The Women's IP World Annual 2019/2020

Being Intellectual Property Rights,
Trademarks are negative rights, as
against positive rights created by other
property rights. Therefore, where a
party to a Trademark dispute is found
not to have a right, that party cannot
prevent others from freely using the
Trademark.
EXCLUSIVE RIGHTS OF
TRADEMARKS
Trademarks are generally defined as marks
which distinguish the goods and services of
one enterprise from the other. They are assets
of value to businesses and can further be
exploited through licences. Businesses invest
significant resources in their Trademarks and
take steps to protect such Trademarks from
being infringed by competitors. Trademark
protection, like any other Intellectual
Property Right, is territorial in nature; thus,
protection in one country does not guarantee
protection in another. In this regard, it is
not surprising that businesses aware of the
value of their intellectual property develop
strategies to manage their Trademarks.
Strategic management of Trademarks include
strategies for protection, exploitation, and
enforcement of their rights.
The rights acquired by a Trademark owner
confer the right to exclude others from using
the mark on the same or similar goods and
services without the consent of the rights
owner. Despite the exclusive rights conferred
on a Trademarks owner, it does not obtain
a monopoly. As aptly stated in a plethora of
decided cases, “[I]intellectual Property Rights
are not monopolies.”
Trademark rights may be obtained through
registration or the common law right of
use. Where there is a conflict in ownership
of a Trademark between parties, municipal
laws provide the answer. Some jurisdictions
apply the first to file system as against the
GHANA
TRADEMARKS
EXCLUSIVITY:
THE HAMPTA CASE 1
As discussed by Sarah Norkor Anku, Senior Partner at
Anku.Anku At-Law - www.ankuatlaw.com
Businesses thrive on strong brands and invest significantly
in creating and sustaining brand leadership. A brandmark
is a creation of the intellect of an individual or a group of
individuals for the business. Such marks ought to be recognised
and protected, oftentimes as Trademarks. Intellectual property
rights encourage creativity by protecting owners of intellectual
property from copying and in the case of trademarks, from
Trademarks squatters, among others.
first to use common law rights. The first to
file system confers the right to the mark to
the first applicant who files an application
with the relevant statutory body. On the
other hand, the first to use system confers the
right to the first party to use the mark. Most
jurisdictions follow the first to file system with
its incidental challenges such as the menace
of Trademarks squatters.
THE HAMPTA & SONS CASE
The Ghanaian case of Hampta & Sons vrs Afua
Konadu & Anor, currently on appeal, reveals
the challenges of the first to file system as
against the first to use, and the misapplication
of certain principles of Trademarks law.
Municipal laws and common law confer the
negative rights of excluding others from using
the registered Trademark, As against positive
rights created by other property rights. In
the case of Campomar Sociedad, Limitada v.
Nike International Ltd, the Court cited Buckley
LJ in Lyle and Kinahan Ltd, where Buckley LJ,
“…pointed out that the only right conferred by
registration was a right to prevent others from
using the trademark as a mark for their goods.”
Trademarks Act, 2004 (Act 664), as amended,
governs Trademarks in Ghana. The Act confers
on a Trademark owner the right to prevent
others from using the Trademark without
authorisation of the registered owner. This is
particularised in Section 9 of the Act. Section
9 (2) is to the effect that it is only a registered
owner of a Trademark who has a right to
institute court action against any person
who infringes the registered Trademark. In
Aremu v. Lilaram Thawards , it was held that
“A person is only entitled to have absolute and
exclusive right to the use of a trademark if a
certification of registration in respect of the
trademark has been issued to him. In this case,
since no certificate had been issued in respect of
the trademark, the plaintiff’s action against the
defendants was not maintainable.”
BRIEF FACTS OF THE CASE
Both the Plaintiff, HAMPTA, and the 1st
Defendant, Konadu, trade in spices at
Kumasi, the second-largest city in Ghana.
While the HAMPTA trades in spices under
the unregistered Trademark MINAZEN, the
Konadu trades in spices under the Trademark
REMIE. In July 2018, HAMPTA, decided to
register its mark MINAZEN at the Trademarks
Office, 2nd Defendant, only to realize
that Konadu had applied to the Office to
register the mark in her name. Based on the
application for registration, Konadu solicited
the help of the Police to harass the HAMPTA
officials. All efforts to restrain her from these
acts of unfair competition failed. HAMPTA,
therefore, resorted to the High Court of
Ghana for redress. While the substantive
matter was pending, Konadu filed for an
interlocutory injunction against HAMPTA.
Subsequently, the trial judge injuncted both
parties from using the mark MINAZEN even
though Konadu had stated in her processes
that she does not trade in spices with the
mark MINAZEN. The judge stated in his
interlocutory ruling dated 26th October 2017,
on page 11, as follows:
“I do not intend to go into the merits of the
conflicting claims of the parties, the vexed
question of who owns the exclusive right to
the MINAZEN trademark will be determined
after a full trial. What is apparent is that
none of the parties has an exclusive right
to the use of the MINAZEN trademark, as
the applications of both parties are yet to
be determined by the Registrar General’s
Department. Indeed, the rights of parties
could only be determined after parties have
led evidence in support of their case, and all
the pieces of evidence have been evaluated.
It will, therefore, be prejudicial to conclude
that a party, particularly the applicant, has
a right to which ought to be protected…
In conclusion, the judge held on page 12
of his ruling that, “Both the applicant and
respondent are, however, restrained
forthwith from using the MINAZEN
trademark to package their products and
subsequently marketing, distributing and
selling the same…”
ANALYSIS AND
CHALLENGES
Enforcement of Trademarks hinges on the
municipal laws of each State. In Mattel Inc v.
3894207 Canada Inc 2006 SCC 22 [Canada],
the Supreme Court of Canada cautioned, in
the case of the enforcement of a registered
Trademark, that “[f]airness, of course, requires
consideration of the interest of the public and
other merchants and the benefits of open
competition as well as the interest of the
trademark owner in protecting its investment in
the mark. Care must be taken not to create a zone
of exclusivity and protection that overshoots
the purpose of trademark law. The purpose of a
trademark is to create and symbolize linkages”.
The Protection Against Unfair Competition
Act of Ghana, 2000 (Act 598) ensures that
intellectual property rights are not abused to
the extent of creating monopolies.
In addressing matters of trade, one cannot
lose sight of issues relating to competition as
the propensity of some players of the market
to apply unfair practices to compete unfairly.
It is for this reason, among others that the law
on Protection Against Unfair Competition
seeks to regulate fair practices in trade,
including Intellectual Property Rights.
In the case of HAMPTA & Sons, did the judge
err in law by injuncting both parties from
using the mark “MINAZEN”? Did he overshoot
the purpose of Trademarks law? Was he fair to
the merchant who had acquired a reputation
in the mark through use even though not
registered? Was his decision in the interest of
promoting trade?
As stated by Oliver Wendell Holmes Jr.:
“The prophecies of what the courts will do
in fact, and nothing more pretentious, are
what I mean by the law”… the law lies in the
bosom of the judge.
Konadu was the first to file the mark
“MINAZEN,” even though she does not use
the mark, while HAMPTA is the first to use the
mark and the later (in time) to apply to the
Trademarks Office for registration.
Konadu had emphatically stated that she
does not trade in the mark “MINAZEN.”
Therefore, it surmises that an injunction on
both parties was an injunction against HAMTA
only, which was busily trading in products
bearing the mark while overlooking the
adverse effect on the value of the brand. One
would have expected that the judge would
have considered section 9(2) of Act 664,
which is to the effect that only a registered
owner of a Trademark can initiate an action
in infringement and refused the application
of Konadu. Yet, he based his decision on a
mere application for registration, despite
citing the Aremu case supra. Again one would
have expected the Court to have frowned
on such acts of unfair competition, where a
competitor squats on another’s Trademarks
just because the user of the mark had not
registered it.
In this case, Konadu had no right in law to
initiate an injunction application against
HAMPTA to prevent it from using a mark that
it had traded in for many years, particularly,
where the judge had found that both parties
had applied for the registration of the mark
‘MINAZEN,’ but none had been issued a
certificate of registration. Surprisingly, despite
his findings, the judge concluded without
any legal basis, that both parties should be
injuncted from using the mark even though
none of the parties had the right to prevent
the other from using the mark, as provided in
section 9(1) of the Trademarks Act, 2003 (Act
664), as amended, and to institute a court
action against the other for using the mark in
the first place, as provided in section 9(2)(a)
of the Act and as decided in the Aremu case
supra.
CONCLUSION
The rights conferred on a Trademarks owner
is settled; however, the interpretation of the
term “Exclusive Rights,” has been misapplied
in some cases. There are a plethora of cases
that expatiate the meaning of the term as
negative rights, that is, a right to prevent
others from using a registered Trademark
as against positive rights of use. To avoid
occasional misapplication of some of the basic
principles of Intellectual Property Rights, it is
highly recommended that businesses take
steps to develop IPR management strategies
that include seeking appropriate legal
protection in markets of interest.
1 HAMPTA & SONS VRS AFUA KONADU (TRADING UNDER THE NAME & STYLE AS REMIE FOODS VENTURES) & THE REGISTRAR-GENERAL (Suit No. P/OCC 02/2017)
1 See Kirki AG v. Ritvik Holdings Inc 2005 SCC 65 [Canada]; DRISTAN Trademark supra; Campomar Sociedad, Limitada v. Nike International Ltd [2000] HCA 12 [Australia]
2 (see Glaxo Group Ltd v. Dowelhurst Ltd [2000] EWHC Ch 134 [UK]; DRISTA Trademark [1986] RPC 161 (SC) [India]
2
(1964) GLR 253-256
12 13