The excitement that erupted at one of the Polling Units, during the Nigerian Presidential Election held on the 25th day of February, 2023 is now about to play a phenomenal role in the development of the Nigerian IP jurisprudence. A video of a young “Obidient” (meaning; a supporter of Labour Party – “LP” presidential candidate, Peter Obi), went viral.
Mr. Stephen Muoka was seen chanting, “ELUU P” as LP’s votes were being counted. This creativity inspired by Peter Obi’s fame, became the basis for other engagements. Some weeks later, videos of electorates mimicking the style and manner in which “ELUU P” slang was being sung, were also released during the Gubernatorial Elections.
The original “ELUU P” video having gained popularity, home and abroad, was being exploited for different purposes; artists began producing music with the slang. Night clubs have also turned the original sound into a melody (it became everyone’s favourite party jam). Businesses started employing the use of this word, “ELUU P” for advertisement and on products, etc.
The originator of “ELUU P” is now taking steps to use the word in establishing an advertising and media business for the purpose of offering marketing, branding and related services as indicated in his ”Cease and Desist” Notice pending the registration of his trademark.
However, the issuance of the said notice has attracted some mixed reactions among Nigerians, and lawyers alike.
The general populace is interested in knowing whether “ELUU P” has assumed a generic meaning (hence, a generic mark). And whether “ELUU P” is registrable since the originator fails to show the particular goods or services in existence under which it is being applied for.
Others hold that the slang or word is ineligible for registration as the Igbos in Nigeria would pronounce the letter, “L” found in LP (Labour Party) as “Eluu”.
It is clear that there is a misconception on the meaning and implication of what a generic mark is as opposed to the popularity of a brand.
While the latter will make a word unregistrable, the former won’t. Some of the instances in which a mark is said to be generic include – when a word intended to be registered describes a class of products or goods, e.g., a shoe brand called, “shoe” (with no prefix whatsoever to dilute the dictionary or general meaning).
Or on the other hand, when an already registered word after usage loses its distinctiveness and as such, instead of ascribing the brand to just the goods or services it is applied for, the brand name is now being used as the common term for products within that class.
From the foregoing, we can validly state that by its mere popularity, “ELUU P” cannot be clothed with a generic meaning in any form.
Just like a patent registration, an owner of a trade mark who is desirous of registering a trade mark is empowered to make a written application to the Registrar regardless of the existence of the goods or services in connection with the mark as at the time of registration. Section 18(1) of the Trade Marks Act (TMA), Cap T13, Laws of the Federation of Nigeria, 2004 provides:
“Any person claiming to be the proprietor of a trade mark used, or proposed to be used….”
Therefore, the law does not prevent the proprietor in this instant matter from registering his brand which he intends to employ in marketing and branding business.
However, pursuant to Section 31 (1)(2), the registration is subject to being revoked or removed (from the register) for non-use on an application made by any person concerned to the court or at the option of the applicant to the Registrar, if it is shown that the trade mark was registered without any bona fide intention on the part of the applicant to use the trade mark.
Consequently, in accordance with the provisions of the TMA, it can be safely argued that “ELUU P” is registrable.
However, its being sustained depends on usage. Again, it is purely academic to argue that the Igbo accent or mother-tongue in pronouncing the letter “L” as “ELUU” will affect its eligibility to be registered as a trade mark.
No provision in the Act envisages that a trade mark registration could be adversely affected by how a certain community is known to pronounce an English word.
This point can be further advanced by Sabinus’ “Something Hooge” trade mark. Putting this example into perspective, regardless of the fact that in some Nigerian communities, “Huge” is pronounced as, “Hooge” the trade mark registration was granted.
Besides, trademarking the word, “ELUU P” does not constitute a complete ban on how people could pronounce the letter “L” but a restriction on the unauthorised commercial exploitation of the word.
Lastly, on the issue of whether any unauthorised use of the word pending registration will amount to a breach of the proprietor’s IP rights which can be enforced, the writer is of the view that the TMA does not protect an unregistered trade mark.
Although, the TMA does not prejudice the rights of action accorded to an originator for passing off goods by section 3 TMA, the right of enforcement against the unauthorised use of the word, “ELUU P” has therefore not matured until after its registration.
To enforce his right under the tort of passing off, he has to satisfy certain ingredients (like; infringement of goodwill, misrepresentation, and damage caused) upon which his action can be based to entitle him to any form of remedy.
But these ingredients cannot be grounded in a vacuum, there needs to be an existing goods/services in connection to which the action is brought.
It will be interesting to see how the Registry will reconcile all these underlying issues before considering the registration of the slang, “ELUU P” as a Trade mark in the coming months.
About the Author
Rachael Dawha Ibrahim is a graduate of Ahmadu Bello University, Zaria and was called to the Bar in 2022. She is a Legal Associate at D.D Dodo & Co. In FCT, Abuja. Rachael is an astute young professional with an interest in Data Protection and Intellectual Property Law. She is interested in championing the course of justice and rule of law as users (data subjects) interface with emerging technologies.
She aims at influencing the growth of Africa’s Green Market where digital rights and properties are being valued and protected. She is also engaged in SDGs 4 and 5 actions through founding the Golden Whispers Foundation and can be reached via [email protected]