LEGAL PRINCIPLE: JURISDICTION — Passing-off — Statutory Right of Action — Section 3 of Trade Marks Act creates statutory right of action only for registered trade marks
PRINCIPLE STATEMENT
Section 3 of the Trade Marks Act, 1965 gives a right of action for passing-off derived from the Act, not from common law. This right arises only where there is an infringement of a trade mark registered under the Act.
RATIO DECIDENDI (SOURCE)
Per Kalgo, JSC (adopting Karibi-Whyte, JSC in Patkum Industries Ltd. v. Niger Shoes Manufacture Ltd.), in Ayman Enterprises Limited v. Akuma Industries Limited (2003) NLC-1161999(SC) at pp. 15–16; Paras D–A.
"Section 3 of the Trade Marks Act, 1965 proprio vigore thus gives a right of action of passing-off. The right of action is therefore derived from the Trade Marks Act 1965, and not from common law. ... It can only arise or be available where there is an infringement of a trade mark registered under the said Act."
EXPLANATION / SCOPE
Section 3 creates a statutory passing-off right for registered trade marks. The principle applies to intellectual property law. Unregistered marks are not covered. The rule limits Federal High Court jurisdiction. The party must register the trade mark to invoke this provision. The principle is well-established.