Analysis of criminal jurisdiction of a State High Court to try Offences under Merchandise Marks Act

Ogunsakin Mustapha
26 Min Read
Akeem O. Aponmade

By Akeem Aponmade 

Introduction

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It is a well known fact that there is no provision in all the 69 sections of the Nigerian Trade Mark Act Cap T13 LFN 2004 which criminalizes infringement of trade mark. Lawyers and brand owners interested in enforcing Trade Marks have had to rely on a cocktail of laws and liaise with a myriad of Nigerian law enforcement agencies, depending on the type of products involved. Nevertheless, the Nigerian legislature, in its wisdom, made provisions for infringement of a Trade Mark to constitute an offence. This they did by enacting the Merchandise Marks Cap M10LFN 2004.

This piece of legislation contains 18 sections. Its section 3 (1) and (2) provides as follows:

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“(I) Every person who-

(a) forges any trade mark; or

(b) falsely applies to goods any trade mark or any marks so nearly resembling a trade mark as to be calculated to deceive; or

(c) makes, disposes of, or has in his possession any die, block, machine or other instrument for the purpose of forging, or of being used for forging, a trade mark; or

(d) applies any false trade description to goods; or

(e) causes any of the things above in this section mentioned to be done, shall, subject to the provisions of this Act and unless he proves that he acted without intent to defraud, be guilty of an offence.

Selling goods to which false trade marks or descriptions applied

(2) Every person who sells, or exposes for, or has in his possession for, sale, or any purpose of trade or manufacture, any goods or things to which any forged trade mark or false trade description is applied, or to which any trade mark or mark so nearly resembling a trade mark as to be calculated to deceive is falsely applied, as the case may be, shall, unless he proves either-

(a) that, having taken all reasonable precautions against committing an offence against this Act, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trade mark, mark or trade description, and that, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons from whom he obtained such goods or things; or

(b) that otherwise he had acted innocently, be guilty of an offence against this Act.”

Subsection 3 of the statute’s section 3 further states thus:

“Every person who is guilty of an offence against this Act shall be liable-[L.N. 47 of 1955.]

(a) on conviction before a High Court to imprisonment for a term of two years, or to a fine, or to both;

(b) on summary conviction before a magistrate court to imprisonment for a term of six months or to a fine of one hundred naira;

(c) in any case, to forfeit every chattel, article, instrument or thing by means of or in relation to which the offence has been committed.”

The implication of the above provision is that a State High Court and even a Magistrate Court can exercise criminal jurisdiction on matters relating to infringement of Trade Mark. Ordinarily, for lawyers and those familiar with constitutional jurisprudence, this should raise a question mark, in view of the fact that Trade Mark is a matter under the exclusive jurisdiction of the Federal High Court.

This paper is written with the aim of addressing the question whether a State High Court can exercise criminal jurisdiction in a case of infringe of Trade Mark, even though Trade Mark is a subject within the exclusive competence of the National Assembly.

Importance of Jurisdiction

It is our humble view that any study carried out on the jurisdiction of any court of law is not only worthwhile but a great service to the Nigerian legal system. This is so because there is a long list of authorities that have established the fundamental position of jurisdiction as the live wire of any case in court. In GWABRO v. GWABRO (1998) 4 NWLR (Pt. 544) 60, the court held that jurisdiction is fundamental to adjudication. In ULEGEDE v. MILITARY ADMINISTRATOR OF BENUE STATE (1996) 6 NWLR (Pt. 457) 693, the court described the issue of jurisdiction as a threshold matter. The courts have also maintained that any proceedings of the court conducted in the absence of jurisdiction, however well conducted the proceedings might otherwise be, would amount to a nullity and an utter waste of valuable judicial time. See STATE v. ONAGORUWA (1992) 2 NWLR (Pt. 221) 33.

Akeem O. Aponmade

Indeed, in ADENIYI v. TROJAN (1992) 4 NWLR (Pt. 235) 322, it was held that jurisdiction is granted either by:

a) the Constitution or;

b) the enabling statutes setting up the courts or;

c) other existing statutes which contain random provisions on the jurisdiction or lack of jurisdiction of certain courts.

Vesting of Criminal Jurisdiction on Trade Mark: Federal High Court v. State High Court

It is acknowledged that Trade Mark is a subject matter under the Exclusive Legislative List in the Second Schedule of the Constitution of the Federal Republic of Nigeria 1999 (“the Constitution”) as amended on which only the National Assembly can legislate. It is also recognised that a State High Court, though constitutionally provided for, is a court established by a law enacted by the House of Assembly. The author is also aware that the Constitution of the Federal Republic of Nigeria 1999 as amended enabled the establishment, by an Act of the National Assembly, of the Federal High Court, which in addition to the very establishment Act, vests jurisdiction in that court.

It is expected that without digging a little deeper, a person may be tempted to rush to a conclusion that the Federal High Court has exclusive jurisdiction on matters relating to Trade Mark and that a State High Court will be encroaching on that exclusive jurisdiction of the Federal High Court if it adjudicates on charges brought under section 3(1) and/or(2) of the Merchandise Marks Act. My humble submission is that nothing could be farther from the truth.

Does the Federal High Court have exclusive criminal jurisdiction on items in Section 251 of the Constitution.?

Right from the university to the Law School, lawyers have had drilled into our subconscious, the distinct importance of Section 251 (then Section 230 of the 1979 Constitution). The understanding many have had to date is that the Federal High Court

has exclusive jurisdiction on all the items listed in that section, without any qualification. Please note the italicized words: jurisdiction and qualification. The author

wishes to make the reader quickly fetch his copy of the Nigerian Constitution and to check, as a lawyer would do, what jurisdiction section 251 is talking about,  civil or criminal; and is the vesting of exclusive jurisdiction on the Federal High Court by that provision qualified in any way by the same provision or elsewhere in the Constitution?

Even though this study applies mutatis mutandi to other items under section 251(1) of the Constitution, please permit me to limit my presentation to the subject matter of Trade Mark and cite just the provisions of Section 251(1)(s), 251(3) and 251(4) of the Constitution of the Federal Republic of Nigeria 1999 as amended, in support of my argument. Section 251(1)(s) provides thus:

“(1) Notwithstanding anything to the contrary contained in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil causes and matters –

(s) such other jurisdiction civil or criminal and whether to the exclusion of any other court or not as may be conferred upon it by an Act of the National Assembly: Provided that nothing in the provisions of paragraphs (p), (q) and (r) of this subsection shall prevent a person from seeking redress against the Federal Government or any of its agencies in an action for damages, injunction or specific performance where the action is based on any enactment, law or equity.”

We wish to humbly submit that the above provision is to be read along with Section 251(3) and (4). Sections 251(2) and 251(3), respectively provide thus:

“2) The Federal High Court shall have and exercise jurisdiction and powers in respect of treason, treasonable felony and allied offences.

 

(3) The Federal High Court shall also have and exercise jurisdiction and powers in respect of criminal causes and matters in respect of which jurisdiction is conferred by subsection (1) of this section.”

If a literal interpretation of these provisions is adopted, as they are without any ambiguity, it is only with respect to civil matters that the Federal High Court has an exclusive jurisdiction over any of the matters listed in 251(1), including Trade Mark. The ejusdem rule of interpretation of statutes further strengthens our position and goes on to show that, in respect of criminal matters, the Federal High Court has exclusive jurisdiction in only 3 (three) matters: treason, treasonable felony and allied offences. Accordingly, as a preliminary step, an exercise of jurisdiction by any court other than the Federal High Court in a criminal matter relating to Trade Mark is not an encroachment of the exclusive jurisdiction of the Federal High Court by that other court.

Even then, a court can only exercise jurisdiction if it is so vested. The locus classicus case of MADUKOLU v. NKEDILIM  (1962) LPELR-24023(SC)  has established that. While it may be argued that neither the Constitution nor the High Court Law of any state has vested a State High Court with jurisdiction over trademark in criminal matters, ADENIJI v. TROJAN, supra gave a third option: a statute which vests in a state High Court jurisdiction to try offences relating to Trade Mark.  Section 3(3)(a) of the Merchandise Marks Act provides as follows:

“(3) Every person who is guilty of an offence against this Act shall be liable-

(a) on conviction before a High Court to imprisonment for a term of two years, or to a fine, or to both”.

It therefore goes beyond any doubt that by the provisions of section 3(a), the Merchandise Marks Act had vested a State High Court with the jurisdiction to entertain criminal charges relating to infringement of Trade Mark.

If a further question is asked whether or not the National Assembly can make a law vesting jurisdiction in a State High Court to entertain a matter within the Exclusive Legislative List, my humble answer is, first, there is no constitutional provision barring the National Assembly from granting jurisdiction to a High Court of a state to entertain a criminal matter relating to a subject matter listed in the Exclusive Legislative List. Second, by denying the Federal High Court exclusive jurisdiction in criminal matters with respect to the subject matters listed in the Exclusive Legislative List save treason, treasonable felony and allied offences in Sections 251(2)(3) and (4), the Constitution, conversely and impliedly, grants the National Assembly the power to confer jurisdiction on the State High Court to share jurisdiction with the Federal High Court in criminal matters relating to the other subject matters in the Exclusive Legislative List not so expressly forbidden them.

In the exercise of its powers under Section 4 and the Second Schedule of the Constitution, the National Assembly enacted the Merchandise Marks Act and created offences with respect to infringement of Trade Mark therein. The Nigerian legislature, in its wisdom, provided that the court to try offences under the Act shall include the High Court of a state. It is humbly contended that the National Assembly has rightfully exercised this power when it conferred jurisdiction on the High Court of a state on criminal trials of Trade Mark infringement and it is further respectfully submitted that the National Assembly did not act ultra vires.

May I point out, at this juncture, that the Merchandise Marks Act is not the only federal legislation that confers criminal  jurisdiction on a court other than the Federal High Court, with respect to items which come under section 251(1) of the Constitution.

I will give just two instances where the National Assembly created offences under subject matters in the Exclusive Legislative List and vests jurisdiction to try such offences in a court other then the Federal High Court.  The Firearms Act Cap F28 LFN 2004 in section 28(5) provides thus:

“) Every magistrate shall, without prejudice to any enactment relating to the jurisdiction of any other court of law, have and exercise jurisdiction for the summary trial of any person charged with an offence under the provisions of subsection (1)(a), (b) or (c) of this section and may impose the penalties prescribed herein notwithstanding anything to the contrary contained in any other enactment.”

For clarity purposes, arms, ammunition and explosives is the third item in the Exclusive Legislative List. In fact, the Court of Appeal had an opportunity to answer the question if a State High Court had jurisdiction to try offences under the Firearms Act in the case of MOMODU V. STATE (2007) LPELR-8380(CA). In that matter, the respected jurist, Ogunwumiju, JCA (as he then was) took time to expound on the jurisdiction of state high courts to try offences that fall under items in the Exclusive Legislative List.  At pages 14-22, his lordship pronounced as follows:

“There is no gainsaying that the Firearms Act is an existing law of the National Assembly and S.28(3), (4) and (5) thereof confers jurisdiction on the State High Court and even a Magistrate Court to try criminal offences under the Act summarily…

Section 251(1) of the 1999 Constitution states as follows: “Notwithstanding anything to the contrary in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any Court in civil causes and matters – (L) “arms, ammunition and explosives.” On the other hand, Section 251(3) provides thus – “The Federal High Court shall also have and exercise jurisdiction and powers in respect of Criminal causes and matters in respect of which jurisdiction is conferred by subsection (1) of this Section.” (Underlining supplied by me). While S.251(1) talks about the exercise of exclusive jurisdiction in civil matters and causes in relation to the matters listed a – s S.251(2) and S.251(3) talk about having and exercising jurisdiction simplicita in cases of treason, etc and criminal causes in which the Court has jurisdiction under S.251(1). The framers of the Constitution did not put shall exercise exclusive jurisdiction in subsections (2) and (3) of S.251 of the 1999 Constitution. We cannot import what was not included. See CGG NIG. V. OGU (2005) 8 NWLR Pt. 927 Pg. 366…

It is clear from the above, that the jurisdiction conferred on the Federal High Court in respect of criminal causes and matters include only original jurisdiction in respect of such offences. Thus the provisions of the Constitution and the Federal High Court Act are quite clear and to the effect that under S.251(1) the Federal High Court has exclusive jurisdiction in civil matters, while under S.251 (2) & (3) the Federal High Court has concurrent jurisdiction with other Courts including State Courts in relation to criminal matters in respect of items under S.251(1) of the 1999 Constitution.”

Our second example is the Customs & Excise Management Act Cap C45 LFN 2004. Unarguably, Customs & Excise is on the Exclusive Legislative List. Section 178(1) provides as follows:

“Every offence committed under the customs and excise laws may be inquired into or tried -in any court having jurisdiction in the place where the person charged with the offence resides or is found; or in any court having jurisdiction in that part of Nigeria where the offence was committed, and every such court shall be deemed to have jurisdiction to try the offence accordingly.”

In its section 181(2), the statute states thus:

“Notwithstanding anything in any enactment, every magistrate in any part of Nigeria shall have jurisdiction for the summary trial of any offence under the customs and excise laws, and may impose any fine or term of imprisonment provided by the customs and excise laws for that offence.”

In the above two examples, Magistrate Courts are vested with jurisdiction to entertain criminal matters relating to subject matters listed in the Second Schedule, thereby sharing in the criminal jurisdiction of the Federal High Court in such matters. Even though Magistrate Courts are established under the laws of various states, the fact that their jurisdiction to try offences under section 251(1) of the Constitution was donated to these courts by the National Assembly in an Act it validly enacted, makes the exercise of such jurisdiction by the Magistrate Courts proper and valid.

My lord, it is legitimate to wonder, as some may do, why a national parliament will confer jurisdiction on a court established by a law made by a sub-national legislature in a federal system. However, it is imperative to appreciate the fact that federalism is operated differently from one federation to another. America, Russia, India and Nigeria are a few examples of countries where federalism is practised but no one conversant with them will wager a bet that they are all alike when it comes to the how of the interface between the Federal and state governments.

ln the Nigerian federal system, it is unavoidable for interactions to exist among the tiers of government. The reality is that there is no water-tight, neat compartmentalisation of the tiers of government in Nigeria in the legislative functions of the National Assembly. The apex court itself has come to the appreciation of this important fact. In the case of SHEMA vs. THE FEDERAL REPUBLIC OF NIGERIA (2018) 9 NWLR (Pt. 1624) 337 at 398, the Supreme Court, in resolving an issue about the powers of the National Assembly to make laws that empower a federal institution (EFCC) to investigate officials of state governments on how they (mis)managed states’ public funds, while upholding the validity of such laws described Nigeria’s federal system thus: ‘in the co-operative federalism practiced in Nigeria, the EFCC is a common agency empowered to investigate and prosecute offenders for both federal and state economic and financial crimes…”

By inserting Section 251(2), (3) & (4) in the Constitution and by employing the language it did in Section 251(1)(s) the drafters of our Constitution have evinced a clear intention that, unlike in civil matters, with respect to the subject matters which the National Assembly would have competence to make laws, some other courts would share jurisdiction with the Federal High Court on criminal matters except in respect of treason, treasonable felony and allied offences.

Conclusion

The author’s position is that a State High Court’s jurisdiction to try offences relating to infringement of Trade Mark under the Merchandise Marks Act was donated to it by the National Assembly in the lawful exercise of its powers. He opined that there is no law which prohibits the National Assembly from so doing and that the Merchandise Marks Act is not the first federal statute where a non-federal court will be so empowered. The law is trite that to determine whether or not a court has jurisdiction to hear a civil matter, it is the Plaintiff’s Statement of Claim that the Court will consider.

In MATTARADONA v. AHU (1995) 8 NWLR (Pt. 412) 265, it was held that in criminal matters, it is the charge before the court that determines the jurisdiction of the court to entertain the matter. Accordingly, if the offences in the charge are created under the Merchandise Marks Act Cap M10 LFN 2004, then a state High Court will be properly seised to try the matter.

Akeem is the Principal of A. O. Aponmade & Co., a Lagos, Nigeria based law firm. He was the Coordinator of the Nigerian office of the global record industry association , IFPI and once the Co-Chair, Africa Global Advisory Council of the International Trademark Association (INTA).

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