LEGAL PRINCIPLE: INTELLECTUAL PROPERTY LAW — Trade Marks — Infringement Under Section 5(2) of the Trade Marks Act
PRINCIPLE STATEMENT
An infringement of a registered trade mark cannot be maintained unless the court finds that the defendant uses a mark identical with the registered trade mark or uses a mark so nearly resembling it as to be likely to deceive or cause confusion in the course of trade, or uses it in such a manner as to import a reference to the goods with which the plaintiff's trade mark is connected.
RATIO DECIDENDI (SOURCE)
Per Musdapher, JSC, in Ferodo Limited & Anor v. Ibeto Industries Limited (2004) NLC-951999(SC) at p. 20; Paras A–B.
"Following the provisions of section 5(2) of the Trade Marks Act an infringement of a registered trade mark cannot be maintained unless the court finds that the defendant is engaged in the use of a mark identical with the registered trade mark or uses a mark so nearly resembling the registered trade mark, as to be likely to deceive or cause confusion in the course of trade; or uses in relation to any goods in respect of which it is registered, or uses in such a manner as to render the use of the mark to be taken as importing a reference to the goods which the plaintiff's trade mark is connected."
EXPLANATION / SCOPE
Section 5(2) of the Trade Marks Act provides the statutory test for infringement. The plaintiff must prove either: (a) use of an identical mark, or (b) use of a mark so nearly resembling the registered mark that it is likely to deceive or cause confusion in the course of trade, or (c) use that imports a reference to the plaintiff’s goods. This serves protecting the proprietor’s exclusive rights while limiting infringement to genuine cases of deception. The court cannot find infringement based on mere similarity without likelihood of deception.