Olo Egbokhare is the CEO of The Sugar Creek, an unregistered trademark. They specialize in making all sorts of cakes to suit the taste of their customers. Although they are yet to be officially registered but to describe them as professionals with a touch of excellence would be an understatement. They have thrived in this aspect of business and they are well known with the business name “The Sugar Creek” worldwide especially for the tantalizing and unique tastes their cakes bear.
I was not surprised when a friend of mine, Kingsley Chinedu Umadia called me from the Syracuse University, New York in the United States of America to ask me whether I’ve ever tasted The Sugar Creek Cakes and if not I should check them out on instagram @thesugarcreek. Sincerely, you can’t have enough. They are patronized worldwide by event planners, professors, politicians, lawyers, doctors, consulting firms, multinational companies, government institutions, international organizations, amongst others. One of her latest work was the most talked about birthday cake of the Billionaire Businessman, Chief Kehinde Disu which is still threading on social media till today.
On the 21st of March 2017, a new building was unveiled at Church Street, Ibadan to the anticipation of quite a number of Ibadan residents. Before then, everybody in the locality had been wondering what the amazing building was meant for and the best people could do was to venture guesses. The building turned out to be a confectionery with the inscription “Sugar Cracks Ltd” and the image of all sorts of snacks including varieties of cakes.
The attention of Olo Egbokhare was drawn to this new business when her colleague back then in the University, Temiloluwa Popoola, who is now an International Television Presenter called her out on air to congratulate her on the opening of her new and sophisticated office. She was dumbfounded and she instructed me to write to the owners of “Sugar Cracks Ltd”, sounding a note of warning to them to desist from using a name similar to her business name, prevent them from confusing her customers and causing harm to her business.
Unsurprisingly, their reply was hinged on the sole point that “The Sugar Creek” is not registered while “Sugar Cracks Ltd” is a registered trademark. Olo Egbokhare seeks to know whether there is any way out.
Points to Note:
1. Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. In most cases, the cost of Intellectual property protection is high especially when a worldwide protection is sought.
2. IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. IP law seeks to strike a balance between the interests of innovators and the wider public interest.
3. The aim of an IP system is to foster an environment in which creativity and innovation can flourish. It is a common misconception, however, that protection only arises when a registration of a particular intellectual property right is successfully achieved. Hence, the need to understand the difference between “trademark” and “passing off”.
4. A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises or competitors and is capable of registration at the Intellectual Property Office. When your innovation is registered, you have exclusive rights to use the trademark and can take legal action against any person or persons who use, in the course of their business (and without your consent), a sign which is identical or similar to your trademark.
5. However, if you do not register your trademark and someone uses your mark without your permission, you may still be able to claim relief through the common law action of “passing off”.
6. For you to successfully bring a passing off action, you must prove the following elements:
(i) You are trading in the goods and services which the mark applies to, as only traders who have generated goodwill can bring a passing off action;
(ii) the public associate your mark with the goods you produce, or the services you provide;
(iii)you have built up a reputation in the goods and services, and goodwill is attached to the mark;
(iv) a third party has made misrepresentations to the public, whether intentionally or not, leading, or likely to lead the public, to believe that the goods or services offered to them are your goods or services; and
(v) this has caused damage to the goodwill in your business.
7. Note, however, that it can be difficult and expensive to prove a passing off action due to the evidential burden of proof placed upon the owner of the trademark. It nevertheless remains a course of action open to owners of unregistered trademarks but it is advisable for your trademark to be registered.
It can be safely concluded that Olo Egbokhare can bring an action under the tort of “passing off” to challenge “Sugar Cracks Ltd” for passing off her goods and services as that of “The Sugar Creek”. However, it would have been much more easier if her business name “The Sugar Creek” had been registered as a trademark. We will pursue the action but I’m still of the firm opinion that she should duly register her “The Sugar Creek” as a trademark.
MY LEGAL DIARY
Joseph Jagunmolu Ogunmodede