Africa: Trade mark opposition highlights the issue of reclassification

December 12, 2018

Nigeria uses the International Classification of Goods and Services for its trade mark registration system. However, there was a time when it used the old British Classification system, a system that consisted of 50 classes (all for goods). Although the Nigerian Trade Marks Act 1990 does make provision for the reclassification of old registrations, there are still many trade marks on the register that were classified under the old system. So is there any disadvantage to having a registration that was classified under the old classification system?

The recent Nigerian High Court decision in the case of Aventisub LLC (formerly Aventis Holdings Inc) v Macleod's Pharmaceuticals Limited (October 12 2018) is interesting. What happened here was that in 2014 MacLeod's filed an application to register the mark MACFLOX in Class 5 for the class heading (Class 5 is, of course, the pharmaceuticals class). Aventisub opposed this application on the basis of a 1967 registration for MAALOX in Class 3 of the old classification system for 'pharmaceuticals preparations and particularly an antacid preparation' – Class 3 of the old classification system was for chemical substances prepared for use in medicine and pharmacy.

On February 16 2017, the Registry dismissed the opposition. The hearing officer ruled that the application did not offend the provisions regarding confusing similarity because the two trade marks were in different classes. This decision was taken on appeal. On October 12 2018, the Federal High Court at Lagos reversed the decision, holding that the trade marks were confusingly similar. Judge Aikwawa accepted the various arguments that had been put forward on behalf of Aventisub, namely:

The enquiry should not have been limited to the classification of goods, and should rather have considered the similarity of the goods. This is quite clear from Section 13(1) of the Trade Marks Act 1990 which says that 'no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark 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.'
The enquiry should have identified that Class 3 of the old classification is the same as the current Class 5.
It should not have been suggested that reclassification is mandatory – Regulation 6(1) of the Trade Marks Regulations, which deals with reclassification, says that an owner 'may apply' for reclassification.
It was incorrect to justify the findings on the basis of Section 4 of the Trade Marks Act, which says that questions of class shall be determined by the registrar, whose decision shall be final. This section, said the judge, was not relevant to the enquiry.

So an important victory for Aventisub, and a win for common sense. However, we still feel that companies that have old classification registrations should seriously consider reclassifying their registrations. Trade mark administration in Nigeria can be unpredictable, and this High Court judgment may not filter down to where it should. It is therefore quite conceivable that Registry officials examining applications or considering oppositions will not consider similar marks for similar goods simply because the classes do not correspond. This might require affected parties to file unnecessary and costly appeals.