PASSING OFF – WHAT BUSINESS OWNERS NEED TO KNOW.

Passing off is said to occur where a person (individual or organization) seeks to profit from the reputation or goodwill of another more established person, brand or business. It is the use of a similar name or appearance to an existing business or brand, in a manner capable of causing cause deception or confusion to customers or fans. E.g “Evo water”, “Cola Cola” drink, or “Lennis Vuitten” bag or shoe.

The idea is to protect the owner of a brand and his reputation, as well as to prevent impostors from profiting off the brand’s reputation by representing ownership or association with it.

Such lawsuits are not unpopular here in Nigeria, with one of the most celebrated cases being the one by the well-established “Niger Chemists” against “Nigeria Chemists” who opened up right on the same street.

A lawsuit for passing off can be successful even if the existing brand is unregistered, or its validity is in question. If a trademark is registered, then that’s a double advantage which allows the rightful owner to sue both for infringement as well as for passing off. Note that it is best to engage the services of a lawyer when such issues arise, in order to obtain advice on instances where there are two or more options provided by the law for your benefit, and be able to take full advantage of them.

A good example of was in the old Trebor Nigeria Ltd. (manufacturers of Trebor mints) V. Associated Industries Ltd (manufacturers of Minta mints) where Trebor sued both for trademark infringement and passing off. Even though the action for infringement did not succeed, the action for passing off succeeded as the court agreed that the overall appearance and packaging of Minta was similar enough to cause confusion, or to make a customer purchase Minta while meaning to purchase Trebor. It was stated in court that Minta had come to be referred to by some consumers, especially in the Northern part of Nigeria, as “The New Trebor”.

Being on the infringing side of such a lawsuit can be tough, and the damages awarded by the court have been known in some cases to be so large they have wiped out the infringer’s business entirely. In addition to these, there can also be criminal action under certain laws that are generally unknown to most Nigerians such as the law relating to Counterfeit Drugs, that relating to Trade Malpractices and also the Merchandise Marks Act (deliberately paraphrased).