THE VALUE OF YOUR CREATIVITY AS A SKIT MAKER (Part 1)
#somethinghooge #trademark #intellectualproperty #investorsabinus #ipseries #Peakmilk #Galasausageroll #UACFood #Niceclassification #skitmaker #copyright #imageright #likeness
Dear #IPFriend,
Welcome to this week’s edition of the #IPSERIES newsletter. My name is Rita Anwiri Chindah, a legal advisor and consultant on Intellectual Property, Information Technology and Arbitration. I provide updates on trending global issues with an African bias and with forward-looking opportunities.
I’m glad to be back with the ninth edition. If you are yet to read the previous editions and you are wondering how you can access them, kindly click here to access them.
Are there stories you’re keen to share with me and want me dig into? Share a lead with me via this email address: ipseriesinfo@gmail.com and follow me on Twitter
History repeats itself
Sometime in 2020 Mr Debo Macaroni made a twitter post calling out Wema Bank Nigeria over the use of his famous phrase in his skit “Ooinnn You are Doing Well” and asked that they ceased and desist from using his creativity without his permission. A step in the right direct and shows that he understood the value of his creativity.
You can watch and read my views on the issue . On the evening of 29th May 2022, I got a direct message from a follower called Precious Daniel Ekong saying he thought I would find the post interesting and further complimented me (blush) and several other tags from my #IPFRIENDS who follow my content.
Anyways I check the post out which has now been deleted and indeed it was interesting.
Backstory
Mike Premium, a Talent Manager who manages one Mr Chukwuemeka Emmanuel Ejekwu popularly known as “Sabinus”, “Oga Sabinus” with username “Mr Funny” and the winner of the Africa Movies Viewer’s Choice Award (AMVCA) Best Online Content Creator Award 2022 in a now deleted video, document and social media post called out Friesland Foods Wamco Nigeria Ltd (manufacturers of Peak Milk) over the use of his client popular phrase “Something Hooge” used in most of his skits to promote the “Peak National Breakfast Week product in an Instagram post dated 24th May, 2022.
Mike attached documentary evidence of an “Acceptance Letter dated 26th November 2021 with FILE NUMBER: NG/TM/0/2021/48316 from the Trademark registry in Nigeria indicating that he had commenced the registration of this phrase as a trademark which is a type of intellectual property mechanism. (See picture below)
Mike on behalf of Mr Emmanuel aka Sabinus are demanding for a ₦1 billion as compensation broken as “₦500 Million as compensation for the unauthorized use of his phrase and ₦500 Million as damages for the trauma, emotional, physical, emotional, physical, psychological and mental trauma suffered as a result for the trademark theft and infringement of his intellectual property”. (Post has now been deleted)
Friesland Foods Wamco Nigeria Ltd (manufacturers of Peak Milk) was further asked to cease and desist from using any intellectual property of Mr Emmanuel aka Sabinus.
Another famous brand UAC Nigeria PLC who are the makers of Gala Sausage Roll over the unauthorized use of his image in a cartoon like silhouette represented in one the pictured shared below used in an advert on their Instagram page captioned “the way I am calculating everything in my life”.
UAC Nigeria PLC received similar letter from the lawyer representing Mr Emmanuel aka Sabinus demanding ₦100 Million for the unauthorized use of his image and likeness further stating that it was the average fee his client collected for the commercialization of his image. Further cease and desist from using his image any other intellectual property belonging to Mr Emmanuel aka Sabinus.
It is important to state that the letters sent out were all time bound for a period of 14 days and failure to comply would necessitate party heading to court which in this case will be the Federal High Court in Nigeria to “seek redress for intellectual property theft and infringement”.
Taking out the Thorn in the Creative Sector
Does Mr Emmanuel aka Sabinus have the right to prevent third parties like Friesland Foods Wamco Nigeria Ltd (manufacturers of Peak Milk) and UAC Nigeria PLC who are the makers of Gala Sausage Roll from unauthorized use of his intellectual property if any and has any valid claim? The answer is yes if he can show that he has consistently used the phrase in dispute “Something hooge” and the image for commercial use and if his fans/consumers can link it to him as the source. In a twitter poll I carried out on 30th May 2022 asking my #IPFRIENDS if they could identify or link the phrase “something hooge” to Mr Emmanuel aka Sabinus 87% out of the 176 persons who voted said Yes while the remaining 13% voted No. (I wonder why)
Best Intellectual Property Mechanism
Creatives such as skit makers often explore copyright protection for the videos, script etc however to better enjoy the exclusivity over this creation they can explore a multi-layered intellectual property protection that accords them full backing and protection of the law to commercialize and exploit their creativity.
One of such intellectual property is Trademark which consist of phrases, logo, names that acts as a source identifier and must not be like other marks. It is also registered according to classes based on the Nice Classification system which is a requirement while applying and registering a trademark which is done at the Trademark, Patents and Design Registry, Commercial Law Department, Federal Ministry of Industry, Trade, and Investment in the class/classes of goods and service it belongs.
In this case Sabinus as seen in the acceptance letter from the trademark registry had applied to use the phrase “Something hooge” in class 36 which is for Insurance, Financial, Monetary and Real Estate Services.
Is the Application for Registration likely to be beneficial for his business?
The purpose of registering a proposed mark in the relevant class is that it must related to the core business or trade of the applicant who in this case is Mr Emmanuel Ejekwu aka Sabinus who is a creative entrepreneur in the Nigerian comedy industry and makes video skits which has no link to class 36 as opposed to class 41 which is entertainment and education services.
However, his action to register “Something hooge in class 36 is a proactive one to deter infringement of any sort and not intended to be used and cannot be attacked on grounds of non-use in line with section 31 of the Nigerian Trademark Act which protects “Defensive Mark”.
Moreover, according to Mr Mark Mordi, SAN in his book on “Commentaries and analysis on Nigeria’s Trademark Act he stated that a defensive mark is registered for the purposes of an infringement under section 5 of the Trademark Act and for the purpose of baring the registration of a similar mark under section 13(1) of the Act and can commence an action for trademark infringement against the infringer on the basis of its defensive trademark and can prevent similar marks from being registered in the same class by opposing any such application.
Now I can’t speak for Sabinus and his team if that was the reason behind registering his phrase in class 36.
Classification of goods
When embarking on a trademark registration it is important and relevant to determine how it will be used in connection with the trademark; the consumers, industry who will interact with your mark, the distinctive nature of the mark and the territory you wish to set up operation.
According to the learned silk in his book “Commentaries and Analysis on Nigeria’s Trademarks Act at page 32 the Nigerian trademark classification is in line with international practice of the Nice Classification which is used as a tool to limit an intellectual property owner from “monopolizing the use of the mark in all classes instead of the use to be restricted to a particular class/es of goods”. He further stated that in the event of a trademark opposition proceedings, the trademark registry will take into consideration the class of the applicant’s mark and compare if there are the same, related or completely different with the opponent’s mark. (But that is not the case here).
Functions of a registered trademark
The ability of your mark being different/distinctive leaves an impressive impact in the mind of the consumers who buy, use, interact and engage your product or services as it performs the following:
1. It serves as a badge or source of origin which is influenced by consumers perception
2. It guarantees quality
3. It also functions as a form of advertising or an association with a goods or service.
Importance of registering a trademark
You get the exclusive right to enjoy the use of the mark for commercial purpose with the full backing of the law on your side however in an event such as Mr Emmanuel aka Sabinus case who is still in the process of registering the mark is protected by the law of passing off that prevents an individual from misrepresenting “something hooge” as if it belongs to Mr Emmanuel aka Sabinus or that they are linked or associated with Sabinus as provided for in section 3 of the Trademark Act.
To succeed in a claim of passing of Mr Emmanuel aka Sabinus other than establish continuous use, he must prove the following:
a) That he has a reputation with “something hooge”.
b) That he was misrepresented by both Friesland Foods Wamco Nigeria Ltd (manufacturers of Peak Milk) and UAC Nigeria PLC (makers of Gala Sausage Roll) which has caused confusion amongst their consumers.
c) That his goodwill has been damaged because of their action.
You get to use the ® symbol indicating that your mark has been register and can prevent third parties from using your mark in the class that it was registered while you use ™ for an unregistered mark that you have consistently used in commerce.
END OF PART 1
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To find out more about the issues raised in this case including intellectual property, trademark registration, defensive mark, intellectual property protection for creative entrepreneurs, character merchandise, commercialization of intellectual property rights, protection of image rights and likeness, protection of a pose by an intellectual property mechanism. You can contact me by sending an email to ipseriesinfo@gmail.com.