In Nov 2015 a British private limited company registered the words YORUBA and Yoruba as UK trade marks for a wide range of goods and services. Nobody seems to have objected to the registration at the time. On 23 May 2021, another UK incorporated company called The Culture Tree protested vociferously. Many others around the world joined in. It appears that the registered proprietor has agreed to assign the registrations to The Culture Tree which has removed one objection. But should it have been possible to register the name of a nation of 70 million at all? What should be done to prevent issues of this kind in future?

1. The UK YORUBA Trade
Mark Registration
Jane Lambert
Barrister

2. The Registrations
In November 2015 an English private limited company formerly called Timbuktu
Ltd registered the following trade marks:
● UK3136476: YORUBA and Yoruba for clothing, footwear, headgear, belts in
class 25
● UK3138448: YORUBA and Yoruba for a much wider range of goods and
services in classes 9, 14, 18, 21, 28, 35, 41
According to information supplied to the UK registrar of companies, Timbuktu Ltd
carried on business as a wholesaler of clothing and footwear, a retailer of clothing
in specialised stores and a mail order and internet retailer. On 27 May 2021
Timbuktu Ltd. changed its name to Kesmere Ltd.

3. The Twitter Protest
23 May 2021
CultureTree
@Culturetreetv
Did you know that @TimbuktuGlobal a retail company owned by two WHITE-BRITISH
people from Lancashire who have no affiliation with Yoruba language or tribe have
trademarked the word ‘YORUBA’ and are opposing anyone else from using it? A
THREAD
7,244 Retweets 1,950 Quote Tweets 5,928 Likes

4. The Twitter Protest
On 24 May 2021 The IPO replied:
IPO.GOV.UK
@The_IPO
·May 24
When examining trade marks, our role is to interpret existing laws and be as
transparent as possible in our decision making processes while reflecting the society
around us (2)

5. The Twitter Protest

6. UK Trade Marks Law
● Trade Marks Act 1994
● Directive (EU) 2015/2436 of the European Parliament and of the Council of 16
December 2015 to approximate the laws of the Member States relating to
trade marks (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26
● TRIPS
● Paris Convention
● WIPO Trade Mark Law Treaty

7. UK Trade Mark Act 1994
1. - (1)1 In this Act “trade mark” means any sign which is capable-
(a) of being represented in the register in a manner which enables the registrar
and other competent authorities and the public to determine the clear and precise
subject matter of the protection afforded to the proprietor,and
(b) of distinguishing goods or services of one undertaking from those of other
undertakings.
A trade mark may, in particular, consist of words (including personal names),
designs, letters, numerals, colours, sounds or the shape of goods or their
packaging.

8. UK Trade Mark Act 1994
Applications to register trade marks may be refused on two grounds:
● Absolute Grounds
● Relative Grounds
Absolute grounds are the inherent unsuitability of the mark for registration
Relative grounds include the existence of an earlier mark for the same or similar
goods or a right to bring an action for passing off,

9. Absolute Grounds of Refusal
● There is no specific prohibition on the registration of the name of a nation,
tribe or language in the Act.
● Nor are there any rules reserving the right to register such a mark to a
member of that nation or tribe or speaker of that language
● But s.3 (a) prohibits a registration that is contrary to public policy or to
accepted principles of morality, and
● S.3 (b) prohibits a registration of such a nature as to deceive the public (for
instance as to the nature, quality or geographical origin of the goods or
service)

10. Absolute Grounds of Refusal
● S.3 (4A) (c) prohibits any registration that is contrary to any international
agreement to which the United Kingdom is a party, providing for the protection
of designations of origin or geographical indications.
● S.3 (5) prohibits registration of specially protected emblems such as the UK
and other flags and the international Olympic symbol.
● S.3 (6) prohibits registration if or to the extent that the application is made in
bad faith.

11. Invalidation of Marks
S.47 (1):
The registration of a trade mark may be declared invalid on the ground that the
trade mark was registered in breach of section 3 or any of the provisions referred
to in that section (absolute grounds for refusal of registration).

12. Oppositions and Invalidity Applications
● Proceedings usually begin in the Trade Marks Registry which is part of the
Intellectual Property Office.
● Disputes are referred to tribunals known as “hearing officers”
● Appeals from hearing officers can be made either to the courts or a tribunal
known as “the Appointed Person”
● The validity of a registration can be challenged in infringement proceedings in
the civil courts

13. Continuing Problems
● Kesmere Ltd’s assignment of the offending registrations to The Culture Tree
removes one objection (namely that the proprietor is a company whose
directors and shareholders have no connection with the Yoruba nation or
language) but it still leaves a monopoly in the hands of another British
company owned by another British national albeit one of Nigerian heritage.

14. Questions for Discussion
● Should it be possible for a Nigerian company to register the name of the Inuit
people (the original inhabitants of Greenland) or the Inuit language as a
Nigerian trade mark?
● Should it make a difference if the Nigerian company was
○ A travel agency specializing in tours from Lagos to Greenland?
○ An importer and distributor of Inuit handicrafts or local delicacies such as
reindeer meat or salmon in Nigeria?
● Do we need an international agreement to require all countries to change their
laws?
● Should such a law make an exception for collective or certification marks?

15. Any Questions
4-5 Gray’s Inn Square
London, WC1A 3RH
jane.lambert@nipclaw.com
www.nipclaw.com