What is a Trademark? by Shafiu Adamu Yauri

  • By Shafiu Adamu Yauri, LL. BL, LL. M
    Registrar of Trademarks

As a primer on the concept of trademarks, it is to be noted that Trademarks are part of the industrial property system. Other subjects covered by industrial property include patents, industrial designs, geographical indications and the protection against unfair competition.

The term trademark can be defined as a sign or symbol placed on, or used in relation to one trader’s goods or services to distinguish them from similar goods or services produced by other traders. The learned authors of Kerly’s Law of Trademarks and Trade Names define a “Trademark” as a sign which distinguishes particular goods or services, particular to one undertaking from the goods or services of other undertakings.

The Black’s Law Dictionary defines trademark as a sign or symbol used to identify goods produced by different manufacturers. The World Intellectual Property Organisation (WIPO) on the other hand defines a trademark as a distinctive sign which serves to distinguish the products of one enterprise from the product of other enterprises.

In the same manner, S.67 of the Trademarks Act defines trademark as ‘a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the rights either as proprietor or as a registered user to the mark’

This definition was endorsed by the courts in the case of Ferodo Limited V. Ibeto Industry Ltd.3That trademarks serves to identify and distinguish the goods of different manufacturers.
Under this definition therefore, a trademark must be “used or proposed to be used” and it must have an established connection in the course of trade. To function as a trademark therefore, such connection must exist or be established by the person claiming to be the proprietor of a trademark.

It is important to note that this definition of a trademark as provided by S.67 of the Trademarks Act, was based on the 1938 English Trademarks Act. The Act did not provide adequately for the registration of other types of trademarks like shapes of goods or their packaging, even though shapes are today recognised as good identifiers of one trader’s goods as any type of trademark. This situation was illustrated in the English case of Coca-Cola Trademark Application in which the Coca-Cola Company filed an application to register the shape of the distinctive “Coca-Cola bottle” as a trademark, Coca-Cola’s application was refused by the Registrar of Trademarks because, as the Registrar said, it was trying to register “the thing itself” as a trademark.

The Registrar opined that the definition of a trademark under the 1938 Act, which the 1965 Trademarks Act replicated, required the mark to be “something distinct from the thing marked”. The House of Lords, in affirming this position, was also concerned that by granting a trademark in respect of the bottle itself, it could be allowing an undesirable monopoly in containers to develop.

The New English Trademarks Act in section 17 defines a trademarks as any sign capable of being represented graphically which distinguishes the goods or services of one business from those of another. This definition is viewed as much broader than what was provided in the 1938 Act.

In contemporary usage, the major function of a trademark is to ensure that anyone who is not the proprietor or registered user of a trademark or a licensee thereof, should not be allowed to benefit from the goodwill attaching or potentially attaching to a trademark by the use of a trademark or one nearly resembling a registered trademark, capable of deceiving or confusing the ordinary members of the public. This is also intended to forestall infringements or potential passing-off of the established reputation of another person’s trademark.

The philosophy behind the existence, registration and protection of trademarks therefore is indicated in the definitions given above, namely to identify and distinguish one trader’s goods or services from those of another, and to enable the consumers to be able to distinctly identify and purchase a product or service because it meets their needs by its origin, nature and quality, as indicated by its unique identifier, that is the trademark.

The fundational aspect of trademark definition is that any mark that qualifies as such should be able to distinguish particular goods or services by being distinctive enough, so as to be easily discernible and identifiable as relating to a particular product or service.

In a market swamped by competing goods, a trademark is the shorthand description for products.

Without a trademark it would be necessary each time to describe or compare products by reference to ingredients, function and consumer experience, which would be very long-winded. A trademark therefore allows easy identification and reference to a product, which previously gave satisfaction, thus leading to a repeat purchase. This leads us to another function of a trademark, its guarantee function. Equally, where a consumer had a bad experience with a particular product, the trademark will act as a warning against further purchase.
Therefore, a good trademark should be distinctive enough so as to identify it to a particular good or service. According to the WIPO definition, a trademark must be distinctive for it to be registrable. The European Court of Justice, described the function of a trademark as a guarantee of the identity of the origin of the marked product… without any possible confusion”.

Accordingly, Lord Nicholls described it as a “badge of origin”. He stated further that the use of Trademarks would encourage producers of the goods and services to which they are attached to set and maintain quality standards


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