By Aluma, Chukwuebuka Harmony

The 43 year old Nollywood movie icon, singer, philanthropist and former model Omotola Jalade-Ekeinde MFR, broke the news on Thursday, 18th February, 2021 as she launched ‘Omotola’ as her new trademark with registration number 2018-08-26 NG/TM/O/2018/134992 under CLASS 41- Education and Entertainment Services. This brings one to an intellectual voyage as to what a Trade mark entails in the legal frontier and whether or not a person’s name could actually be registered as a trademark considering the fact that the name Omotola is generic and not distinct in anyway.

Ordinarily, a trademark can be defined as a mark used by a trader in the course of trade, to distinguish the goods on which it is applied from other goods of the same description.[1]It is a type of Intellectual Property right consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.[2] The trademark owner can be an individual, business organization or juristic personality, and such trademark maybe located on a package, label,  voucher or on the product itself.

However, Nigeria once followed the 1965 Trademarks Act[3] and the 1967 Trademarks Regulations which are outdated and lack the rules to meeting the existing needs of local and foreign trademark owners within the jurisdiction.[4] Hence the enactment of the Trade Marks Act, Cap T 13, Laws of the Federation of Nigeria 2004 (TMA) and the Trademark Regulations 1990, which brought a new wave and ushered in a new hope for Nigeria Trademark, copyright and patent law.

Section 67 defines a trademark as: A mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or as a registered user to use the mark whether with or without any indication of the identity of that person.[5]

To qualify for a trade Mark in Nigeria, a trade mark must contain or consist of at least one of the following particulars:[6]

The name of a company, individual or firm represented in a special or particular manner;

The signature of the applicant for registration or his predecessor in business

An invented word or words

A word or words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname

Any other distinctive mark[7]

Must be capable of distinguishing goods in relation to which it is registered or proposed to be registered[8]

Certain Trademarks can be rejected and not registered under the Trademarks Act of Nigeria for public policy considerations, consumer protection reasons and to safeguard the interest of businesses. Examples of such marks are marks that are deceptive and scandalous, marks that falsely imply official patronage, marks that seek to appropriate commonly known or generic designation and marks that are capable of causing confusion among consumers[9].

According to Terry Lane, it is not illegal for the U.S. Patent and Trademark Office to register a person’s name as part of a trademark, but it only grants this level of protection to names that are widely used in commerce or are unique.[10] In most cases, a person can’t trademark his name, but other protections can help business owners protect the use of their names if it is used in association with business.

For a person’s name to be used as a Trademark, distinctiveness must be visibly seen because a mark should seem to differentiate ones goods from that of other substitute. This is why the USPTO warns applicants that it is unlikely to register surnames or an individual’s name or likeliness for trademark protection unless certain conditions are met. The individual must likely file a statement of consent for the trademark, unless in the case of a coined name. He must prove that the name has a secondary meaning by being part of a unique brand that is used in marketing and commerce and is widely recognized. In some cases, a name can be trademarked when it is one of a kind, but it requires substantial evidence to prove this.[11]

on whether or not Mrs. Omotola Jalade-Ekeinde can successfully have OMOTOLA as her trademark has fanned an inferno among legal theorists. Reacting to this legal issue, an international entertainment Lawyer, Akinyemi Ayinoluwa, stated that the name Omotola is too generic and not distinct in any way.[12] According to him, the name is not a generic name and cant be reserved only for one person. She (Omotola Jalade-Ekeinde) needs to add her surname such as Mohammed Ali, Mike Tyson, Michael Jackson, Bob Marley etc, for one of the conditions you must fulfill when seeking a Trademark is that the mark and name sought to be protected must be distinct and distinguishable from many other names and marks. Hence, there is nothing distinct about a common name like Omotola.

According to US- Small Business Administration, Entrepreneurs can use their personal name as part of a business name that can be registered with either the State or Local Government, a registered business name such as ‘Jane Doe Consulting”, can help secure the business owners right to a trademark and demonstrates commercial use of the name when applying for a trademark protection. In this case, it is legally considered as a fictitious name, according to SBA. This still goes down to the view of Barr. Akinyemi Ayinoluwa who opinionated that Omotola’s surname be added to make it distinct from other Omotola bearers.

Some other scholars argued in favour of Omotola’s decision of making her first name her brand name on the notion that she have been using the name for decades now, hence, has become famous with the name Omotola. While others argued that since the gist of a Trademark is the taking of a name, label, symbol etc to the exclusion of every other person, what becomes the fate of other bearers of the name Omotola, who might want to adopt same as their Trademark? This Omotola Jalade-Ekeinde answered on her Instagram handle, “hey namesake, you can bear with pride and enjoy our special name, however, you can’t have a business in Entertainment with the Name Omotola…”[13]

The legal puzzle as to whether a name can be used as a Trademark was deciphered by the U.S Federal Trademark Law, January 2, 2021,  when it provided that a mark that is primarily merely a name cannot be protected without proof that it has acquired distinctiveness. Generally, the law provides for five factors that will be considered to determine if acquired distinctiveness must be shown:

Whether the name is rare

Whether the term is the surname of anyone connected with the applicant

Whether the term has any recognized meaning other than as surname

Whather it has the look and feel of a surname

Whether the stylization of letters is distinctive enough to create a separate commercial impression.

In conglomeration, if the name is considered primarily a surname then acquired distinctiveness must be proved. If the name is a personal name you may use it as a trademark, as long as other users do not beat you to the punch, meaning that the proposed personal name would not cause a likelihood of confusion with a similar name already registered. Note also that the United State Federal Trade Law affords protection for a celebrity’s name even if the celebrity is selling only himself his personality and not goods.

Hence Mrs. Omotola Jalade-Ekeinde trademark ‘Omotola’ has acquired the status of distinctiveness because of her long years of use within the entertainment industry which has bought her popularity in terms of name use. Therefore, she acted within the legal confines by registering her personal name as a Trademark.

Aluma, Chukwuebuka Harmony, 08130391994 (chukwuebukaaluma11@gmail.com) FACULTY OF LAW EBONYI STATE UNIVERSITY ABAKALIKI

[1] M.C. Okani, Nigerian Law of Property (Enugu: Fourth Dimension Publishers, 2000) p.333

[2] https://en.m.wikipedia.org/wiki/Trademark accessed on February 27, 2021 by 12:01aM

[3] No. 29 of 1965

[4] I.M. Alves, “Nigeria: Pending Trademark Regulations in Nigeria” Inveta International. 08 July, 2020

[5] Section 2 of the Trade Marks Act, 1914.

[6] Section 2 T.M.A., 1965.

[7] Section 9(1) of the T.M.A. 1965 and Section 10 of the T.M.A, 1914

[8] Section 10(1) of T.M.A. 1965

[9] F. O. Dawodu, “Registration of Trademarks in Nigeria”.

[10] https://smallbusiness.chron.com/legal-trademark-persons-name-61523.html accessed on Saturday, 27th February, 2021 by 12:59am

[11] ibid

[12] J. Augoye, “Actress Omotola Jalade-Ekeinde trademarks first name”, Premium Times, Thursday, February 18, 2021.

 

[13] O. Odogwu and G. Odah, “OMOTOLA”- A Registered Brand?”