LEGAL PRINCIPLE: INTELLECTUAL PROPERTY LAW – Trade Marks – Unregistered Trade Mark – Right to Sue for Infringement
PRINCIPLE STATEMENT
No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
RATIO DECIDENDI (SOURCE)
Per Belgore, JSC, in Dyktrade Ltd. v. Omnia (Nig.) Ltd. (2000) NLC-571995(SC) at p. 11; Paras A–B.
"No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof."
EXPLANATION / SCOPE
Statutory infringement actions require a registered trade mark; an unregistered mark confers no right to sue for infringement. However, the owner of an unregistered mark retains the common law remedy of passing off—to prevent another from misrepresenting goods as those of the claimant. This dual framework balances statutory protection for registered marks with protection against unfair trading practices. A claimant cannot bypass registration requirements by framing an infringement claim as passing off, but where the essence is misrepresentation rather than statutory infringement, the passing-off action remains available. Registration confers broader rights; passing off protects goodwill