Also, it will be discovered under the said sub-heading -'Goods' are - listed goods, which are in pari-materia, in all respects with the listing and classification of goods in the Fourth Schedule of the Act What is conspicuously absent in the Fourth Schedule is the listings on 'services'. This, in my view, is an eloquent testimony that:

The National Assembly in the Act enacted the goods listed in 'Goods" section of the Nice Agreement, making it a part of the law in Nigeria; and the National Assembly deliberately omitted the listings in the 'Services' section of the Nice Agreement, thus excluding service mark as a registrable trade mark under the Act.

This is further evidence that it is the intention of the National Assembly that service marks should not be registrable under the Act.

It could be argued that, as the Act has not defined 'goods' - not even in section 67 - the definition of 'goods' could be stretched to include 'intangible goods', because services are intangible. With respect, in my view, this would be an abuse of language. It might as well be argued that the definition of 'goods' should be stretched to include 'tangible services'. Now, that would be preposterous.

A mark may be used in the course of trade in various ways:

A person who carries on some trade (e.g. money lender advertising practitioner, banker, legal practitioner, hotelier etc) in the course of which he uses certain goods (e.g. camera, stationery, computers, motor-cars etc) may put a distinctive mark on them to indicate that they are his property; this is not, it is submitted, within the definition of trade mark under Section 67(1) of the ACT.

A person who performs an occasional service in relation to goods already marked and now private property (e.g. washing, cleaning, tuning of pianos, sporting and cultural activities, education, training etc) may use a mark on these goods, but this is not, it is submitted, trade mark use.

A trader may put a mark on goods so as to indicate to the purchaser that he takes responsibility for their quality i.e. that he has given them some character either by manufacture or selection; that, it is submitted, is the true use of a trade mark. This is because it has satisfied the requirement in section 67 (1) of the ACT in establishing 'a connection in the course of trade' between the goods and the proprietor or registered user of such trade mark.

A fortiori, mark that is used in a sense that does not establish 'a connection in the course of trade' is not a trade mark under the Act. It is submitted that service marks do not establish this 'connection' and so are not trade marks under the Act.

Extending the Fourth Schedule of the Act to include marks for services is an attempt by the Minister to Legislative on trade marks, which is unconstitutional. Part II, Section 4 (2) of the Constitution of the Federal Republic of Nigeria, 1999 (Constitution) has charged The National Assembly with the responsibility of making laws for the peace, order and good government of the Federation or any part thereof with respect to any matters included in the Exclusive Legislative List set out in Part 1 of the Second Schedule to the Constitution. Trade Marks is item No 43 on the said list.

This said Legislative power has not been delegated to either the minister or to the registrar. Consequently, the purported extension of the Register without any enabling Act of the National Assembly in that behalf is a usurpation of the constitutional prerogative of The National Assembly.

In Alamieyeseigha V. Igoniwari (No 2) (2007) 7 NWLR 524, 577 Paragraph C - D it was Held that the Court has the duty to prevent the infringement of the constitution.

The usurpation of the Powers of the National Assembly is an infringement of the constitution and the Court has the power to prevent such infringement.

The direct implication of all this is that all Legal Practitioners and Trade Mark Agents concerned in the practice of intellectual property law in Nigeria are left in an ethical quandary. Do they (under the desire of earning increased / additional professional fees at a time that the underlying real sector of the economy is not doing so well in Nigeria) condone this illegality by looking the other way, or is it meet to speak up at all times and defend due process and the rule of law? And there are international ramifications to this concern. Take a look on the internet and see how foreign law firms are advertising and informing the whole wide world that service marks are now registrable in Nigeria, inviting applications for service mark registration in Nigeria.

We are all aware that commerce in Nigeria has developed to such a stage that service marks ought to be registrable in Nigeria. You cannot be inviting the international community to come and invest in Nigeria without complying with international best practices. Yet, you should not be seen to be short circulating due process and attendant legality, no matter how inconvenient it might be. The snag in falling asleep while you are being dragged through illegality is that you deprive yourself of the moral high horse from which to pontificate at other law breakers.

 Richard is an attorney-at-law in Lagos.