CORAM

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HON. JUSTICE G. O. KOLAWOLE JCA

HON. JUSTICE M. DANJUMA JCA

HON. JUSTICE H. R. SHAGARI JCA

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PARTIES

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SHASH INDUSTRIES LIMITED

APPELLANTS 

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1. DISTELL LIMITED

2. THE REGISTRAR OF TRADE MARKS

RESPONDENTS 

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AREA(S) OF LAW

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INTELLECTUAL PROPERTY LAW, TRADEMARK LAW, EVIDENCE LAW, CIVIL PROCEDURE, PRACTICE AND PROCEDURE, COMMERCIAL LAW, ADMINISTRATIVE LAW

 

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SUMMARY OF FACTS

The appeal originated from the ruling of the Trademarks Tribunal which dismissed the 1st Respondent’s opposition to the Appellant’s application for registration of “RED KNIGHT” as a trademark. The 1st Respondent had opposed the application on grounds that the Appellant’s “RED KNIGHT “was confusingly similar to its “KNIGHTS”trademark already registered in Nigeria on April 21, 2010 for the same class of goods (Class 33). The Tribunal dismissed the opposition and directed the application to proceed to registration. The 1st Respondent appealed to the Federal High Court, which set aside the Tribunal’s ruling. The Appellant then appealed to the Court of Appeal.

 

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HELD

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1. The appeal was dismissed for lack of merit.

2. The Federal High Court’s decision was affirmed.

3. The court held that the 1st Respondent’s preliminary objection was competent and properly filed.

4. The court found that prior registration of “KNIGHTS “trademark entitled 1st Respondent to exclusive use.

5. Costs of N500,000 were awarded in favor of the 1st Respondent.

 

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ISSUES

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1. Whether the 1st Respondent’s preliminary objection dated November 21, 2018 filed after parties had exchanged final addresses was competent.?

2. Whether the Federal High Court could exercise the same powers as the Registrar of Trademark and receive additional evidence.?

3. Whether the trial court erred regarding burden of proof concerning the 1st Respondent’s market presence.?

4. Whether the trial court was right in its holding regarding goodwill and the Nigerian office.?

5. Whether the trial court erred by not considering honest concurrent use provisions.?

6. Whether the decision was against the weight of evidence.?

 

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RATIONES DECIDENDI

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PRELIMINARY OBJECTION – NATURE AND TIMING:

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“A preliminary objection is an objection which is initiated or commenced at the earliest opportunity. A preliminary objection is raised where a party fails to comply with the enabling law and or the rules of het court. It is an objection against the regularity of a court process, that is, a suit, is to terminate the proceedings at that stage the objection was raised.” – Per MOHAMMED DANJUMA, J.C.A.

 

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BURDEN OF PROOF IN OPPOSITION MATTERS:

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“It is trite that the burden of proof in opposition matters lies on the person who filed application for the registration of the mark (i.e. the Applicant for the registration of a trademark) and not the party that filed the opposition.” – Per MOHAMMED DANJUMA, J.C.A.

 

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EXCLUSIVE USE OF REGISTERED TRADEMARK:

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“Section 5 of the Trademarks Act clearly provides that the 1st Respondent would have exclusive use of KNIGHTS in class 33 for alcoholic beverages. To allow use and registration of RED KNIGHT would imply that the statutory right to exclusive use has been violated.” – Per MOHAMMED DANJUMA, J.C.A.

 

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TRUE PROPRIETORSHIP OF TRADEMARK:

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“So, the true proprietor of a trademark is the person who has an earlier claim to the trademark. It has been established by the 1st Respondent (which is an entity based in South Africa) in the opposition proceedings that the Trademark KNIGHTS registered in relation to goods in class 3 originated from the 1st Respondent.” – Per MOHAMMED DANJUMA, J.C.A

 

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FRESH EVIDENCE ON APPEAL – REQUIREMENTS:

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“For the court to allow the admissibility of fresh evidence on appeal, even in a trademark appeal on the basis of Section 21 and Order 53, the relevant party must comply with the conditions set down by the Supreme Court.” – Per MOHAMMED DANJUMA, J.C.A.

 

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HONEST CONCURRENT USE – TEST:

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“The important consideration is to test if the relevant public has had sufficient opportunity to become aware that the two marks are in use and so be able to be alert to the possibility of confusion and if such degree of confusion may be tolerated.” – Per MOHAMMED DANJUMA, J.C.A.

 

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BURDEN OF PROOF IN TRADEMARK REGISTRATION:

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“Therefore, in a trademark application, the applicant, like the Appellant herein claiming ownership/proprietorship of a trademark and requires the Registrar (or a Court) to give decision, the burden of proof rests on such applicant.” – Per MOHAMMED DANJUMA, J.C.A.

 

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GOODWILL IN TRADEMARK:

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“I am of the view that the only reason for the Appellant’s choice of the name RED KNIGHT as part of its name is to appropriate the 1st Respondent’s goodwill in the KNIGHTS trademark. Appellant cannot be allowed to reap where it had not sown.” – Per MOHAMMED DANJUMA, J.C.A.

 

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REGULATORY COMPLIANCE – EFFECT ON TRADEMARK RIGHTS:

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“The allegation on non-registration with NAFDAC is misplaced and has no basis in considering a trademark application for registration.”– Per MOHAMMED DANJUMA, J.C.A.

 

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SIMILARITY IN TRADEMARKS – TEST:

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“The implication of the 3 tests of comparison, (a) visual and sound test (b) syllable test and (c) imperfect recollection test is that the offending trademark application for RED KNIGHT when compared with the 1st Respondent’s prior registration for KNIGHTS is likely to deceive or cause confusion.” – Per MOHAMMED DANJUMA, J.C.A.

 

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FRESH EVIDENCE REQUIREMENTS:

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“The Appellant never establish how the facts and circumstances of its case met the conditions stipulated in ASABORO V. ARUWAJI. The Appellant merely averred in its said supporting affidavit that the new evidence are material, without showing why the evidence could not be obtained or tendered at the trial of the matter before the Tribunal.” – Per MOHAMMED DANJUMA, J.C.A.

 

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INADMISSIBLE EVIDENCE – JUDICIAL TREATMENT:

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“It is the law that even where inadmissible evidence is wrongly admitted in evidence, the court is obliged not to use such evidence at any stage in the proceedings.” – Per MOHAMMED DANJUMA, J.C.A.

 

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TRADEMARK PROPRIETORSHIP – FIRST USE PRINCIPLE:

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FIRST USE PRINCIPLE: “The person with the best claim to sue it was the designer or inventor of it. It is emphatically stated in that case that proprietorship is determined by first use and not by deceptiveness.”– Per MOHAMMED DANJUMA, J.C.A.

 

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CASES CITED

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STATUTES REFERRED TO

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1. Trademarks Act Cap T13 LFN 2004

2. Evidence Act 2011

3. Federal High Court (Civil Procedure) Rules 2019

4. Court of Appeal Rules 2021

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