The Registry, a Commercial Law Department of the Federal Ministry of Industry, Trade and Investment, equally adjourned for ruling, if the parties in the dispute failed to reach an agreement of settlement.
Shefiu Adamu, the Registrar of the department, made the pronouncement at the resumed hearing of a petition filed by Ejiro, seeking revocation of a purported registration of ‘Domitilla and Device’ by Njemanze.
The petitioner is also seeking the expunging of the ‘Domitilla and Device’ entry from the Register of Trade Marks.
Domitilla is the title of a movie produced in 1996 by Zeb Ejiro, which starred Njemanze as the lead character.
The movie which also featured other veteran actresses such as Sandra Achums, Kate Henshaw and the late Ada Ameh, portrays the life of a young woman struggling to make ends meet as a Lagos prostitute.
A sequel, Domitilla 2, was also produced and released in 1999 by Ejiro, while a remake was released in 2023.
Years after the release of Domitilla 1 and 2, Njemanze reportedly trademarked the name ‘Domitilla and Device’ on September 16, 2020.
Ejiro, through his team of lawyers, led by Rockson Igelige, approached the registry to challenge the purported registration of the brand ‘Domitila and Device’ by Njemanze.
Igelige told the registry that the said trademark had been in use since 1996 by Ejiro in connection with films and matters which fell under class 41 of the Register of Trademarks in Nigeria.
Igelige said that both in 1996 and 1999, the petitioner employed and paid the applicant to act in his films Domitilla and Domitilla 2 adding that the applicant knew of the petitioner’s prior and continuous use of the name since 1996.
“The petitioner owns the statutorily protected copyright of the film scripts of Domitilla and Domitilla 2, which were handed to the applicant in the course of her engagement as an actress in 1996 and 1999 respectively.
“Since the respective release of the films in 1996 and 1999, the films have continuously been in the market, first in video cassettes, later in compact discs and now majorly as internet downloads all under the proprietary name of the petitioner.
“The applicant has no goodwill and reputation in the word, Domitilla, separate from her role in the films Domitilla and Domitilla 2, which are intellectual properties of the petitioner.
“The petitioner has continuously used Domitilla as a created film character and as the title of his films, Domitilla and Domitilla 2 since 1996 till date, thereby building strong goodwill and widespread reputation in the word.
“Domitilla in respect of the class of goods and services the applicant alleged to have applied for registration and or purport to have registered Domitilla & Device as a trade mark.
“The applicant’s alleged application for registration and or the purported registration of Domitilla & Device offends section 11 of the Trade Marks Act,” he said.
Igelige further said that the use of the trademark by Njemanze was likely to deceive or cause confusion and might bring a serious challenge to the petitioner to protect the name in the court of law.
He, therefore, urged the registry to cancel, revoke and expunge the purported registration of ‘Domitilla and Device’ from the Register of Trade Marks.
Marvin Ibem, the lawyer to Njemanze, told the registry that his client had filed a 98-paragraph reply against the petition to justify the registration.
He said that the petition lacked merit and urged the registry to trash it out in its entirety.
“I adopt our responses to the petition dated April 20, we urge the registry to dismiss the petition, the trademark has no jurisdiction to cancel the registration.
“The applicant has satisfied all requirements of the law to acquire the trademark,” Ibem stressed.
