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
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,
- 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
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