Court Fines Facebook N10m For Unlawful Trademark Interference
A Federal High Court, Lagos, has ordered Facebook Inc and Facebook Ireland Limited to pay the sum of N10 million to a Nigerian firm, Double Paws Enterprise, as damages for unlawfully interfering with the use of the firm’s trademark.
Justice Ayokunle Faji, who presided over the court in a judgment delivered on Friday, also granted an order of perpetual injunction restraining Facebook from interfering with the plaintiff’s statutory rights under the trademark Act.
The Nigerian company, Double Paws Enterprise, had sometimes in July, 2017, instituted the suit marked FHC/L/CS/1164/2017, against Facebook Inc and Facebook Ireland through its counsel, Gideon Okebu of GM George-Taylor & Co.
In the suit, the plaintiff had prayed the court to determine the following: whether having regard to the unchallenged registration of Pawsbook. Com & Device as a class 41 trademark, under Trademark Act Cap T13 LFN, it has right to use the trademark in doing business.
Whether the defendants being international companies that are proprietors of a trademark, Facebook, registered under the laws of Nigeria, under Trademark Act Cap T13 LFN can seek to render nugatory and abrogate another registered trademark, registered under Nigerian law, through self help and without recourse and in complete disdain for the provisions of Section 6 and 36 (1) CFRN 1999 (as amended) and Section 20, 21, 39, and 54 of the Trademark Act.
Whether Facebook are lawfully entitled to harass, intimidate or coerce the plaintiff and his business name, to abandon his registered trademark, having regard to the provisions of Section 49 of the Trademark Act among others.
The Plaintiff also prayed the court for an order of perpetual injunction restraining Facebook, its agents, privies, assigns, successors in title and legal representatives from taking further unlawful steps to harass, intimidate or interfere with his right to use the registered trademark; Pawsbook. Com & Device.
The Plaintiff demanded for the sum of $10million as general damages and another $1 Million for exemplary damages.
In the plaintiff’s statement of fact, the firm averred that it opened a Facebook account for its business sometime in April 2012 and had been using same for publicity, marketing and reaching out to his clients all around the world and had an unblemished relationship with the defendants until sometime in 2014 when applied for the registration of his Pawsbook trademark, which the defendants felt was an infringement of their own ‘Facebook’ trademark.
He further averred that Facebook through its solicitors wrote him severally, informing him that they would block its business accounts and all integration offered to him if he didn’t stop using or change his trademark name.
Knowing that the removal and/or blockage of the Plaintiff’s Facebook integration would affect the plaintiff’s business, the defendant blocked the plaintiff’s business accounts on the facebook platform until he agreed to change the name of his registered trademark or stopped using it entirely.
On the other hand, Facebook was defended by the duo of White and Case, an international law firm and Jackson Etti & Edu, a leading intellectual property law firm in Nigeria.
In Defence to the Suit, the defendants alleged that the plaintiff’s account was blocked as a result of several contractual breaches, which contravened the Statement of Rights and Responsibility (SRR) entered by the parties at the time of opening the Facebook Accounts.
The defendants further alleged that the court had no Jurisdiction by virtue of a Jurisdiction clause in the SRR, which stipulated that the venue of resolving disputes would be the district Court of California. The defendants also argued that the Trademark certificate given to the defendant was invalid.
But the plaintiff’s counsel, Gideon Okebu, urged the court to jettison the defence of Facebook, as an afterthought. Okebu referred the court to several documents which emanated from Facebook prior to litigation, which clearly showed that the reason for blocking the plaintiff’s business integration was not for any contractual breach but as a means of coercing the plaintiff to abandon his registered trademark. He further urged the court to discountenance the submission that the court lacked jurisdiction, while emphasizing that the plaintiff’s cause of action did not stem from contract but from a trademark dispute. He referred to authorities affirming the position of the law that Jurisdiction is conferred by the claims of a Plaintiff.
The court in its Judgment, after considering the facts, the documents and the arguments of both counsel, granted some of the reliefs of the plaintiff which include an Order of perpetual injunction and an award of N10 million as general damages.
Reacting to the judgment, the plaintiff counsel, Okebu expressed gratitude to God for the Judiciary, which he described as the hope of the common man.
When asked about how the Journey leading up to Judgment felt, he said: “the Horse is prepared for the day of battle, but safety and victory are of the Lord. I am grateful to God for giving me the strategy and wits needed to pull this off.
“My adversaries were A-list firms, reputed globally and nationally for excellence. It is pertinent that I state the nature and competence of the opposition I faced in this case, because to undermine the opposition is to under estimate the value of the Victory earned”.