DISTINCTION BETWEEN PASSING OFF AND TRADEMARK INFRINGEMENT
1. Action for trademark can be maintained in respect of trademarks that are duly registered under the Trade Marks Act. Here, it is less onerous to prove that such a trademark is owned by the plaintiff. On the other hand, action for passing off lies in respect of trademark infringement, where the trademark so infringed is not registered. The aggrieved party can therefore institute an action for passing off and would be required to establish his premiere interest of the trademark and also that the trademark has become so notorious and attributable to his product, trade, enterprise or profession. In such a case, the tort of passing off must be specifically proved.
2. Action for the infringement of trademark is statutorily prescribed. On the other hand, action for passing off is not necessarily statutorily prescribed, although it has been codified in some jurisdictions. It is rather an action claimed where there is unlawful economic interference with the trade of the plaintiff. Passing off being a category under economic tort is traceable to the common law.
3. Clearly, the Federal High Court has the jurisdiction to entertain issues arising from the Trademarks Act. Although there are conflicting opinions on whether or not the Court has Jurisdiction to entertain passing off actions, the Federal High Court has the jurisdiction to entertain actions for passing off.
In Patkun Industries Ltd. v Niger Shoes Ltd, a 1988 decision, the Supreme Court held that the Federal High Court has jurisdiction in trademark infringement and Passing off actions stemming from the infringement of trademarks, whether registered or unregistered.
However, the reasoning and opinion of Nnamani J.S.C, Uwais J.S.C the Chief Justice of Nigeria at the time, and Mohammed J.S.C in the 2003 case of Ayman Enterprises Limited V. Akuma Industries Limited & Ors was that, a Passing off action for an unregistered trademark should not be instituted in the Federal High Court but a State High Court as the right of action in a Passing off did not arise from the infringement of any Federal enactment and so may only be a common law right but that the Federal High Court has jurisdiction over Passing off claims arising from the infringement of a trademark only if the trademark allegedly infringed was registered.
In Omnia (Nig.) v Dyktrade Ltd. a 2007 decision, it was held that the Federal High Court has exclusive jurisdiction to hear and determine a claim for Passing off whether the claim arises from the infringement of a registered or unregistered trade mark
These divergent reasoning of learned justices have in no little measure created doubts on the courts to institute an action in Passing off nonetheless, the grundnorm proffers a lasting solution to the jurisdictional issue. The Constitution specifically makes provisions for Passing off actions as follows:
Notwithstanding anything to the contrary contained in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil causes and matters on any Federal enactment relating to copyright, patent, designs, trademarks and Passing off, industrial designs and merchandise marks, business names, commercial and industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards.