Passing Off in Nigeria: The Unregistered Mark’s Protection and the Jurisdiction Controversy

A small-batch pepper sauce producer in Port Harcourt spends four years building a loyal customer base around her brand’s distinctive green-and-white label with the handwritten-style logo. She has never registered the mark. A distributor in Warri begins selling a similar product using almost identical packaging in the same markets, trading on the reputation she has built. She has no registered trademark to sue on. Does she have any legal remedy?

The answer is yes, through the common law action for passing off, one of the oldest forms of intellectual property protection in the common law world and one that exists entirely independently of the trademark registration system. But there is a catch: before she can vindicate her rights, she must navigate one of the most genuinely unsettled procedural questions in Nigerian IP law, a conflict between two Supreme Court decisions on which court she can sue in that has never been authoritatively resolved.

This article explains the elements of passing off, the Nigerian cases that have applied them, the forms the action takes beyond simple mark imitation, and the jurisdiction controversy that has complicated passing off litigation for over two decades.

1. The Statutory Preservation of Passing Off

The Trade Marks Act Cap T13 LFN 2004, in the second limb of section 3, preserves passing off as a separate and independent cause of action alongside the statutory trademark infringement regime. Section 3 provides that: “No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”¹

The first limb denies a statutory infringement remedy for unregistered marks, as discussed in Trademark Infringement in Nigeria: How Courts Assess Confusion, Similarity and Counterfeiting. The second limb expressly saves the common law action for passing off. This is significant: the TMA acknowledges that a person can have a perfectly good passing off claim even where they have no registered trademark, and the Act does not in any way diminish or restrict that claim. The two regimes coexist and may be pleaded together where the plaintiff holds a registered mark, as is common in Nigerian trademark litigation where practitioners typically plead both infringement and passing off to ensure the widest possible basis for the claim.

Passing off is a tort. It belongs, analytically and historically, to the law of torts rather than to the statutory IP framework.² Its origins predate the trademark registration system itself. The earliest English passing off cases date to the nineteenth century, arising in an era when there was no formal trademark registry and courts protected traders’ business reputations through the law of equity and torts. In Nigeria, passing off is grounded in the common law inherited from England and applied through the decisions of Nigerian courts.

2. The Classic Trinity: Three Elements of Passing Off

The modern formulation of passing off in the common law world is the classic trinity articulated by Lord Oliver in the House of Lords in Reckitt & Colman Products Ltd v. Borden Inc (1990) 1 WLR 491, the Jif Lemon case: the plaintiff must establish reputation or goodwill, a misrepresentation by the defendant, and damage or the likelihood of damage to the plaintiff’s goodwill.³ An earlier five-element formulation by Lord Diplock in Warnink v. Townend (1979) AC 731 is also applied in Nigerian courts, requiring a misrepresentation in the course of trade to prospective customers, calculated to injure the business or goodwill of another trader, which causes actual damage.⁴ Both formulations distil to the same analytical foundation, and Nigerian courts have applied both without treating them as irreconcilably different.

The Nigerian courts’ approach to the three elements is examined in turn.

3. First Element: Reputation or Goodwill

The plaintiff must establish that they have acquired a reputation or goodwill in the mark, name, get-up, or other indicia being imitated, among the relevant consuming public in Nigeria. This is the foundation of the entire action. Without reputation, there is nothing to misrepresent and nothing to protect.

Goodwill in the passing off sense is not the same as mere personal pride in a name or mark. It is the attractive force that brings in custom, the commercial benefit of the business’s established reputation with customers.⁵ It is built through actual trading activity: sales, advertising, quality association, and the cumulative recognition that comes from sustained presence in a market. A brand that has traded actively in Nigerian markets for several years, acquired a loyal customer base, and established recognisable brand features that consumers associate with a specific source has the goodwill required for a passing off claim.

The reputation does not need to be nationwide. It is sufficient that the plaintiff has established goodwill among consumers in the specific market or geographical area in which the defendant’s activity occurs. A Lagos-based producer whose goods are distributed only in Lagos and Ogun State has sufficient local goodwill to bring a passing off action against a competitor imitating their get-up in those markets, even though consumers in Kano or Enugu may never have encountered the original brand.

The reputation must exist in Nigeria at the time of the defendant’s infringing activity. A foreign brand that is well known internationally but has never traded in Nigeria, never advertised in Nigerian media, and whose products are not available in Nigerian markets, has no Nigerian goodwill and cannot bring a passing off action in a Nigerian court for imitation of its mark in the Nigerian market. This is one of the most commercially significant distinctions between passing off and statutory trademark infringement for internationally known brands: the statutory register allows a foreign brand to block local imitation through registration without trading in Nigeria, but passing off requires actual Nigerian reputation built through actual Nigerian trading.

Patkun Industries Ltd v. Niger Shoes Manufacturing Co. Ltd (1988) NWLR (Pt. 68) 1 is the leading Nigerian authority confirming that the plaintiff in a passing off action must prove they have established goodwill and reputation in their mark or get-up in the Nigerian market. Mere registration of a company name or mark, without evidence of trading activity that has built actual consumer recognition, is not sufficient to establish the goodwill that passing off protects.⁶

4. Second Element: Misrepresentation

The defendant must have made a misrepresentation, in the course of trade, to actual or prospective customers of the plaintiff, that is likely to deceive those customers into believing that the defendant’s goods or services are those of the plaintiff, or are connected with, associated with, or endorsed by the plaintiff.⁷

Three aspects of the misrepresentation element deserve close attention.

Misrepresentation does not require dishonesty. The defendant need not have intended to pass off their goods as those of the plaintiff. An innocent adoption of a confusingly similar name or get-up, without any awareness of the plaintiff’s prior use, can still constitute passing off if its effect is to deceive consumers.⁸ The focus is on the likely effect on consumers rather than on the defendant’s mental state.

The misrepresentation must be made to consumers, not merely to the defendant’s own internal market. A manufacturer who supplies a single distributor and whose infringing mark only reaches consumers through that distributor is still making the misrepresentation at the consumer level through the act of placing infringing goods in the marketplace. The chain of distribution does not insulate the original producer from liability.

Misrepresentation encompasses more than direct imitation of marks. Beyond the obvious case of adopting a similar name or logo, passing off can arise from: imitation of the overall get-up or packaging of the plaintiff’s goods; false representations of quality connection or endorsement; false suggestions that the defendant’s goods originate from or are associated with the plaintiff’s business; and, in the extended form of the action discussed in section 6 below, false claims of endorsement by a celebrity or commercial entity.

The test for whether the misrepresentation creates confusion is, in practice, similar to the likelihood of confusion test in trademark infringement: would a consumer of the relevant goods, exercising ordinary care and with an imperfect recollection of the plaintiff’s mark or get-up, be likely to mistake the defendant’s goods for those of the plaintiff? The court applies an objective standard of the relevant consumer, neither the most credulous nor the most sophisticated.

5. Third Element: Damage

The plaintiff must establish that the defendant’s misrepresentation has caused, or is likely to cause, damage to their goodwill.⁹ Where the misrepresentation is established, damage is often inferred as the natural consequence of allowing a competitor to trade on the plaintiff’s reputation. A court does not require precise quantification of damage to the pound or the naira; it is sufficient that the plaintiff demonstrates a real likelihood that their goodwill will be harmed.

The principal forms of damage in passing off cases are: diversion of trade, where customers who would have bought from the plaintiff are diverted to the defendant because of the misrepresentation; dilution of distinctiveness, where the plaintiff’s mark or get-up becomes less distinctive because of the defendant’s similar use; and damage to reputation, where the defendant’s goods are of inferior quality and consumers who mistake them for the plaintiff’s hold the plaintiff responsible for the lower quality.

In the Nigerian market context, the damage from large-scale passing off in informal markets can be particularly acute. A manufacturer whose product is imitated by a Kano or Aba-based producer using near-identical packaging may suffer not only diverted sales but reputational harm when consumers who purchase the inferior imitation believe they are experiencing the original product. This is one reason why Nigerian courts have been willing to grant interlocutory injunctions in passing off cases without requiring full proof of actual damage: the risk of irreversible reputational harm from ongoing passing off is sufficient to justify urgent relief.

6. The Jurisdiction Controversy: Ayman v. Omnia

This is the part of Nigerian passing off law that is genuinely controversial, genuinely important, and genuinely unsettled, and it is the part that no existing student resource fully explains.

The Ayman decision. In Ayman Enterprises Ltd v. Akuma Industries Ltd (2003) 13 NWLR (Pt. 836) 22, the Supreme Court addressed, for the first time at that level, the question of which court has jurisdiction to hear a passing off claim where the mark being imitated is unregistered. The court, per Edozie JSC, held that the jurisdiction of the Federal High Court to deal with actions on passing off depends on the registration of trademarks as provided by section 3 of the Trade Marks Act. Where the trademark is unregistered, as in the Ayman case, the cause of action for passing off is in the common law of tort and can be brought in a State High Court.¹⁰ On this reasoning, the FHC only has passing off jurisdiction where the passing off claim is connected to an infringement of a registered trademark; pure common law passing off involving unregistered marks belongs in the State High Court.

The Ayman decision provoked immediate and sustained criticism from the Nigerian IP legal community. Critics argued that the court’s reasoning conflated the statutory saving provision in section 3 of the TMA, which preserves passing off as a separate remedy, with a limitation on the Federal High Court’s jurisdiction over IP matters. Section 251(1)(f) of the 1999 Constitution confers on the FHC exclusive jurisdiction in matters relating to any Federal enactment on patents, designs, trademarks, and copyright. Passing off is closely connected to the law of trademarks and the TMA, which is a Federal enactment. The argument was that the FHC’s jurisdiction should therefore encompass passing off claims regardless of whether the mark was registered.

The Omnia decision. The controversy was directly addressed by the Supreme Court in Omnia Nigeria Ltd v. Dyktrade Ltd, SC 176/2003, decided 12 July 2007. In that case, Dyktrade had registered the trademark “Super Rocket” in class 19 for grinding stones. Omnia began manufacturing and selling similar grinding stones under the same “Super Rocket” name. Dyktrade sued in the Federal High Court for both trademark infringement and passing off. The Supreme Court in the Omnia case held that the Federal High Court has jurisdiction to hear and determine cases of passing off, whether or not those cases arise from registered or unregistered trademarks.¹¹ The court reasoned that the passing off claim in the context of trademark law arises from the TMA, which is a Federal enactment, and that the FHC’s jurisdiction over matters relating to Federal enactments under section 251(1)(f) of the 1999 Constitution is not limited by whether the mark in issue is registered.

The unresolved tension. Both Ayman and Omnia are decisions of the Supreme Court of Nigeria, the apex court. Neither expressly overrules the other in clear terms. Omnia departed from Ayman’s approach without explicitly stating that Ayman was wrong or overruled. The Nigerian Law of Intellectual Property Watch analysis summarised the position succinctly: the Ayman decision was highly criticised and many legal practitioners expected a review, and as expected the Supreme Court re-examined the provisions in Omnia.¹² But the absence of a clear express overruling means that, in strict doctrine, both cases remain on the books, and a practitioner advising a client on where to file a passing off action involving an unregistered mark is navigating genuine legal uncertainty.

The prevailing practice among Nigerian IP practitioners after Omnia is to file all passing off claims, whether the mark is registered or not, in the Federal High Court.¹³ This is the safer strategic choice because the FHC has specialised IP experience, and because Omnia’s affirmation of FHC jurisdiction is the later Supreme Court decision. But a defendant who is sued in the FHC for passing off on an unregistered mark and who wishes to challenge jurisdiction can still raise Ayman as authority for the State High Court’s exclusive jurisdiction in that category of case, and the challenge would not be frivolous, because the doctrinal tension between the two decisions has not been formally resolved.

For examination purposes, students must know both decisions, understand the direction of travel from Ayman toward Omnia, and be able to articulate why the tension persists and what the practical consequence of that tension is for a litigant choosing where to file.

7. Get-Up Protection and the Packaging Problem in Nigerian Markets

One of the most practically significant forms of passing off in the Nigerian consumer goods market is the imitation of product get-up: the overall appearance of a product, including its packaging design, colour scheme, shape, label layout, and typography, rather than any specific trademark word or device.

A manufacturer who has traded under a distinctive get-up for a sufficient period to acquire reputation in that get-up can bring a passing off action against a competitor who adopts a sufficiently similar get-up, even without having registered any element of the get-up as a trademark. The producer of the Conphamol pain relief product, for example, brought a sixteen-year passing off litigation against manufacturers who adopted the same blue-and-white packaging design with similar font and layout used for Panadol, arguing that consumers would be confused into believing the competing product was the same or a related product.¹⁴

The get-up form of passing off is particularly relevant to Nigerian food, beverage, pharmaceutical, and household products markets, where informal-sector producers routinely replicate the colour schemes, layout, and visual identity of successful brands with sufficient variation to avoid exact trademark identity but with enough similarity to trade on the original’s reputation. Proving get-up passing off requires the plaintiff to demonstrate that consumers have come to associate the specific combination of packaging features with a single source, which requires substantial evidence of trading history, market recognition, and consumer familiarity with the original get-up.

8. Extended Passing Off: False Endorsement and Character Merchandising

The extended form of passing off, developed primarily in English case law and applied with growing recognition in Nigerian contexts, covers situations where the defendant’s misrepresentation does not directly imitate the plaintiff’s mark or get-up but instead falsely suggests a commercial connection, endorsement, or sponsorship that does not exist.

A Nigerian celebrity whose name and image are used without permission in an advertisement, implying that the celebrity endorses the advertiser’s product, suffers the harm that the extended form of passing off is designed to remedy: the celebrity has a reputation and goodwill in their public persona, the unauthorised use constitutes a misrepresentation that they have endorsed the product, and the damage includes both loss of the endorsement fee they should have been paid and reputational harm if the association is unwanted. The relevance to Nigerian Nollywood actors, Afrobeats artists, and prominent social media influencers is direct. The use of a musician’s name or likeness in a brand’s social media campaign without any licensing arrangement engages this extended form of the action.

Character merchandising, where the goodwill in a fictional character or persona is exploited without the rights holder’s permission, is a related application. A consumer goods producer who places an image of a popular Nollywood character on merchandise without any authorisation from the film producers who own the goodwill in that character is engaged in a form of extended passing off, in addition to any copyright infringement claim that might arise from the reproduction of the character’s image.

9. The Constitutional Dimension: Section 39 and the Reputation Right

Passing off sits at an interesting constitutional intersection that students rarely examine. The protection that passing off affords to a trader’s reputation and goodwill connects directly to section 44 of the 1999 Constitution’s protection of property. The trader’s accumulated goodwill, built through investment of time, money, and creative effort in brand-building, is a species of property deserving constitutional protection, even without any registered intellectual property right.

The extended passing off form that protects reputation against false endorsement creates a more complex constitutional picture. Section 39 of the Constitution protects freedom of expression, including commercial expression. A trader who truthfully describes their goods as comparable to another’s, or who uses a competitor’s name in honest comparative advertising, is exercising a form of commercial free expression. The boundary between truthful comparative advertising, which section 39 protects, and a false representation of endorsement or association, which passing off prohibits, is drawn at the misrepresentation element: only a false or misleading statement about commercial connection or endorsement falls within the action. Accurate, honest comparative statements do not, because they do not deceive consumers about the commercial origin or endorsement of the goods.

10. Passing Off vs Trademark Infringement: When to Plead Which

Understanding when to plead passing off, when to plead trademark infringement, and when to plead both is a core practical skill for Nigerian IP litigation.

Passing off has advantages over statutory infringement in three specific scenarios. First, where the plaintiff’s mark is unregistered, passing off is the only available action. Second, where the mark is registered but the defendant’s use is in an unrelated class of goods that falls outside the registered class, passing off may reach conduct that statutory infringement cannot, because the misrepresentation element focuses on consumer confusion about commercial connection rather than class-specific use. Third, where the defendant’s conduct involves broader deceptive practices, such as false endorsement, comparative advertising misrepresentations, or get-up imitation, that are not easily characterised as statutory trademark infringement, passing off provides the more flexible analytical framework.

Statutory infringement has advantages over passing off in three specific scenarios. First, where the mark is registered, infringement requires only proof of confusing similarity and class connection, without the need to demonstrate accumulated goodwill through trading evidence. This is considerably easier to prove in practice. Second, the seven-year incontestability benefit for Part A registrations, discussed in How to Register a Trademark in Nigeria: Parts A and B of the Register, gives statutory infringement claims a robustness against validity challenges that passing off claims, which depend on evidential proof of goodwill, do not have. Third, statutory infringement does not require proof of actual or likely damage; the statutory exclusive right is infringed by the unauthorised use itself.

The practical answer for most well-advised plaintiffs with registered marks is to plead both in the alternative, relying on infringement as the stronger primary claim and passing off as a backstop that captures any infringing conduct falling outside the precise scope of the registration.

11. Problem Question Framework

When a problem question raises a passing off issue, work through the following sequence.

Confirm that the plaintiff’s mark is unregistered, or that there is additional conduct beyond the registered mark’s class. If the mark is registered and the defendant’s use is in the registered class, statutory infringement under section 5(2) is the primary cause of action. Passing off is available in addition but secondary.

Apply the three-element analysis. First, establish goodwill: has the plaintiff traded in Nigeria under the mark or get-up, for how long, with what degree of commercial success and consumer recognition? Is the reputation localised or broader? Second, establish misrepresentation: is the defendant’s conduct in the course of trade? Does it create a false impression that their goods originate from, are connected with, or are endorsed by the plaintiff? Third, establish damage: is there diversion of trade, dilution of distinctiveness, or reputational harm, or is there a real likelihood of such harm?

Address the jurisdiction question explicitly. In any passing off problem involving an unregistered mark, identify the Ayman/Omnia tension. State that Ayman suggests State High Court jurisdiction for unregistered mark passing off, that Omnia holds the FHC has jurisdiction regardless of registration, that the tension is unresolved, and that current practice favours the FHC as the safer forum for filing.

For extended passing off, identify the specific misrepresentation. Is it a false endorsement? A false association? A false suggestion of quality connection? The misrepresentation must be specifically identified and its deceptive effect on consumers must be explained.

For get-up passing off, establish that the specific combination of packaging features has acquired distinctive reputation. Individual colours, shapes, or layout elements that are common to a trade are unlikely to attract passing off protection on their own. It is the combination of features, in its totality, that must be shown to have become distinctive of the plaintiff’s specific goods.

12. Common Student Mistakes

Treating passing off as requiring a registered trademark. Passing off is a common law action that requires no registration. The whole point of passing off is to protect unregistered marks and get-up. A student who dismisses a passing off claim because the plaintiff has no registered mark has fundamentally misunderstood the action.

Conflating the reputation element with mere use. The plaintiff must prove not just that they have used the mark but that through that use they have acquired reputation and goodwill among the relevant consuming public. Recent, limited, or geographically confined use that has not yet generated consumer recognition does not satisfy this element.

Treating the misrepresentation element as requiring dishonesty. Passing off does not require the defendant to have intended to deceive. An innocent adoption of a confusingly similar mark or get-up, without awareness of the plaintiff’s prior use, can still constitute the misrepresentation element.

Asserting that damage must be specifically quantified. The plaintiff must show actual or likely damage, but does not need to quantify it precisely. A real risk of diversion of trade or reputational harm is sufficient. Students who reject a passing off claim because the plaintiff cannot prove an exact financial loss have applied an unnecessarily strict standard.

Ignoring the jurisdiction controversy. Any examination answer on passing off involving an unregistered mark that does not engage with Ayman v. Omnia is incomplete. The jurisdiction question is one of the most examined and most genuinely contested procedural questions in Nigerian IP litigation.

Treating Omnia as having definitively overruled Ayman. This is an overstatement of the current position. Both decisions are Supreme Court authorities, the tension between them persists, and a complete answer acknowledges the uncertainty while identifying Omnia as the more recent and now more practically followed authority.

13. Quick Reference Table

14. Key Cases

Ayman Enterprises Ltd v. Akuma Industries Ltd (2003) 13 NWLR (Pt. 836) 22 is the Supreme Court decision, per Edozie JSC, holding that a passing off claim involving an unregistered trademark is a common law tort claim that belongs in the State High Court, since the Federal High Court’s jurisdiction under section 251(1)(f) of the 1999 Constitution is limited to matters relating to Federal enactments on trademark, and an unregistered trademark claim does not arise from any Federal enactment provision.

Omnia Nigeria Ltd v. Dyktrade Ltd (SC 176/2003, 12 July 2007) is the Supreme Court decision departing from Ayman and holding that the Federal High Court has jurisdiction to hear all passing off claims, whether arising from registered or unregistered trademarks. The court reasoned that passing off in the trademark context arises from the TMA, which is a Federal enactment, giving the FHC jurisdiction. The case involved the “Super Rocket” grinding stone trademark and the defendant’s adoption of the same name for competing goods. The two decisions remain unreconciled in Nigerian law and their coexistence is the central juridical controversy of Nigerian passing off jurisprudence.

Patkun Industries Ltd v. Niger Shoes Manufacturing Co. Ltd (1988) NWLR (Pt. 68) 1 established that a plaintiff in a Nigerian passing off action must produce evidence of the goodwill and reputation they have built in their mark or get-up in the Nigerian market. Bare claim of a mark without trading evidence of actual consumer recognition is not sufficient to satisfy the reputation element.

Reckitt & Colman Products Ltd v. Borden Inc (1990) 1 WLR 491 (the Jif Lemon case, England and Wales) is the leading comparative authority for the classic trinity of reputation, misrepresentation, and damage as the three elements of passing off. While not binding on Nigerian courts, it is the formulation most commonly cited by Nigerian IP practitioners and courts when articulating the elements of the action, and represents the mainstream common law position on the structure of passing off.

Footnotes

¹ Section 3, Trade Marks Act Cap T13 LFN 2004.

² Adejoke Oyewumi, Nigerian Law of Intellectual Property (University of Lagos Press, 2015) 225, describing passing off as a tort protecting the goodwill of a business from misrepresentation.

³ Reckitt & Colman Products Ltd v. Borden Inc (1990) 1 WLR 491, per Lord Oliver.

⁴ Warnink v. Townend (1979) AC 731, per Lord Diplock, cited in Nigerian passing off cases including Patkun Industries Ltd v. Niger Shoes Manufacturing Co. Ltd.

⁵ F.O. Babafemi, Intellectual Property: The Law and Practice of Copyright, Trade Marks, Patents and Industrial Designs in Nigeria (Justinian Books Limited, 2007), describing goodwill as the attractive force of a business that brings in custom.

⁶ Patkun Industries Ltd v. Niger Shoes Manufacturing Co. Ltd (1988) NWLR (Pt. 68) 1.

⁷ <cite index=”21-1″>HM Revenue and Customs Capital Gains Manual, CG68410, summarising Lord Diplock’s formulation from Warnink v. Townend on the misrepresentation element of passing off.</cite>

⁸ Oyewumi (n 2) 227, noting that innocence of the defendant is not a defence to passing off since the focus is on the effect on consumers rather than on the defendant’s intention.

⁹ <cite index=”20-1″>HM Revenue and Customs Capital Gains Manual, CG68455, confirming that the classic trinity of passing-off is reputation, misrepresentation and damage, and that provided all three are established the law of passing off will intervene.</cite>

¹⁰ <cite index=”16-1″>Nigerian Law Intellectual Property Watch, ‘A Peek into Six Passing-Off Cases in Nigeria’, quoting the Ayman decision per Edozie JSC: “It seems to me that the jurisdiction of the Federal High Court to deal with actions on passing-off depends on the registration of trademarks as provided by section 3 of the Trademarks Act… where the trademark is unregistered, as in the present case, then the cause of action for passing-off is in common law of tort and can now be brought in a State High Court.”</cite>

¹¹ <cite index=”16-1″>Ibid, summarising the Omnia Nigeria Ltd v. Dyktrade Ltd decision as holding that the Federal High Court has jurisdiction to hear and determine cases of passing off, whether or not these cases arise from registered or unregistered trademarks.</cite>

¹² <cite index=”16-1″>Ibid.</cite>

¹³ ICLG, ‘Trade Marks Laws and Regulations Report 2026: Nigeria’, confirming that following Omnia, current practice in Nigeria is to file passing off claims in the Federal High Court.

¹⁴ <cite index=”16-1″>Nigerian Law Intellectual Property Watch (n 10), describing the sixteen-year Conphamol v. Panadol packaging passing off litigation.</cite>