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Unregistered Devices in the
Context of Registered
Trademarks:
Lessons from the Ferodo Case for
Trademark Agents in Nigeria
May 2009 Vol. 22: Issue # 5
In the case of Ferodo v. Ibeto, the
Nigerian Supreme Court held that
where only a word or words are
registered as a trademark, any
associated get-up or device which is not
registered cannot form the basis of an
action in infringement of the registered
word or words. Thus, unless the “get
up” or device associated with a word or
words is registered as a trademark, an
action in infringement of the registered
word or words cannot be sustained on
the basis of an alleged infringement of
the surrounding get up of the
substantive trademark.
The facts of the Ferodo case are fairly
straightforward. The appellants in the
Ferodo case are manufacturers and sellers
of a brand of brake linings for motor
vehicles sold in cardboard packages
under the name of “FERODO” which
was registered as a trademark in
Nigeria. The appellants claimed that
they had been in the Nigerian market
for ten years prior to their suit against
respondent with their distinctive
trademark “FERODO” in the context of
a specific graphic design which
©Blackfriars LLP 2009. All rights reserved. This document is for general guidance only. Definitive advice
should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative
office in Toronto, Canada.
comprises of a large red rectangle, a
black and white chequered strip
stretching from one side to the other
lower end of the rectangle; and a small
black rectangle centrally positioned in
the upper-half of the rectangle in which
“FERODO” is inscribed in white capital
letters. The appellants sued the
respondents for infringement of the
appellant’s trademark; and for passing
off the respondent’s brake lining as the
appellant’s brake lining.
The appellants contended that what was
registered as a trademark is the entire
representation of the word “FERODO”
and the graphic backdrop of same as
described above. The certificate of
registration, however, indicates that
only the word “FERODO” was
registered as a trademark. The narrow
question that fell for determination was
whether in the absence of a specific
indication of the face of the certificate of
registration that what was registered
included the backdrop, an action in
infringement could be sustained on the
basis of the backdrop to the registered
word.
In its judgment, the trial court found
that there was no infringement of the
appellant’s trademark firstly because it
was only “FERODO” that was
registered as a trademark. Neither the
application for registration nor the
certificate of registration evinced any
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intention on the part of the appellants to
register the device associated with the
word “FERODO”. The court held that
the get up or backdrop to the registered
word were mere embellishments and
garnishes of the name “FERODO”.
Being dissatisfied with the judgment,
the appellants appealed to the Court of
Appeal which affirmed the judgment of
the trial court. Upon further appeal to
the Supreme Court, the appellants
contended that it was not only the word
“FERODO” that was registered as a
trademark but all the components,
representation of the trademark were
intended to be included and were
included in the registration of the
trademark.
In the unanimous decision of the
Supreme Court, what the appellant
registered as a trademark is “FERODO”;
the backdrop to the registered word
“FERODO” are mere ornamentations
and flourishes devoid of legal protection
unless they had acquired a distinct
association with the goods of the
appellants.
The import of the Ferodo case for
trademark agents is that the litigation
and expenses might have been avoided
by including the device as part of the
word “FERODO” in the application for
registration of trademark. It is not
uncommon for trademark agents, for
©Blackfriars LLP 2009. All rights reserved. This document is for general guidance only. Definitive advice
should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative
office in Toronto, Canada.
reasons ranging from mistake,
carelessness or lack of attention to
details to omit certain characteristic
contexts or backdrops to a trademark
when applying for registration. It is
hoped that the Ferodo case will serve as a
timely reminder to trademark agents to
exercise care when preparing
applications for registration of
trademarks, especially, trademarks that
have accompanying devices.
For further information, please contact:
Ms. Nkeiru Onyeaso
Tel: +234 808 718 0833
Email: Nkay@blackfriars-law.com
Fax: +1 646 536 8978
Ms. Clara Ndive
Tel: +234 802 220 4755
Email: pius@blackfriars-law.com
Fax: +1 646 536 8978
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