The Office of the Registrar of Trademarks (The Registrar) is an important one under the Trademarks Act (The Act). Under the Act, the powers of the Registrar include the power to register, vary and expunge trademarks from the Register of Trademarks. In the recent decision of the Court of Appeal in BRITISH AMERICAN TOBACCO (NIG) LTD v. GALLAGHER LIMITED (2016) LPELR-40538 (CA), the Court of Appeal had to determine whether an application for rectification of the Register of Trademarks could be made to the Registrar and the Court simultaneously.
In this case, GALLAGHER LIMITED (Gallagher) had filed an application with the Registrar requesting that Trademark “Dorchester” with RTM No.62627 which had been registered in the name of British American Tobacco (BAT) be expunged from the Register on the ground that BAT was not the true proprietor of the trademark. Whilst Gallagher’s application was still pending before the Registrar, Gallagher proceeded to file a suit before the Federal High Court also requesting that Trademark RTM No.62627 registered in the name of BAT be expunged on the same ground as that sought in its application to the Registrar. It however included an additional ground in the court action, which was that for a continuous period of five years preceding the application for rectification, there had been no bona-fide use of the trademark by BAT. In its judgment, the Federal High Court found in favour of Gallagher and ordered the Registrar to expunge Trademark RTM No.62627 registered in the name of BAT from the Register. BAT then appealed to the Court of Appeal against the judgment.
In deciding the appeal, one of the main issues the Court considered was whether after a person had applied to the Registrar for the rectification of a trademark on the Register of Trademarks, such a person could make a similar application to the Federal High Court, which is the court with exclusive jurisdiction to entertain matters relating to trademarks.
The Court held that it would amount to an abuse of the process of court to do so. The Court decided that Section 38 of the Act affords an applicant the option of either applying to the Registrar or to the Court for the rectification of the Register. Thus, where an applicant elects one of the two options available to it, it must stick to that option until either the Court or Registrar, has taken a decision on his application. The activation of the jurisdiction of the Registrar under the Act forecloses an applicant’s access to the Court while the application is pending before the Registrar. Equally, where an application is pending before the Registrar, it is only the latter that may refer such application to the Court and not the applicant.
The court stated that an application before the Registrar of Trademarks is, at best, an application before a Tribunal which after hearing and determination is subject to appeal to the Federal High Court.
This decision provides useful guidance on the right of an applicant seeking a relief under section 38 of the Act and the manner of exercise of the right. Essentially, in making an application pursuant to that section, it is important for an applicant to weigh the pros and cons of approaching either the Registrar or the Federal High Court, because once it approaches either of them, it is bound to await a decision before it can take any further steps in respect of the application.