Passing off is a tort that protects the goodwill and reputation of a business against misrepresentation. It occurs when one person presents goods or services as those of another, thereby deceiving the public and damaging the original trader’s commercial standing. In Nigeria, the action is rooted in both common law principles and statutory recognition under the Trade Marks Act. Section 3 of the Trade Marks Act provides that while no action lies for infringement of an unregistered trade mark, nothing in the Act affects the right to sue for passing off goods as those of another person or the remedies available thereof.
The classic elements that a plaintiff must establish are goodwill or reputation attached to the goods or services; a misrepresentation by the defendant that is likely to deceive or confuse the public; and resulting damage (or a likelihood of damage) to the plaintiff’s goodwill. These requirements have been consistently applied by Nigerian courts. In Virgin Enterprises Ltd v. Richday Beverages Nigeria Ltd (2009) 12 NWLR (Pt. 1151) 136, the Court of Appeal described an action for passing off as one for deceit arising from a colourable imitation of a mark that has acquired a distinctive reputation in the market.
Jurisdiction has historically been a point of contention. In Patkun Industries Ltd v. Niger Shoes Manufacturing Co. Ltd (1988) 5 NWLR (Pt. 93) 138, the Supreme Court held that the Federal High Court has jurisdiction over claims for trademark infringement and related passing-off actions, whether the mark is registered or unregistered, when the claim arises from an enactment relating to trade marks. Later, in Ayman Enterprises Ltd v. Akuma Industries Ltd (2003) 13 NWLR (Pt. 836) 22, the Court appeared to restrict Federal High Court jurisdiction in pure common-law passing-off claims involving unregistered marks to the State High Courts. This uncertainty was largely resolved in Omnia Nigeria Ltd v. Dyktrade Ltd (2007) 15 NWLR (Pt. 1058) 576, where the Supreme Court affirmed that the Federal High Court has jurisdiction to hear and determine claims for passing off whether the claim arises from a registered or an unregistered trade mark.
Section 251(1)(f) of the Constitution of the Federal Republic of Nigeria 1999 (as amended) now confers exclusive jurisdiction on the Federal High Court in civil causes and matters arising from any federal enactment relating to copyright, patents, designs, trade marks and passing off. Recent decisions, including the Supreme Court’s ruling in Dike Geo Motors Ltd & Anor v. Allied Signal Inc. & Anor (2024) 10 NWLR (Pt. 1946) 201, reaffirm that registration of a trade mark is not an absolute defence to a passing-off claim. The essence of the tort remains the prevention of one trader selling goods as those of another; a registered mark cannot be used to deceive the public.
Remedies available include injunctions (interlocutory and perpetual), damages, an account of profits, and orders for delivery up or destruction of the offending goods. Courts emphasise the need for clear evidence of reputation, likelihood of confusion, and actual or probable damage. Passing off therefore continues to serve as a vital safeguard for both registered and unregistered marks in Nigeria’s commercial landscape, ensuring that goodwill built through honest trading is not appropriated by others.
By Samuel C. Olenyi
Senior Associate
A.O Ayeni & Associates