Defences to Trade Mark Infringement Claims: Ghana, Nigeria, and the Gambia Compared by Sarah Norkor Anku
- Hetanshi Gohil
- Jul 8
- 3 min read
Defences to Trade Mark Infringement Claims: Ghana, Nigeria, and the Gambia Compared by Sarah Norkor Anku, Global Managing Partner & Co-author by Onyinyechukwu Mary Magdalene Okeyea Dotsey, Head of Nigeria Office at SN Anku IP Firm, Ghana
In The Global IP Matrix Issue 22, Sarah Norkor Anku, Global Managing Partner, and Onyinyechukwu Mary Magdalene Okeyea Dotsey, Head of the Nigeria Office at SN Anku IP Firm, explore the statutory and practical defences available in trade mark infringement cases across Ghana, Nigeria, and The Gambia. With growing interest in African IP enforcement, this comparative article offers a detailed overview of how each jurisdiction handles key defences from abandonment and lack of confusion to bad faith and prior use.
Why Trade Mark Defences Matter in Emerging Markets
Trade mark litigation is expanding across Africa, but legal precedents remain limited. As the authors note, understanding available statutory and common law defences can significantly impact the outcome of infringement disputes. Businesses, rights-holders, and investors operating in West Africa must understand these nuances to protect their brands effectively and mitigate liability risks.
Ghana: A Mix of Statute and Judicial Discretion
In Ghana, defences are drawn from the Trademarks Act of 2004 (Act 664). Key defences include:
Incomplete/Invalid Registration: The infringer may argue that the mark was not yet validly registered at the time of alleged infringement.
Abandonment: If a mark is deemed unused or abandoned, it may lose protection.
Lack of Intent: The Act allows defences based on the absence of fraudulent intent or good faith actions taken in the usual course of business.
Fraudulent Registration: A trade mark obtained in bad faith can be challenged and used as a defence.
Nigeria: A Broader Set of Codified Defences
Nigeria’s legal framework includes statutory and common law defences under Cap. T13, LFN 2004:
Unregistered Mark: Only registered marks can be enforced.
No Likelihood of Confusion: Demonstrating dissimilarity can nullify the infringement claim.
Prior Use: A party can claim rights based on prior commercial use.
Fair Use: Use of names, addresses, or accurate product descriptions may qualify.
Honest Concurrent Use: Allowed by both the registrar and the courts under specific circumstances.
Generic Mark or Bad Faith Registration: Weakens the mark’s enforceability.
Abandonment: Marks unused for 5+ years may be removed from the register.
The Gambia: Early Stage, But Evolving
Under The Gambia’s Industrial Property Act, notable defences include:
Mistake: Proven accidental infringement may lead to mitigation.
Invalid Registration: Marks not compliant with Section 27(2) may be unenforceable.
No Likelihood of Confusion: Without a risk of confusion, liability may not arise.
Abandonment: Non-use for 5 years may be raised as a defence.
First Use of Tradename: Can override later trade mark registration.
Conclusion While each country’s legal system provides trade mark protection, the application of defences differs considerably. Statutory gaps, case law uncertainty, and limited precedent leave some areas, like parody or free expression, unexplored. As trade mark jurisprudence matures across West Africa, legal clarity will increase. For now, a proactive understanding of available defences is essential for any party navigating the region’s evolving IP landscape.
Read the full article in The Global IP Matrix Issue 22 for an in-depth comparison of how three key African jurisdictions interpret and apply trade mark defences.
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