Wednesday, 07 July 2021/15: 00 / By Femi, Olumide, Chinasa & Eyitemi by Banwo & Ighodalo / Header image credit: The Guardian Nigeria News

On May 23, 2021, Gbemisola Isimi, the founder of CultureTree, a UK-based organization that runs a parent and toddler play group called Yoruba Stars, where children learn the Yoruba language, reported on social media. that Timbuktu Limited, an outdoor clothing brand based in the north of England, had successfully registered the word ‘Yoruba’ as a trademark with the UK Intellectual Property Office (‘UK IPO’) in regarding clothing, in 2015. It was reported that during an attempt by CultureTree to register the Yoruba Stars brand, the name given to all students in the class, with the UK IPO, opposition was filed against registration by Timbuktu Limited.1 In addition, it was reported that Timbuktu Limited offered to license the brand to CultureTree for a fee. Therefore, CultureTree took to social media, claiming that Timbuktu’s registration of the Yoruba brand was cultural appropriation.

The social media post went viral and a number of media outlets reported on the matter, including CNN and BBC. In a press release subsequently published on the CultureTree website, it was stated that Timbuktu Limited had withdrawn its opposition to the UK IPO against the registration of Yoruba Stars and that the issue was in being resolved. In addition to the measures taken by Timbuktu to resolve the case, it appears that the company has closed all of its social media accounts, including its website, and has filed a request to drop the “Yoruba” brand.

The issue with CultureTree and Timbuktu Limited has sparked debates around the legality or otherwise of individuals or businesses tagging ethnic group names and using them to promote their products, brands and / or businesses. While some argue that the trademark registration should not have been authorized by the UK IPO, due to the fact that the word Yoruba connotes a geographical origin, others have argued that it is simply a matter of ” a case of cultural appropriation and to the extent that Timbuktu Limited has met all filing requirements, without any opposition from the public, and to the extent that the trademark registration in the UK is based on the principle of First registrant, Timbuktu Limited has a legal right to the exclusive use of its mark in the United Kingdom. .

Under the UK Trademarks Act 1994 (the “UK Law”)2 a trademark is defined as any sign, composed of words (including names of persons), designs, letters, numbers, colors, sounds or the shape of products or their packaging, capable of being represented in the registry in a manner that allows the Registrar and other competent authorities and the public to determine the clear and specific purpose of the protection afforded to the holder. Simply put, trademarks are words, names, symbols, or designs, used in commerce to distinguish the products of one business from those of other businesses.

Where a mark does not have a word, logo, image or other distinguishing feature that clearly distinguishes it from other goods or services, the mark will not be registered by the UK IPO. More specifically, Section 3 (1) (c) of UK law provides that “a trademark shall not be registered if it is likely to mislead the public (for example as to its nature, quality or geographical origin of the product (goods or services) “. Consequently, when the mark is liable to mislead the public into believing that a mark originates or is affiliated with a certain geographical origin, it constitutes an absolute ground for refusal .

The question then is what happens when a mark that should not have been registered progresses to success?

In the UK, when applying for a trademark registration, it is reviewed to ensure compliance with legal requirements. Once the examination stage is completed, the application is then published in the Trademark Journal, which gives third parties the possibility of filing an opposition against its registration. Ideally, this could have been the appropriate step for CultureTree or any other interested party to file an opposition against the registration of Yoruba as a trademark by Timbuktu Limited, a company with no affiliation to Yoruba culture, on the basis of their own. unregistered rights and / or bad faith of Timbuktu. However, as the application has passed the examination stage and no opposition has been filed against the registration, the UK IPO has successfully registered the Yoruba trade mark in the name of Timbuktu Limited for use, to the exclusion of all others in the UK, subject to their permission.

Notwithstanding the foregoing, Section 46 (1) (d) of UK law provides that the registration of a trademark may be revoked where it is likely to mislead the public, in particular as to the nature, the quality or geographical origin of these products or services. . It can be argued that when Timbuktu Limited, as a clothing retailer, uses the mark on its products, it would reasonably lead the public to believe that the company is affiliated with the Yoruba language, a language spoken most often in the south. -western Nigeria or one of Nigeria’s three largest ethnic groups. Thus, grounds for revocation can be considered to have been raised and a request for revocation can be made by any person, either to the registrar of the IPO or to the court.

In case this registration has been attempted with the Nigerian Trademark Registry, the chances of successfully registering the trademark, even if no opposition is filed against the application, is slim. In any event, it is highly unlikely that the Registrar of Trademarks will accept the mark for publication in the Trademarks Journal in the first place. In the unlikely event, however, that the registration of the trademark “Yoruba” or the name of any other ethnic group for that matter falls through the cracks and is registered, a fairly simple solution to rectify this would be to invoke the provisions. of Section 22. (1) (a) of the Nigerian Law, on the grounds that the mark “Yoruba” was accepted in error. This article provides that when an application has been accepted and the application has not been the object of an opposition and that the legal window of opposition is closed, the registrar must, unless the request was accepted in error, register the trademark. As the “Yoruba”, being one of the largest ethnic groups in Nigeria with around 30 million people, fall under a non-registration requirement under Section 9 of Nigerian Law, any party interested party can ask the registrar to delete the register. The prescribed format for the request would be a request made on Form 27, accompanied by a statement fully setting out the nature of the claimant’s interest, the facts on which his case is based and the relief he seeks.

In the end, while the backlash and public outrage has been enough to push the owners of the disputed mark in this case to relinquish the mark, there is not always an outcry of this magnitude to prompt d ‘other applicants to relinquish their duly registered trademarks, which may be names of ethnic / minority groups, languages, etc. in Nigeria or other foreign countries. This is why it is relevant that we are all aware of the existing individual and collective rights as well as the legal remedies available in such circumstances.

The essence of intellectual property laws is to protect intellectual property. Although the first-to-file trademark regime is applicable in Nigeria (i.e. applicants who are the first to apply for registration of their trademarks are granted trademark rights and priority, applicants have used the marks in trade or that the marks have been previously used by others), the system should not be exploited for the purpose of depriving an individual or even a group of persons of their rights or infringing the rights of other.

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Footnotes

1.
https://culturetree.co.uk/press-statement-yorubaisnotforsale/

2.
Implementation of European directive n ° 89/104 / EEC


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