Trade Mark Registration Can Prevent Identical Company Name

• Published date: 05 April 2024
• Subject Matter: Finance and Banking, Intellectual Property, Financial Services, Trademark
• Law Firm: G.O.Sodipo & Co.
• Author: Ms Aderinsola Adeliyi

Utilising the Provisions of the Companies and Allied Matters Act for Trademark Protection: A review of Citigroup Inc and Citi Bank Nigeria Limited v. Corporate Affairs Commission, Citicorp Financial Services Ltd & Ors.¹

There are several ways in which a business can protect its trade mark in Nigeria. One way is enforcing the statutory obligation in the Companies and Allied Matters Act (CAMA). From our law firm's archives, we present Citigroup Inc and Citi Bank Nigeria Limited v Corporate Affairs Commission, Citicorp Financial Services Ltd & Ors., where our firm set a precedent on the use of CAMA to prevent a company from registering or continue to use an identical or confusingly similar name to a registered trade mark.

Facts

Citigroup is a United States financial services conglomerate with the trademark 'CITICORP' registered in over a hundred countries including Nigeria. Citigroup registered the trademark Citicorp under class 16 (printed materials and publications) of the Trade Marks Register in Nigeria in 1975. However, at that time, there was no protection for service marks in Nigeria. Citicorp is associated with Citigroup especially when used in the financial industry. In 2010, Citigroup discovered that several companies were using CITICORP as part of their names causing confusing in the market place and arguably riding on the goodwill of CITICORP. They in included Citicorp Financial Services Ltd, Citicorp Ltd, Citicorp Nigeria Ltd, Citicorp Investment and Consultancy Limited and Citicorp Motors Ltd.

Although, CitiBank had been trading in Nigeria for almost two decades in 2010, its initial company name registration was Nigerian International Bank Ltd and this did not include CITI. Arguably, the statute of limitation or the common law doctrine of laches and acquiescence would have precluded CitiBank from proceeding against these companies for trade mark infringement.

In 2011, our dispute resolution team recorded a first by relying on the provisions of the Companies and Allied Matters Act, (CAMA) 1990 (as amended), against the Registrar of Companies known as the Corporate Affairs Commission (CAC) for registering a company with an identical earlier registered trade mark CITICORP. The action was predicated on section 31(1)(d) of the 1990 CAMA, now section 852(1)(d) of the new CAMA, 2020 and section 30(4) of the old CAMA, now section 30(4) of the 2020 CAMA.

Section 30(1)(d) provides that "No company shall be registered under this Act by a name which in the...