THE MISUSE OF TRADEMARK RIGHTS: THE PECULIAR CASE OF TRADEMARKING “YORUBA”
In May 2021 the hashtag #Yorubaisnotforsale went viral and led to major outrage and a host of various online debates on the legality and ethical responsibility of registering the trademark name of an ethnic group.
This was orchestrated by Gbemisola Isimi, the founder of CultureTree, a UK based organization which runs a parents and toddlers play group. CultureTree went on to produce children’s content for the BBC, Vox Africa and YANGA TV. One programme, Yoruba Stars, has been particularly successful. As such, Isimi decided to apply for the trademark YORUBA STARS at the UK Intellectual Property Office (UKIPO). After a few months, she was informed by the UKIPO that the word ‘Yoruba’ had been owned since 2015 by UK retail clothing firm Timbuktu Limited, which had opposed her application. It was reported that upon an attempt by CultureTree to register the trade mark Yoruba Stars, a name given to all students in the class, with the UK IPO, an opposition was filed against the registration by Timbuktu Limited. Furthermore, it was reported that Timbuktu Limited offered to license the trademark to CultureTree for a fee. Consequently, CultureTree took to social media, claiming that Timbuktu’s registration of the trademark Yoruba, was cultural appropriation.
The sheer amount of online outrage indirectly forced Timbuktu Global to file an application to surrender their trademarked YORUBA.
Although this incident was eventually resolved, there may be several instances where there will be little to no coverage of the issue and questions must then be asked including; “how was the word Yoruba allowed to be trademarked?” and “what can be done when something is wrongfully trademarked?”
Essentially, a trademark can be defined as “any sign, consisting of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging, capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor” (UK Trade Marks Act of 1994). Trademarking products is an essential safeguard for many undertakings to distinguish themselves and their products from their competitors. There are vast array of things that can be trademarked, some of them include names, logos, domain names, symbols, slogans, colours, etc.
The very first step for an individual to be aware of in order to apply for a trademark is of the different classes of trademarks and what class their proposed trademark falls into. Section 4 of the Trademarks Act, CAP T13 Laws of the Federation of Nigeria, 2004. (Trademark Act 2004) states that “A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the Registrar, whose decision shall be final.” The classifications of trademarks used in Nigeria can be found in the Nice agreement 1957 (which was later revised in 2013). There are 45 classes in total in the Nice agreement that cut across all manner of goods and products. Some of the classes are listed below;
“Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; unprocessed plastics in the form of liquids, chips or granules.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; combustible fuels, electricity and scented candles.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
In order to acquire a trademark, the interested party must make an application to the trademark registry. According to section 22 of the Trademark Act 2004, it is stated that “When an application for registration of a trademark in Part A or in Part B of the register has been accepted, and either- (a) the application has not been opposed and the time for notice of opposition has expired; or (b) the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be.”
Trademark laws also give clear provisions of what cannot be trademarked in order to stop wrongful applications and limit the abuse of trademark rights.
Section 13 (1) of the Trademarks Act 2004 states that “no trademark shall be registered In respect of any goods or description of goods that is identical with a trademark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.” Essentially, the act states that no trademark can be registered if it so similar to an already existing trademark that it may cause confusion, in order to register a new trademark there must be distinctive features. Considering our earlier example of trademarking “Yoruba”, the UK act also has grounds for refusal of registration of trademarks, section 3(1) (c) of the UK Act provides that “a trade mark shall not be registered if it is of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)”. Therefore, where the trademark is likely to mislead the public to thinking that a trademark is from or affiliated with a certain geographical origin, it shall be an absolute ground for refusal.
In Nigeria there are specific works, signs, logos, etc that are prohibited from being trademarked according to the Trademarks Act 2004. They are;
- Marks which are commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture.
- Marks which use the Coat of Arms of Nigeria or National flag of Nigeria.
- Marks which use of any emblem or title such as president or governor and geographical names in their ordinary signification without appropriate authorisation.
- Marks which are “scandalous designs”
- Marks containing generic or common words such as ‘patent’, ‘registered’ or ‘copyright’.
- Signs that are identical with an earlier trademark already registered for a distinct product or service.
- Marks modelled after a shape that is required by the product itself.
Also, the Paris Convention for the Protection of Industrial Property which Nigeria is a party to also lists words and symbols that cannot be trademarked;
- Marks containing words such as ‘Red cross’ or ‘Geneva Cross’ and representations of the Geneva and other crosses in red or of Swiss Federal Cross in white on a red ground or in a silver tone on a red ground or representations in a similar colour or colours.
- Marks, flags, armorial bearings and emblems containing abbreviations and names of international inter-governmental organizations
- Marks consisting of protected emblems.
Even with the available laws set in place to limit wrongful trademarks, there may be instances where some applications may slip through the cracks and parties may acquire trademarks that majority would agree are wrongful, for example the previously stated trademarking of the word Yoruba by Timbuktu limited.
Ideally, the best way to stop wrongful trademark applications is by third party opposition during the application stage. Section 20 of the Trademark act 2004 states that “Any person may within two months from the date of the publication under section 19 of this Act of notice of an application give notice to the Registrar of opposition to the registration. (2) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.” This would also apply in the UK could have been used in our initial example. Section 38 of the Trademark act 1994 (UK) “Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration. The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.”
When there is no third-party opposition during the prescribed time and a trademark is wrongfully given, another available solution is for the concerned party to apply for the trademark to be revoked. Section 38 of the Trademarks Act 2004 states that, “(1) Any person concerned who alleges- (a) that any entry has not been inserted in, or has been omitted from, the register; or (b) that any entry has been made in the register without sufficient cause; or (c) that any entry wrongly remains on the register; or (d) that any error or defect exists in any entry on the register, may apply in the prescribed manner to the court or, at the option of the applicant and subject to section 56 of this Act to the Registrar, and the tribunal may make such order for; making, expunging or varying the entry as the tribunal thinks fit.” Section 46(1)(d) of the UK Act, also provides that the registration of a trademark may be revoked where it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
In the example of trademarking the word “Yoruba”, when applying the rules of Section 46 (1)(d), it may be argued that the trademarked word could easily mislead the public as to the company Timbuktu Limited having some relations be it geographical or otherwise to the word “Yoruba” which they do not. Due to this it could be further argued that there were grounds for the UKIPO to revoke the trademark.
Essentially, trademark laws are set in place for protection of intellectual property, but when applied wrongly or when things are wrongfully trademarked, the consequences could be very damaging and it could lead to the disenfranchisement of many people. A wrongful trademark could deceive the public into thinking that two different products are the same or manufactured by the same company, or in the instance of Timbuktu Limited, it could portray that a company has an affiliation with a culture or geographical location when in reality it does not.
It is therefore necessary for third parties to be vigilant and swiftly oppose trademark applications that are clearly wrongful and for the trademark registries to be more careful when approving trademarks. The trademark registries should also give room for revocation of trademarks when valid cases of wrongful trademark acquisitions occur.
- https://www.inventa.com/en/ng/news/article/664/yoruba-trademark-case-sparks-nigerian-cultural-appropriation-debate ↑
- https://culturetree.co.uk/press-statement-yorubaisnotforsale/ ↑
- https://www.inventa.com/en/ng/news/article/664/yoruba-trademark-case-sparks-nigerian-cultural-appropriation-debate ↑