CORAM
PARTIES
D & S TRADING COMPANY LIMITED APPELLANTS
1. REMIA C. V2. TRIXIBELLE LIMITED RESPONDENTS
AREA(S) OF LAW
SUMMARY OF FACTS
The Appellant instituted an action at Federal High Court, Lagos Division against the Respondents for the infringement of its Trade Mark ‘ROSA’ which it had registered since 1997 in class 29 and a claim for passing off of its product. The action was predicated on the grounds that the Respondents in registering or bringing up products manufactured and produced by it named Rosa Margarine, Rosa Mayonnaise and Rosa Elan Margarine in classes 29 and 30 is an infringement of the Trade Mark and the passing off of the products the Appellant had registered. The Respondent in response, denied the allegation stating that its products are not meant for the Nigerian market and that the Appellant does not have exclusive usage of the word ‘Rosa’. The Respondent counter claimed for the rectification of the certificate issued to the Appellant so as to conform with the Nice Classification of Goods. The Lower Court in its judgment dismissed the Appellant case and granted the counter- Claim of the Respondent. The Appellant dissatisfied with the judgment of the trial court, has appealed against same to this court.
HELD
Appeal Allowed
ISSUES
Whether the Appellant’s registered trademark “ROSA” is generic within the geographical territory of Nigeria as not to be worthy of exclusive protection within the geographical territorial confines of Nigeria with regards to food products, particularly of goods in Class 29. Whether trademark application “ROSA MARGARINE” and the registered “ROSA ELAN MARGARINE” both in Class 30 are in tandem with the nice classification of goods in Class 30 Whether an Acceptance Letter of a Trade Mark Application is a conclusive evidence of Trademark Registration within the provision of the Trade Marks Act CAP. T13 Laws of Federation of Nigeria 2004 and whether the Appellant had any prior knowledge of the Respondent’ applications at the Trade Marks Registry. Whether the Respondents’ trademark applications ROSA MAYONNAISE inClass 29, ROSA MARGARINE in Class 30 and registered ROSA ELAN MARGARINE in Class 30 are not confusingly similar or identical with the Appellant’s registered trademark “ROSA” in Class 29 in relation to the provisions of Sections 5 and 13 of the Trade Marks Act CAP. T13 Laws of Federation of Nigeria 2004. Whether the decision of the lower court is not against the weight of evidence and does not amount to a miscarriage of justice and whether from the circumstances of this case the lower court was right to have granted the reliefs sought by the Respondents in their counter claim.
RATIONES DECIDENDI
FORMULATION OF ISSUES FOR DETERMINATION – WHETHER A PARTY CAN FORMULATE ISSUES FOR DETERMINATION OUTSIDE THE GROUNDS OF APPEAL
“It is trite law that a party in an appeal cannot formulate issues for determination outside the grounds of appeal and similarly, such a party cannot raise argument on such issues. See: UTB Ltd & Ors vs. Dolmetsch Pharmacy (Nig.) Ltd (2007) 16 NWLR (Pt.1016)520; Omo vs. Judicial Service Committee of Delta State 7 (2010) LPELR-2642(SC); Garba & Ors vs. State (2000) 4 SC (Pt. II) 157. –
REGISTERED TRADE MARK –IMPLICATION OF A REGISTERED TRADE MARK
“Simply put, a person who has registered a name or sign as his trade mark has a proprietary right over the use of that name in that class in which it is registered. Once it is so registered, no other person can register any product in that name subject however to the limitations in sections 7 of the Trade Mark Act. A registered trade mark confers on the proprietor of the trade mark exclusive use of the trade mark to the exclusion of all others particularly as it relates to the product within the class the trade mark is registered. See Virgin Enterprises Ltd vs. Richday Beverages (Nig.) Ltd (2009) 4 FWLR (Pt.491) 8049.
TRADE MARK- DEFINITION OF TRADE MARK
“As to what trade mark implies in Maersk Line &Anor vs. Addide Investment Ltd &Anor (2002) 11 NWLR (Pt.778) 317, the Supreme Court per Ogundare JSC held:
“The trade mark as defined in law is a mark used for goods for the purpose of indicating a connection in the course of trade between the goods or chattel and some people having the right as proprietor or as a registered user to use the mark whether with or without any indication of the identity of that person.”
Similarly, in Society Bic S.A. & Ors vs. Charzin Industries Ltd (2014)4 NWLR (Pt.1398) 497. The Supreme Court per Rhodes- Vivour, JSC held:
“Trade Mark is a distinctive mark of authenticity through which the product of a particular manufacturer may be distinguished from those of others by word, name symbol or device. A car manufacturer who fixes or inscribes on his cars the three pointed star may be infringing the Mercedes Benz Trade Mark. Also affixing the flying lady on a car may be infringing the Rolls Royce Trade Mark. Both examples are the distinctive mark of authenticity by which both motorcars are distinguished from those of other manufactures. Trademarks are registered and remain personal to the manufacturers”
See also Alliance Intl Ltd vs. Saam Kolo Intl Ent. Ltd (2010)13 NWLR (Pt.1211) 270. –
REGISTRATION OF TRADE MARK – MEANING AND ELEMENT OF “DISTINCTIVENESS” IN THE LAW OF TRADE MARKS
“To avoid similar registration, the trade mark must be distinctive and not generic. To be distinctive means something unique and peculiar to the proprietor of the trade mark. What is generic implies that the mark is common and cannot be subject of peculiarity to the proprietor of the trade mark. The Supreme Court in Ferodo Limited &Anor vs.Ibeto Industries Limited (2014) 2 SC (Pt.1) 1, a case both counsel referred to, held:
“In the light of the claim, I should examine the meaning of the word “distinctiveness”, as it relates to the law of trade marks. Black’s Law Dictionary provides an answer at page 473 as follows:
“An essential element of a device claimed to be a trade mark is that it identifies the goods of a particular merchant and distinguish them from the goods of others. A word, symbol, shape or colour serving this purpose is said to be distinctive. Certain marks are inherently distinctive while others only acquire distinctiveness over time… A distinctive mark may lose its distinctiveness overtime and become generic.” See Black M. A. Black’s Law Dictionary (Sixth edition).
In the law of trademarks, the element of distinctiveness comes before that of passing off in the way the number 1 comes before the number 2. In other words, the plaintiff must first prove to the satisfaction of the Court that the trade mark has a distinctive character or nature, before he can prove the movement of the trade mark of the defendant in business circles by way of passing-off.
The element of distinctiveness is consonant to or predicated on some age by way of long or extensive user. What constitutes long or extensive user is a question of fact to be determined in the light of the circumstances of the case. It is certainly not the age of Methuselah. Once the trade mark, by frequent use, has acquired a notoriety in the trade to the common knowledge and common and easy identification of persons in the trade, it will be said to have acquired the character of distinctiveness. In other words, the trade mark has no hiding place so much so that to the eyes of the public, people say in chorus or union, “of course that is the trade of mark XYZ, as it identifies their goods” –
REGISTRATION OF TRADE MARK- INSTANCE WHERE THE COURT WOULD HOLD THAT THERE IS AN INFRINGEMENT OF A REGISTERED TRADE MARK
“If the later trade mark sought to be registered is so similar to the earlier one registered so as to amount to deceiving the public and confusing the public, a court is likely to hold that there is an infringement. See Procter and Gamble Company vs. Global Soap and Detergent Industries Ltd &Anor (supra). –
INFRINGEMENT OF A REGISTERED TRADE MARK- CIRCUMSTANCES WHERE A PROPRIETOR CAN BRING AN ACTION FOR INFRINGEMENT OF ITS REGISTERED TRADE MARK
“The issue now is whether, the Appellant can successfully bring an action for the infringement of the ROSA trade mark he had earlier registered. Though what was registered is ROSA and nothing more, on the authority of Ferodo Limited &Anor vs. IbetoIndurties Limited (supra), it would appear that will not be enough to prevent another from registering a trade mark with a prefix or suffix to the name. However, in that case, it is clear that if the later registration is so similar and resembles the earlier trade mark so as to confuse the public, the latter trade mark will not be registered. In Ferodo’s case cited here as (2004) LPELR-1257 (SC) 31-32, Musdapher, JSC (as he then was of blessed memory) held:
“Following the provisions of Section 5(2) of the Trade Marks Act an infringement of a registered trade mark cannot be maintained unless the Court finds that the defendant is engaged in the use of a mark identical with the registered trade mark or uses a mark so nearly resembling the registered trade mark, as to be likely to deceive or cause confusion in the course of trade; or uses in relation to any goods in respect of which it is registered, or uses in such a manner as to render the use of the mark to be taken as importing a reference to the goods which the plaintiff’s trade mark is connected.” –
REGISTRATION OF TRADE MARK- PREREQUISITE AND IMPLICATION OF THE ISSUANCE OF A LETTER OF ACCEPTANCE
“The letter of acceptance is only issued when the applicant for a trade mark has fulfilled all the requirements for the registration of the trade mark as stated in section 22 of the Trade Mark Act. In Dyktrade Limited vs. Ominia Nigeria Limited (supra) the court could not accept evidence of mere application as an acceptance letter. This does not mean that an acceptance letter amounts to nothing. The context of the decision of the Supreme Court implies that an acceptance letter will be sufficient proof of the registration of a trade mark. This is what the Supreme Court per Belgore, JSC (as he then was) held:
“The Act in Section 22 states clearly: –
“(1) When an application for registration of a trademark in Part A or in Part B of the register has been accepted, and either-
(a) The application has not been opposed and the time for notice of opposition has expired; or
(b) The application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be.”Also when registered the trade mark shall be deemed as having been registered on the date the application was made. Therefore what was before the Courts below was mere application and acknowledgment of the application, not what the applicant call acceptance. Acceptance of the application is when the conditions in S.22 above have been fulfilled. Up to the moment there is no evidence that the application has been accepted and by virtue of S.22 (4) the application has abated. It is therefore clear that from the wording of the Act nobody acquires the status of the “proprietor” unless that person, in relation to the trade mark, is the owner, importer, exporter, shipper or any other person for the time being possessed of or beneficially interested in the goods to which the trade mark is applied.”
The Acceptance letter from the registry of the Trade Mark is a loud statement to the effect that the applicant has satisfied the entire requirement for the registration only awaiting some administrative issues outside the control of the applicant for the certificate to be issued. The acceptance letter has the registration no of the trade mark, the trademarks itself and the class in view it is registered. The only caveat is that it will be published for the general public. The purpose of this is that should there be any objection it will be handled and final decision taken on the objection. This is outside the scope of the applicant”.
APPLICATION FOR REGISTRATION OF TRADE MARK- WHETHER A MERE APPLICATION FOR THE REGISTRATION OF TRADE MARK CONFERS PROPRIETARY RIGHT OF THE TRADE MARK ON THE APPLICANT
“In the line of cases of Dyktrade case and the case of Zeneca Ltd &Ors vs. Jagal Pharma Ltd (2007) LPELR-8384 (CA), the position of the court is that mere application for registration does no confer proprietary right of the trade mark on the applicant. –
FINDINGS OF FACT OF A LOWER COURT – BASIS ON WHICH AN APPELLATE COURT WOULD INTERFERE WITH THE FINDINGS OF A LOWER COURT
“The law is settled and clear which is that, an appellate court should not interfere with the finding of the lower court except if such finding is perverse. Such a finding will occasion miscarriage of justice once it is against the weight of evidence. See Petgas Resources Ltd vs.Mbanefo (2007) 6 NWLR (Pt.1031) 545; Dahiru vs. State (2018) LPELR 44497 (SC). –
INFRINGEMENT OF REGISTERED TRADE MARK – CIRCUMSTANCES WHEN A PROPRIETOR CAN BRING AN ACTION FOR INFRINGEMENT OF ITS REGISTERED TRADE MARK
“In Alban Pharmacy Ltd vs. Sterling Products Intl Inc. (1968) ANLR 292, it was held:
“As Sargent J. said in the Matter of Application for Registration of a Trade Mark by Sandow Ltd. (1914) 31 R.P.C. 196 at p. 205.
“The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection”.
It appears to us that what the learned judge had in mind was a case of passing off which must be distinguished from a claim for infringement. The rights in the present case are limited to the name registered and not the photos of babies on the bottle. In this sense registration of a Trade Mark is narrow in scope and the rights are limited to what is registered. The criterion is that the mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion. And as the learned counsel for the appellant submitted, it was necessary to compare the two trademarks not only visibly but also by sound. This is sometimes stated that the ear must be considered as well as the eye; and this is generally shown in the confusion which may arise in the course of a telephone conversation and this is a point that must be borne in mind. Thus, in Magdalena Securities Ltds’ Application (1931) 48 R.P.C. 477 at p. 487 “UCOLITE” was held by the Court to be too near “COALITE” for registration.
The Courts have considered on various occasions that the first syllable is the properly accented one, and the resemblance is of the utmost importance when you are to arrive at the conclusion whether the two words are likely to deceive or cause confusion. This was observed by Sargant L. J., in In the Matter of London Lubricants (1920) Limited Application to Register a Trade Mark (1925) 42 R.P.C. 264 at p. 279, when he said-
“Though I agree that if it were the only difference having regard to the way in which the English language is often slurred at the termination of words, might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purposes of distinction”. –
REGISTRATION OF TRADE MARK – IMPORTOF SECTION 7 & 8 OF THE TRADE MARK ACT ON THE REGISTRATION OF TRADE MARK
“The sections provide thus:
“Nothing in the Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date previous to: –
(a)The use of the first mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his or
(b)The registration of the first mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, whichever first occurred, or (where such use is proved) to object to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under section 13 (2) of Act.
Section 8 of the Act further provides that the registration of a trade mark shall not interfere with: –
(a)Any bonafide use by a person of his own name or the name of his place of business or of the name, or the name of his predecessors in business: or
(b)The use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in section 5 (2) (b) or 43 (4) (b) of the Act.”
BURDEN OF PROOF – ON WHO LIES THE BURDEN OF PROVING AN INFRINGEMENT OF REGISTERED TRADE MARK
“To bring the case of the Respondent under the exception in Section 7 of the Act, the Respondents’ in their brief submitted that they have been the registered owner of the ROSA trade mark in 17 countries outside Nigeria. This averment is in paragraph 20 of Respondents’ witness deposition. This is in line with paragraph 24 of the statement of defence. Realizing that the burden of proof lies on them, the Respondent in paragraph 24 pleaded those documents of registration in the countries mentioned. For the said section to avail the Respondents, the Respondents must show that they have continuously used the trade mark previously before it was registered by the Appellant. This burden is on the Respondent as the law is trite to the effect that he that alleges must prove. See Engr. George Nduul vs. Barr. Benjamin Wayo & Ors ELC (2018) 3038 page 1 –
CASES CITED
None
STATUTES REFERRED TO
Trade Mark Act, Cap TI3 Laws of the Federation of Nigeria 2014|National Agency for Drug and Food Agency Commission|