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F.O. Ajibowo Co Ltd. v. Western Mills Ltd.

Supreme Court of Nigeria

Judgement delivered on Friday, July 2, 1976
Citation: 19 NIPJD [SC. 1976] 302/1975
Suit No. SC.302/75      Jurisdiction: Nigeria

BEFORE THEIR LORDSHIPS

ATANDA FATAYI-WILLIAMS, J.S.C. (Delivering the Lead Judgement)
AYO GABRIEL IRIKEFE, J.S.C
MOHAMMED BELLO, J.S.C.

The Plaintiffs, a limited liability company, are textile manufacturers at Ilupeju Industrial Estate in the Ilupeju district of Lagos. The Defendants are also a limited liability company. They deal in textile piece goods and have been the customers of the Plaintiffs since 1970.

After their incorporation on 15th November, 1972, the Defendants acquired all “the rights” benefit and title in respect of a textile check design known as K13/14 (Registration No. 000344).  The design had been previously registered in the name of Francis Ajibowo & Co. who as issued with a certificate of registration by the Registrar of Patents and designs. The Certificate (Ex. 1) is dated 30th December, 1971.

Earlier, on 13th August, 1971, Francisl Ajibowo & Company (the Defendants predecessor in title of the design), by letter ordered some 10,000 yards of the design from the Plaintiffs.  The letter (Ex. 2) reads

Dear Sir,
Booking 10,000 yards on a new design.
We write to book 10,000 yards on our new design. We would like the goods in the four colour ways, each   to the quantity of 2,500 yards as attached with this booking order. The colour 4 is a different design but we would want its colour to be our colour 4 on our this new design.We would like the goods supplied to our company and our company only.
Please early production and supply will be appreciated.
Thanks in advance.

Yours faithfully,
FRANCIS AJIBOWO & COMPANY
For Francis Ajibowo
Managing Director.

The Plaintiffs accepted the order and completed it between October and December, 1971.  According to the Plaintiffs, Francis Ajibowo & Co. took delivery of only 7,774 yards of the said order.  They refused to clear the balance of 2,226 yards in spite of repeated requests from the Plaintiffs to do so. Because of this, a second order by Francis Ajibowo & Co. for another 10,000 yards of the same new design, booked by letter dated 23rd October, 1971, (Ex. 4) was not executed.  As we had pointed out earlier, Francis Ajibowo & Co. registered the design just over two months later on 30th December, 1971. They transferred the registered design to the Defendants after their incorporation on 15th Novermber, 1972.

On 23rd August, 1972, that is, about ten months after they had rejected the second order of Francis Ajibowo Company, the Plaintiffs applied to the Registrar of Patents and Design for the registration of the same design which had already been registered by Francis Ajibowo & Company.  The design was again registered for the Plaintiffs, no doubt, in error. Latter, when it was discovered that the design had been registered earlier for another party, the Plaintiffs registration was cancelled by the Registrar by letter dated 8th September, 1972 (Ex. 10) which reads:-

The General Manager, Western Textile Mills Ltd.,
Plot A1, Block IX,
Ilupeju Industrial Estate,
P.O. Box 2800,
Lagos.

Registration of Designs
Cancellation of Certificate of Registration Re: Certificate No. 000331

I regret to inform you that Designs Registration Certificate No. 000331 issued to Western Textile Mills Limited in respect of Textile Piece Goods only (Checks) with effect from 25th day of August, 1872, and which was delivered to your Manager on Tuesday, 5th September, 1972, is hereby cancelled.

2.The Certificate was issued to your Company in error, because a Certificate has been issued to FRANCIS AJIBOWO & COMPANY OF 143 NNAMDI AZIKIWE STREET, LAGOS in respect of the same identical design with effect from 30th December, 1971: the issue to you of the certificate is therefore contrary to Section 14 of the Patents and Designs Decree No. 60 of 1970.
(Sgd.) J.A. Adeosun,
Registrar of Patents & Designs.

On 24th March, 1973, the Plaintiffs, no doubt annoyed by this decision, instituted proceedings against the Defendants in the High Court of Lagos State in which they claimed as follows:-

The Plaintiffs claim against the Defendants is for a declaration that the Design Registration No. 000344 of 30th December, 1971 in the name of Francis Ajibowo & Company, the Defendants predecessor in title, is null and void pursuant to section 22 of the Patents and Designs Decree, 1970.

Paragraphs 9 and 10 of their statement of claim read-

9. The Plaintiff avers that Design Registration No. 000344 (K13/14) is void and of no effect in law because it did not comply with the provisions of the Patents and Designs Decree, 1970.

10.  The Plaintiff has a material interest in taking this action in that

(a) it has to mitigate the  financial loss caused by the Defendant refusal to take delivery of the 2,226 yards referred to in paragraph (8) supra by selling same, and
(b) the Defendant is threatening litigation against the Plaintiff for a alleged infringement of its design.

In their statement of defence, the Defendant after explaining how they came to acquire the registered design from Francis Ajibowo & Co., averred that the Plaintiffs have material interest in the registered design other than that of having the same design registered intheir favour. The Defendants thereupon counter-claimed as follows:-

COUNTERCLAIM

1.The Defendants counterclaim that they are the validity registered owners of Design No. k/13/14 registered at the Registry of Patents and Designs, Federal Ministry of Trade in Lagos as certificate No. 000344 of 30th December, 1971.

2. The Defendants will at the trial show that the Plaintiffs knowingly and willfully infringed the said Design when they wove several yards of material to the said Defendants Design Certificate No. 000344 and sold same to several persons.

3. The Defendants further claim for:

(i)  an injunction to restrain the Plaintiffs by their directors officers, employees, servants or agents or otherwise howsoever from infringing the said Defendants registered Design Certificate No. 000344;

(ii)  an order for the delivery up or destruction on Oath of all articles or chemical components or catalogue of Designs in the Plaintiffs possession, custody or power which infringe the said registered Design

(iii)  an inquiry as to damages or at the Defendants option an account of the profit and payment of all sums found due upon taking such inquiry or account; or in the alternative, special and general damages of N150,000 (one hundred and fifty thousand naira); and

(iv)  such further or other reliefs as this Honourable Court may seem meet.

At the hearing, Ebenezer Festus Olabode, the sales director of the Plaintiffs (1st PW) testified that Francis Ajibowo & Co. was their customer and that after the Defendants were incorporated they also became their customers.  He then continued:-

“I know the design which is the cause of the present action.  We manufactured the design for Mr. Ajibowo.  He first brought the design.  The design is a popular design. He first brought it before other customers. He brought a cutting of the design in August, 1970.

He further testified about the order given to them by Francis Ajibowo and about how, after the order had been completed, he failed to clear the outstanding quantity which they had to sell. He said they did nothing to infringe the Defendants design. Under cross-examination, the witness testified further as follows:-

“Apart from the quantity of the design not cleared by Ajobowo from the first order and which quantity was sold to other customers after due warning to Ajibowo, the Plaintiffs, to my knowledge, did not manufacture for nor manufacture on their own and sell to other customers, textile of the design in dispute in this case. We take care in our company not to print one design for two customers.  We do not search the register of designs to find our who the registered proprietor is before executing an order to a design.”

Throughout his testimony, the 1st PW did not say whether the remaining textile materials which Ajibowo failed to pay for and collect and which they had to sell to other customers were sold before or after the registration of the new design on 30th December, 1971. The significance of this omission will emerge later.

In support of  his contention that the registration of the design is void and of no effect because the design is not new, the Plaintiffs called two witnesses, Wusamotu Moranti Dosumu (3rd PW) and Muraino Adeyemi Adenusi (4th PW).  The testimony of Wusamotu Dosunmu, another textile dealer, on this point read:-

” know the Plaintiffs as manufacturers of textiles. I know about four companies manufacturng the design in Ex. 1. These are Nigerian Teijin, Taylor Bard & Co. Ltd., M. Debs & Co. Ltd., and Bhojsons & Sons. Except for Bhojsons & Sons, these firms are manufacturers.  They do not market. I also buy this design from any of them for sales. My shop is at 619 LEDB Shop at Fred MacEwen Street, Lagos.  I have no stock of this material at the moment. I also buy the design from the Plaintiffs. I have sold more than two thousand yards of the material in Ex. 1. I know Mr. Ajibowo sitting in court. We are both customers of the Plaintiffs. I bought some quantity of the design from the Plaintiffs towards the end of 1971 and again in 1972. I do not agree with Mr. Ajibowo that nobody else could sell the design.”

When cross-examined about check designs, presumably because the design in dispute is a check, she replied that the check designs can be of various types.

The other witness, Muraino Adeyemi Adenusi (4th PW) who was once a clerk with P.Z. & co. Ltd., testified about the disputed design as follows:-

“When I was in P.Z. we sold the design in Ex. 1. The design in Ex. 1 is known as Kentucky, Check or Prince of Wales material. Manchester, England.  While in textile business on my own I have sold 1,000 to 2,000 yards of the design in Ex.1. We have the design in different colours. I obtain my supply of the design from Setty Textiles Limited, London. The design is a common one and in my opinion, nobody can claim the proprietorship of it.”

The Defendants called no evidence and rested their customers who as traders would sell them to the public. It was after this that Mr. Ajibowo applied and registered the design in December of that year. I therefore hold that there has been publication of the design before its registration and it is not therefore new.

The learned trial judge thereupon declared the registration of the design in favour of the Defendants null and void. He further ordered that it should be expunged from the Registrar of Designs. He also dismissed the counterclaim.

In the appeal against this decision, the only point urged upon us by both parties, as can expected, is whether or not, there was publication of the design before it was registered in the Defendants/appellants favour in December, 1971. It was contended on behalf of the Defendants/appellants that there was no evidence of any probative value as to publication before registration.  The evidence that was adduced by the Plaintiffs/Respondent was so meagre and so unreliable that it was not surprising that the learned trial judge placed no reliance upon it. Learned counsel for the Defendants/appellants also submitted that the inference of publication drawn from the purpose of the material containing the design by the Defendants/appellants from the Plaintiffs/Respondent was a non-sequitor. For the Plaintiffs/Respondent, it was submitted that the finding that the design was not new because, prior to its registration, there had been publication of it by sale, is amply supported by the evidence.

It seems to us, judging by the averments in the pleadings and the evidence adduced by the Plaintiffs/Respondent, that three types of prior publication were relied on by the Plaintiffs/Respondent. Firstly, they relied on the publication of the design to them by the Defendants/appellants; secondly, they relied on publication to the 3rd and 4th Plaintiff witnesses; thirdly, they relied on the publication by presumed sale by the Defendants/appellants after they had purchase the textile materials from the Plaintiffs/Respondent.

The issue of prior publication is crucial to this case. This is because the declaration asked for is based on the provisions of section 22(1) of the Patents and Designs Decree (No. 60 of 1970 which is hereinafter referred to as the Decree).  The section reads-

“22(1). Subject of this section, on the application of any person (including a public officer acting in the exercise of his functions), the court shall declare the registration of an industrial design to be null and void-
(a) if the design, because of its failure to conform with section 13(1)(b), ought not to have been registered, or
(b) if the design fails to comply with section 13(1)(a) or 14.

Sections 13(1)(a) and (b) and (14) to which the design conform provide as follows:-

“13(1). Subject to this section, an industrial design is registrable if ”
(a)   it is new, and
(b)   it is not contrary to public order or morality…….

14(1).   Subject to this section, the right to registration of an industrial design is vested in the statutory creator, that is to say, the person who, whether or not he is the true creator, is the first to file, or validly to claim a foreign priority for, an application for registration of the design.

It is clear, both from their pleadings and from the evidence adduced in support, that the Plaintiffs/Respondent did not rely on non-conformity with the provisions of section 13(1)(b) or 14 for the declaration asked for. Because of their contention that the design is not new, they relied on section 13(1)(a). That being the case, it is, we think, pertinent at this stage to refer to the provisions of subsections (2), (3), and (5) of section 13 which read

“13(2). Where an application is made for the registration of an industrial design, the design shall be presumed to be new at the time of the application except in so far as the following provisions of this section provides otherwise.

(3) An industrial design is not new if, before the date of application for registration, it has been made available to the public anywhere and at any time by means of description, use or any other way, unless it is shown to the satisfaction of the Registrar that the creator of the design could not have known that it had been made so available. ….

(5)   An industrial design is not new merely because it differs in minor or inessential ways from an earlier design or concerns a type of product other than the type with which an earlier design is concerned.

The nature of an industrial design is described in section 12 of the Decree as

“Any combination of lines or colours or both, and any three-dimensional form, whether or not association with colours, is an industrial design if it is intended by the creator to be read as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.”

We will show later how important the provisions of sections 12 and 13(5) are when considering whether or not there was prior publication of the disputed design to the 3rd and 4th Plaintiff witnesses.

With respect to the publication of the design to the Plaintiffs/Respondent by the order of August, 1971, reference must, of course, be made both to the evidence of the 1st PW and to the contents of the letter (Ex. 2) which, in the particular circumstances of this case, show clearly that the disclosure of the design to the Plaintiffs/Respondent at the material time is confidential. It will be recalled that the letter speaks of “our new design” and of the goods “being supplied to our company and our company only”. It must also be presumed that the Plaintiffs/Respondent, in accepting the order, did so only on that basis. We also recall that the 1st PW did testify as follows:-

“We manufacture the design for Mr. Ajibowo.  He first brought the design. The design is a popular design. He first brought it before other customer.”

The law is that the publication of an industrial design is confidential if the person to whom the disclosure is made is under an obligation as to secrecy or has himself an interest in the design. Thus, in Blank v. Footman, Pretty & Co. (1888) 5 R.P.C. 653, where Blank, the proprietor of a design, before registering it, showed it to one Hummel, a commission agent who had the sole right of selling Blanks goods in England, it was that Hummel, therefore, had an interest in the design and for that reason, the communication must be regarded as confidential and as such, it does not amount to publication.In the case in hand, there is no doubt that the disclosure was made to the Plaintiffs/Respondent in circumstances from which an obligation to secretary can be inferred. Moreover, it is clear that the Plaintiffs/Respondent also have an interest in the  manufacture of the particular design for the Defendants/appellants.  For all these reasons, we are of the view that there was no publication to them. Not only that, we think that the facts of the case in hand, where the originators of the design wanted the textiles to be “supplied to our company and our company only”, are distinguishable from those of Winfield & Sons v. Snow Brothers (1891) R.P.C. 15 because the present case implies a confidential order bearing the new textile design to be made by the Plaintiffs/Respondent, and not, as in the Winfield case, where the trial judge found, not only that the transaction was in the nature of commercial dealing, but also that no conditions were attached to the transaction. In this connection, we refer to the following finding of the trial judge at page 17 of the judgment:-

“Having found that the order was unconditional I am compelled to treat it, as between Messrs. Olney & Co. and the Plaintiffs, as an order binding on both parties from the time it was given and accepted, and after that time Messrs. Olney & Co. might have resold to any of their customers upon the same pattern. When and how the design first came to the know ledge of the Defendants is immaterial if the registration is vitiated by prior publication; but in justice to Mr. Major and his employers it is but fair to them to say that there is not a suspicion or foundation for imputing to either of them any breach of faith or confidence.

From the above, there can be no doubt that the finding of the learned trial judge was based on the particular circumstances of that case.

As for the second publication, that is, the publication to the 3rd and 4th Plaintiff witnesses, these two witnesses admitted that they have bought textiles containing the disputed design from the Plaintiffs/Respondent. For that reason, they could hardly be expected to admit the design is new. Moreover, no sample of the design which they said they had been selling prior to the registration of the disputed design was produced. All the witnesses did was to make a mental comparison of the Defendants/appellants design (attached to Ex. 1), which was in evidence, with another design which they said they had sold before, but which was never tendered in evidence, and then say, in effect, that the two designs are the same.

One would have thought that the only evidence of any probative value in this type of case is that  of the other named manufacturers of the disputed design. They could have testified that they had been manufacturing the design before the Defendants/appellants application for registration and could have produced samples for the court to see and make a comparison.  This is because the trial judge is the only judge of whether the design is new or not. It is, we think, significant that although three of the manufacturers mentioned in evidence are in Nigeria, not one was called. It must be remembered that it is any combination of lines or colours or both, and any three-dimensional form which is the industrial design; therefore, what actually constitutes the design is that particular combination and arrangement of lines which give such features. Thus, like the disputed in the case in hand, a design for a pattern may consist of a mere arrangement of straight lines or stripes. This is why it is important that, in a case where the newness of such a design is disputed, the design claimed to be new and the old design should be put side by side to enable the court to compare and see whether they are basically the same or whether there are fundamental differences in the shape and pattern of the lines. This is all the more important because, according to section 13(5) of the Decree, an industrial design is not new merely because it differs in minor or essential ways from an earlier design. We are, therefore, not surprised that the learned judge did not appear to have attached any probative value to the testimony of the 3rd and 4th Plaintiff witnesses.

As we have pointed out earlier, the learned judge based his finding of prior publication on the inference that, because the Defendants/appellants are textile dealers, they must have bought the textiles made from the disputed design from the Plaintiffs/Respondent for sale, that they must have sold them to other people, and that that presume sale amounted to publication. In the first place, before a sale could to publication under the Decree, there must be evidence that the sale by the Defendants/appellants, assuming that they did sell, was before registration. There is clearly no such evidence. Secondly, it does not follow that because they had bought the textiles manufactured from the design, they must have sold it since it is equally possible, there being no evidence of any sale to any particular individual, that none of what the Plaintiffs/Respondent sold to them in August, 1971 was resold before registration of the design on 30th December, 1971. The finding that they must have sold the textiles containing the design before registration and that they had thereby published the design, is clearly a non-sequitor. Finally, having regard to the particular circumstances of this case, it is not open to the Plaintiffs/Respondent, who have unsuccessfully tried, after the registration of the design by the Defendants/appellants, to register the same design as new to contend that the disputed design was not new.
Be that as it may, we are of the view that the learned trial judge was in error in holding that there was publication.The onus is on the Plaintiffs/Respondent to prove prior publication and this they have failed to do. The judgment  in favour of the Plaintiffs/Respondent, based, as it were, on prior publication, cannot therefore be allowed to stand.

As for the dismissal of the counterclaim in respect of which the Defendants/appellants have also appealed, it is manifest that they adduced no evidence whatever in support of the counterclaim; in particular, no evidence was adduced to show whether the admitted sale by the Plaintiffs/Respondent of the 2,226 yards of textiles containing the disputed design to other customers was made before or after the registration of the design. Infringement of an industrial design can only arise after registration. It is our view, therefore, that the learned trial judge was fully justified in dismissing the counterclaim which must have been based on the alleged infringement of the design. The contention that the order dismissing the counterclaim was made in error clearly has no merit.

Save as to our views on the counterclaim, the appeal succeeds and it is allowed.  The judgment of the learned trial judge in Suit No. FRC/L/45/74 delivered in the Federal Revenue Court on 23rd  July, 1974, including the order as to costs, is hereby set aside.  Instead, we order that the Plaintiffs/Respondent claim be dismissed and this shall be the judgment of the court. The Defendants/appellants are awarded costs assessed in the court below at N150.00 and in this court N140.00.

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