«back to Cases and Principles

NLIPW Cases and Principles

International Tobacco Nigeria Ltd & Ors. v. British American Tobacco Nigeria Ltd. & Anor.

Court of Appeal

Ilorin Judicial Division, holding at Ilorin

Judgement delivered on Thursday, December 11, 2008
Citation: 51 NIPJD [CA. 2008] 54/2007
Suit No. CA/IL/54/2007      Jurisdiction: Nigeria

BEFORE THEIR LORDSHIPS

OLUFUNLOLA OYELOLA ADEKEYE, J.C.A.
IGNATIUS IGWE AGUBE, J.C.A. (Delivering the Lead Judgement)
CHIMA CENSUS NWEZE, J.C.A.

BETWEEN:

1. INTERNATIONAL TOBACCO (NIG) LTD.
2. OLAIDE OGUNNIYI
3. RONKE OGUNJIMI………………………………………………………………….(Appellants)

AND

1. BRITISH AMERICAN TOBACCO (NIG) LTD.
2. BENSON & HEDGES (OVERSEAS) LTD………………………………………………………(Respondents)

I. FACTS

By an amended writ of summons and statement of claim dated the 30th day of January, 2006, the Respondents (then plaintiffs) instituted this action in the Federal High Court sitting at its Ilorin Division and presided by Chukwura Nnamani J. and sought for the following declaratory and injunctive reliefs:-

1. DECLARATION that the 2 “Benson & Hedges” Trade Marks is entitled to their exclusive use viz:-

a. “Benson & Hedges” Registered as No 53107 in class 34 at the Nigeria Trade Mark  and Plaintiff as the Registered Proprietor of the following  Registry,

b. “Benson & Hedges” (with crest) Registered as No 29048 in class 34 at the Nigeria  Trade Marks Registry.

c. “Benson & Hedges” (Turn to Gold Slogan) Registered as No 56629 in class 34 at  the Nigerian Trade Marks Registry, is entitled to the exclusive use of the vanous Trademarks “Benson & Hedges”

d. “Benson & Hedges” (gold colour label mark) Registered as No 60722 in class 34 at  Nigeria Trade Marks Registry.

e. “Benson & Hedges” (label) Registered as No 17974 in class 34 at the Nigeria  Trade Marks Registry.

2. AN ORDER of perpetual injunction restraining the Defendants and each of those on  whose behalf they are sued whether by themselves, their Director(s), Officer(s), Servant(s), Agent(s) or Privy(ies) or any of them or otherwise howsoever from doing the  following acts, namely:-  a. Infringing the Plaintiff Trademarks registered as No 53107 in class 34, No 29048 in  class 34, No 56629 in class 34, No 60722 in class 34, and No. 17974 in class 34 at  the Trademarks Registry Abuja, Nigeria.  b. Passing off or attempting to pass off or causing enabling or assisting others to pass  off “Tradition” brand of cigarette as and for the Plaintiffs “Benson & Hedges &”  brand of cigarette by adopting the get-up package, design and devices similar to the  Plaintiff “Benson & Hedges” brand of cigarette.  c. Manufacturing importing, selling or offering for sale or supplying cigarette known  as “Tradition ,. purporting same to be the Plaintiff by adopting the get-up package,  design and devices similar to the Plaintiffs’ “Benson & Hedges” brand of cigarette

3. AN ORDER directing the destruction of all infringing “Tradition” brand of cigarette in  the possession/custody or control of the Defendants the sale distribution, and use of which would be a breach of the injunction prayed for in prayer (ii) hereof.

4. AN ORDER directing the obliteration of all marks upon oath, all containers, cartons,  show cards, display matter, signboards. Advertisement, circulars, notepapers, business  cards, letter-heads, stationery, label wrappers, photocopies or other printed matter or  other products, papers or marked article bearing the mark/name “Tradition”

5. AN ORDER of perpetual injunction restraining the Defendants and all persons on whose  behalf they are sued whether by themselves, their Director(s), Officer(s), Servant(s),  Agent(s) or Privy(ies) or any of them or otherwise howsoever from importing, advertising  for sale, offering or selling or supplying any products or goods bearing the word  “Tradition” as to be calculated to mislead the public to believe that the products are the  products of the Plaintiffs.

6. AN INQUIRY as to damages sustained by the Plaintiff or at the Plaintiff option an  account of that part of the joint and several profits of the Defendants and all persons on whose behalf they are sued to which the Plaintiffs are entitled and payment of all sums  found due upon taking such inquiry or account.

7. Cost of this action against the Defendants.

8. Any further or other reliefs that the court may deem fit to make in the circumstance.

As can be gleaned from the Record of proceedings, the synopsis of the facts in support of the plaintiffs’ case in the Lower Court are that the 1sl plaintiff is a Tobacco Manufacturing Company while the 2nd plaintiff is the beneficial owner of the registered trade mark cited in the particulars of claim and the reliefs thereof. The Ist plaintiff markets and distributes the Benson & Hedges brand of cigarettes on behalf of the 2nd plaintiff all over Nigeria and the entire world, the plaintiff having caused the brand to be registered in the form of Exhibits E, EI, E2, E3, and E4. The plaintiffs discovered that the Defendants were carrying out the whole sale, distribution importation marketing and sale of a certain “TRADITION” brand of cigarettes which purportedly bore/bears a confusingly similar label design, colouring, get-up and devices of the plaintiffs Benson and Hedges brand and the plaintiff instituted action against the defendants seeking the reliefs above stated.

The plaintiffs were granted Anton Pillar Orders in respect of the “TRADITION” brand  of cigarettes which orders were executed and the Defendants appeared in court through their  counsel and subsequently filed their defence and counter-claim seeking damages for the loss of  goods and anticipated profit arising from the execution of the Anton Pillar Orders as follows:-

1. A declaration that the acts of the Plaintiffs/Defendants forcing their way into the business premises of the Defendant/Counterclaimant on January II tli 2005 to execute  the Anton Pillar Orders of this Honourable court without first obtaining the permission  of the Defendan/Counterclaimant constitute a breach of the terms of the orders.nd plaintiff is the beneficial owner of the registered trade mark cited in the  nd plaintiff all over Nigeria and the entire world,

2. A declaration that the acts of the Plaintiffs/Defendants taking away with unreasonable  force several cartons of the Von Eicken “TRADITION” cigarette of the  Defendant/Counterclaimant as well as documents after forcing their way into the  business premises of the Defendant/Counterclaimant on January 11tli 2005, execute the  Anton Pillar Order of this Honourable Court without first obtaining the permission of  the Defendant/Counterclaimant constitutes an act of trespass to the chattel of the  Defendant/Counterclaimant.

3. The sum of N13,000,000 as damages for loss of goods and anticipated profit on the  goods.

4. The sum of N6,000,000 as damages for compensation for loss of goodwill

5. The sum of1’+3.5 Million being the cost of defending the action.

6. Any further relief that this Honourable court may deem fit to make in the circumstances.

During the hearing, the Plaintiffs called five witnesses and tendered Exhibits A – G in  proof of their case whereas the Defendants/Counter-Claimants (now appellants), called nine  witnesses and also tendered material Exhibits in support of their defence and counter-claim. According the Defendants/Appellants, by virtue of a distribution Agreement, the lst Defendant  has an exclusive right to import and distribute the “VON EICKEN TRADITION” cigarette  brand in Nigeria and that the Plaintiffs filed the action purporting apart from the allegation of  their (Defendants) infringement of their (Plaintiffs) Trademark, that the Defendants were  passing-off the “TRADITION” Cigarette as the Plaintiffs’ “Benson & Hedges “. The 2nd Defendants in the course of the proceedings were joined by order of court and after hearing  the evidence of the parties and oral arguments of their respective counsel the learned trial Judge  gave judgment in favour of the Plaintiffs on the 24th July, 2006 and dismissed the counter-claim of the Defendants.

Dissatisfied with the judgment of the lower Court, the Defendants/Appellants filed their Notice of Appeal on the 20th day of October, 2006. The said Grounds are here under  reproduced with their particulars as follows:-

GROUNDS OF APPEAL

“GROUND ONE  The learned trial Judge erred in law when he held as follows:

GROUNDS OF APPEAL  The learned trial Judge erred in law when he held as follows:  “Worthy of separate mention is S. 16 of the Trademark Act Cap T 13 LFN 2004 which  deals with registration with or without limitation as to colour. This section together  with Ferodos case (supra) encourage me to find that the Gold pack of Benson &  Hedges admitted a” Exhibit E2 is the basic idea of the Trade Mark”  1. The trade marks registered on the face o/Exhibit E2 are not limited in whole or in  2. The trademarks registered in Exhibit E2 are the “B & H” logo, the Benson &  3. The Gold colour exhibited on the face of Exhibit E2 is merely decorative of the  PARTICULARS  Hedges crest and the name Benson & Hedges.  trademarks that were registered and not the basic idea of the trade marks.  The learned trial Judge erred in law and occasioned a miscarriage of justice when he held  that the Respondents had established a case of infringement of their registered  Trademarks against the Appellants.

PARTICULARS

1. The above decision of the court below is a complete departure from the decision of  the Supreme Court in Ferodo Industries Limited vs. Ibeto Industries Limited  (2004) 5 N.W.L.R (Pt. 866) 317.

2. The Court below is bound by the decision of the Supreme Court under the doctrine of

The learned trial Judge erred in law and occasioned a miscarriage of justice when he admitted and relied on Exhibits E, E2, E3, and E4 (Trademark Certificates)  notwithstanding that the parties to the documents had agreed on the face of the  documents that the documents are not for use in legal proceeding  PARTICULARS  “1 The inscription ‘This certificaie is not for use in legal proceedings or fiJI’  obtaining registration abroad” on Exhibit E. E2. E3 and E4 constitutes an agreement  between the Trade Mark Registrar and the 2  “2 The Trade Mark Registrar and the 2″‘1 Respondent are bound by their Parties to a document can validly agree tha the document willnol belor use in  nd Respondent.  Briefs were subsequently exchanged in this court which were duly adopted by the  1h of October, 2008 when the appeal was heard. At the hearing, the learned  counsel for the Appellants drew the courts attention to pages 9 and J 0 of the Appellants’ Brief  and submitted that what the Respondents registered was the Trademark “Special Filter” but not  the colour or the packet and that the marks they claimed to registered are contained in pages 76 and 79 of the record of proceedings. The Learned Counsel also drew the courts further attention  to their analyses at page 616 to 618 of the Record and added that the Respondents went on to rely on section J 6 of the Trademarks Act instead of the specific Trademark to urge us to allow  the appeal and set aside the judgment of the lower COUJ1.  The Respondents’ counsel on his part noted that the Appellants initially formulated  three issues in their Brief but did not proffer any argument on issue Number 3 which he urged  us to strike out. That issue is accordingly struck out as prayed. In the same way, since the  Appellants did not proffer any argument in support of ground 3 of their grounds of appeal. that  ground is deemed abandoned and is also struck out.  In his oral adumbration of the submissions III the brief. he added that there is a  distinction betwecn FERODO’S case and the present case because in the said Ferodo’s case  only the name “FERODO” was registered whereas in the instant case, the design and pack were registered. And that their contention is that the defendants’ pack and design would deceive somebody into believing that their (Appellants’) mark infringes the Benson and Hedges Trademark. He them urged the court to dismiss the appeal and sustain the judgement of the lower Court.

It would be recalled that in the brief settled by the Appellants Counsel Bello Salihu Esq., two issues were formulated for determination and are reproduced hereunder as follows:-

1. Whether the Trademarks in dispute are confusingly similar with each other to have amounted to infringement in the light of the material evidence placed before the trial court?

2. “Whether the actual trademark registered in Exhibit E2 are Ihe marks/symbols displayed thereon?”

On the other hand, Gbenga O. Bello Esq. of Counsel for the Respondents also formulated two issues which are also reproduced hereunder thus:-

“1. Whether from the totality of the documentary evidence led and tendered by the Respondents, what was registered in Exhibit E2 includes the Gold Colouring of the Respondents” pack and therefore entitled to protection from infringement of same?

2. Whether the Appel/ants pack design tendered as Exhibit F is con(zlsingly similar to the Respondents pack design tendered as Exhibit G and therefore established a case a/infringement on its registered trade mark .. ‘

Arguing ISSUE Number I (One), the Learned Counsel noted that it emanates from Grounds I and 2 of the Notice of Appeal and therefore calls for a review of the evidence relating to the trademark of the Respondents. It was submitted however by the Learned Counsel that the evidence led by the Respondent was insufficient to warrant the conclusion by the learned trial Judge that the trademarks of the appellants were confusingly similar with those of the respondents.

Learned Counsel referred to the evidence led by the five witnesses called by the Respondents to establish the exclusive use of their Trademark in the bid of which certain documents particularly Exhibits E (the BenSon & Hedges Logo); E2 (Pack design); E3 (Crest Design); E4 (Slogan, TURN TO GOLD); F (PACK OF TRADITION Cigarettes) and G (Pack of Benson & Hedges Cigarettes) were tendered. He further referred us to the analysis of the trial Judge at page 615 to 625 of the Records to conclude that the Appellants did not infringe on the Respondents’ Trademark but that the Court however held that the basic idea of the Plaintiffs’ Trademark as shown on their pack is not the designs nor the red and black markings/colourations but the words “BENSON & HEDGES” and the “GOLD
SPECIFICATION ON ITS PACK” and concluded that although the “BENSON & HEDGES” words were not used by the Appellants, the gold colouring/specifications pack were used.

On the test for ascertaining infringement of trademark he cited Ferodo Ltd. Vs. lbeto Industries Ltd (2004) 5 N. w’L.R (Pt. 866) S.c. to submit that the basic idea of the Respondent’s Trademark is the word “BENSON & HEDGES”, the BENSON & HEDGES LOGO/CREST and the SLOGAN “TURN TO GOLD” as contained in Exhibit E2, E3 and E4 and which as compared with Exhibit G (The Benson & Hedges Cigarette Pack) would leave no one in doubt as to their significant to the distinctive nature of the Respondents’ product pack (Exhibit G). The gold pack, he submitted, is merely decorative and not part of the trademark.

He referred to the holding of the Learned Trial Judge at page 633 to the effect that Exhibit E2 when compared with Exhibit F is deceitful and confusing whereas none of the Respondents’ witnesses led evidence to show that he purchased Exhibit F as result of perceived confusion but the PW2 and PW3 merely stated that one Niran an employee of the Appellants introduced Exhibit F to them as “Small Benson.” He further referred to the evidence of the PW4 and PW5 at pages 433 and 435 of the Records; the evidence of PWl at page 382 and their contradiction by the DWI and DW9 at pages 382, 442 and 480 – 481 to submit that there is no intention to infringe on or pass-off the Trademark of the Plaintiffs as shown in the front of Exhibits E-E3. Furthermore the front of Exhibit F is not the same as Exhibit E which represents the front view of Exhibits G and the back view bfExhibit F is not the same as Exhibit E2 which represents the back view of Exhibit G and that the Crest and Logo of Exhibit F is not the same as the Exhibit E3 which is the Crest Design of Exhibit G.

He alluded to the evidence of the DWI that Defendants advertised only Exhibit ‘E’ as “TRADITION” and that Exhibit E4 the ‘Turn to Gold’ slogan was not infringed.

Relying once on more on the case of ferodo liS. /belo supra on the definition of infringement of Trademark he also submitted that the learned trial Judge was right when he relied on Alban Pharmacy Ltd vs. Sterling Products lntemationa/ Inc. (/968) All N.L.R. 300, Bill & Son’s CO. VS. Ako (/972)1 S.c. 215 and Ferodo liS. lbeto (supra) but took the view that the court below was wrong when it held that the Respondent never made the brand name of Exhibit F & G an issue and proceeded to consider the distincti ve nature of the Respondents “BENSON & HEDGES” Trademark. He maintained that the respondents made an issue out of the Brand names and of Exhibits F and G as issue fore the trial Court as can be gleaned at pages 619 and 382, 442 and 480 of the Record of Proceedings.

In the final analysis, he urged this Court to hold that the learned trial Judge having held that the Trademarks were not confusingly similar was bound to follow the Supreme Court decision in A/ban Pharmacy Ltd Vs. Sterling Products and in particular Ferodo’s case. He prayed for issue number I (one) to be resolved in favour of the Appellants.

On issue number 2 (two), the Learned Counsel also referred to the evidence of DW2 who had spent 17 years and 4 months in the Nigerian Tobacco market and the corroboration of the evidence by Exhibits J – 16 which are brands of cigarettes with gold packs and red and black markings and the corroborative evidence of the DW7 which evidence were not challenged at page 452 of the Records.

Learned Counsel referred again to Exhibit E2 with its attachment which captures the front of Exhibits G showing the B & H Logo, the word “BENSON & HEDGES”, and the brand description “Special Filter” contending that the extract does not explain that the trademarks so registered therein were registered in certain colours. On Exhibits E3 and E4, he argued that they can best be described as advertising phrase.

He then went on to the treatment of the issue to contend that the remark by the lower Court at page 628 of the records that S. 16 of the Trademark Act encouraged him along with the decision in FERODO’S case to find that Exhibit E2 is the basic idea of the Respondents’ Trademark was/is speculative for the following reasons:-

1. The Court did not take into consideration that Exhibits E-E4 as well as their Extracts do not show that any colour (Gold, Red or Black) were registered by the Ist Plaintiff at the Trademark Registry.

2. The attachment on the face of Exhibit E shows that B &H logo, the BENSON & HEDGES Crest as well as the name Benson & Hedges were registered whilst the registered mark was described in the Extract as “BENSON & HEDGES” without any explanations as to colours (Gold, Red and Black being part of the mark).

3. There was no statement suggesting that the colours were registered in Exhibit E at the point marked “Representation on Trademark” in the said Extract as that position only displayed the attachment on the face of Exhibit E showing the B & H logo, the Benson & Hedges Crest and the name BENSON & HEDGES and that this can best be described as the back side of Exhibit G.

4. A review of Exhibit E2 and the annexed extract (in particular) from the register reveals that no entry was made with respect to the mark being registered but the representation of trademark is the front view of the pack of Exhibit G displaying the B & H sign, the “BENSON & HEDGES” written in a slanting form, the represents’ crest (Exhibit E3) and the word “Special Filter” (also written in slanting form) all of which are the destructive nature of the respondents’ BENSON & HEDGES trademark.

5. There is no indication as to limitation to colour on Exhibit E2 and that what was registered in Exhibits E2 are B & H sign, the words “BENSON & HEDGES”, the Benson & Hedges crest and the words “Special Filter” without more as the respondent do not have the monopoly over gold card board. FERODO’S VS. IBETO (supra). Referring to the findings of the trial Court in this respect, he submitted that it is against section 16 of the Trademark Act which requires him only to consider the limitation as to colour where such limitation exists and that there is no such limitation in Exhibit E2.

On what amounts to registered trade mark in the light of the findings of the Court, he referred to Ferodo vs. Ibeto which held that it is the mark shown on the evidence of registration, to submit that the respondents’ evidence of registration in respect of Exhibits E2 are B & H sign, the words “BENSON & HEDGES” written in slanting form, the respondents’ Crest (Exhibit E3) and the words “Special Filter” (also written in slanting form).

On the evidence of the PWI that the gold colour was the respondents’ trademark in respect of which Exhibit E2 was issued, it was submitted again by the Appellants that the law is trite that by virtue of section 132 of the Evidence act Cap. C 36, Laws of the Federation 2004, oral evidence cannot be admitted to contradict or alter the content of a document. He cited also the case of Olaloye vs. Balogun (1990) 4 N.W.L.R (Pt. 144) at 283, to submit further that the evidence of the PWI is at best an attempt to alter the content of Exhibit E2 whereas the court ought to have restricted itself to Exhibit E2 which if considered it would not have held that the Respondent registered the gold colouring pack of Benson & Hedges.

The case of Agbanelo vs. Union Bank (2000) 7 N.W.L.R (Pt. 666) 534 at 546-547 was cited on the contention that the appellants disputed (vehemently) the respondents assertion that gold colour formed part of the Respondents’ Registered trademark and the trial Court ought to have adequately considered the evidence before it in reaching a decision which it failed to do. The Learned Counsel for the Appellants also criticized the finding of the learned trial Judge at page 31/628 of the records on the proof of distinctiveness of the gold packaging as being not consistent with Exhibit E3 since according to him there is no proof that the gold colour pack has been in use for the period stated by the trial Judge. Reference was made again to FERODO’s case on the definition of “distinctiveness” and its mode of acquisition thereof to assert that the only trademarks distinctiveness within the pronouncement of the Supreme Court in the Ferodo vs. Ibeto’s case are the words “BENSON & HEDGES”, the “B & H” sign; the “Turn to Gold” Slogan and the “Benson & Hedges” Crest/Logo but that the gold pack is not the monopoly of the respondents as other cigarettes manufacturer make use of it.

The Learned Counsel maintained that the Supreme Court’s dictum cited at page 13 of the Brief in respect of Ibeto vs Ferodo (supra) relates to unregistered Trademarks as Section 5 of the Trademark Act gives the proprietor of Trademark the exclusive use of the Trademark and that once a Trademark is registered in accordance with the Act the proprietor need not prove the distinctive character of the Trademark to establish infringement of the Trademark. For this submission, he relied on the dictum ofNiki Tobi, J.S.c. in the Ferodo VS. [beto’s case (supra); where the Learned Justice defined the word “distinctiveness.”

The Learned Counsel contented that assuming the gold pack (though unregistered) of the Respondents has acquired distinctiveness over the years as a result of use as found by the learned trial Judge, the Respondents’ action can only be founded on the common law right of passing off and the decision of the trial Judge would have been same.

He referred to Section 251(1) (f) of the 1999 Constitution of the Federal Republic of Nigeria which clothes the Federal High Court with the jurisdiction to hear causes and matters from any Federal enactment relating to copy right, patents, designs, Trademarks and other allied matters which provision was interpreted by the Supreme Court in Ayma/l E/lterprises Ltd. VS. Akuma I/ldustries Ltd. (2003)13 N. W.L.R (Pt. 836) 22 (Ratio 2) and it was held that for the Federal High Court to have jurisdiction over a passing off claim arising from infringement of Trademark, the Trademark must be registered.

Learned Counsel for the Appellants further referred to Decree No. 60 of 1993 which confers the Federal High Court with the jurisdiction to entertain matters arising from the common law right of passing-off and submitted that Ayman’s case may have been delivered per incuriam as the provisions of Decree No. 60 of 1993 was not brought to the knowledge of the Supreme Court but that the decision of the Supreme Court is binding on the Federal High Court even if given per incuriam.

In support of the above submission, he relied on the case of Ngwo vs. Monye (1970) N.S.C.C. 70 at 76 paras. 20-30, and Ndi/i vs. Aki/lsu/lmade (2000) 8 N. W.L.R (Pt. 668) 293 at 346-347 H-B. To urge this Court to determine this issue in favour of the Appellants and allow the appeal reverse the decision of the lower Court and then declare that the Appellants did not infringe the Respondent’s Trademark.

On the part of the Respondents, the Learned Counsel on their Issue Number I, reflected on the submissions of the Learned Counsel to the Appellants to the effect that Section 16 (1) of the Trademarks Act and Ferodo Ltd. VS. [beto Ltd (Supra) do not find support for the learned .trial Judge’s assertion that the Gold Colour or the Red and Black colourings of the pack were the basic idea of the Trademark in respect of which the Certificates (Exhibits E – E4) and particularly Exhibit E2 were issued. Furthermore, the Learned Counsel for the Respondents also reflected on the Appellants’ submission that the evidence of PWI in that regard ought to be discounted in accordance with Section 132 of the Evidence Act which forbids oral evidence to vary the content of a document. Learned Counsel for the Respondents countered that such a submission is misconceived as the Respondents have shown that apart from the registration of the words “BENSON & HEDGES” it registered the Pack design as shown in RTM 60722 which was admitted as Exhibit E2.

He pointed to the contents of Exhibit E2 at page 16 of the Records which according to him bears gold colour boldly on the pack and on the Respondents’ cigarette packaging bearing its “BENSON & HEDGES” Trademark which are gold, red and black but that contrary to the submissions of the Appellants’ Counsel, the bold Gold colouring of the Respondents’ design pack is reflected in Exhibit E2 and also distinctively on the certificate as what is registered.

He alluded to the fact that the court beloW buttressed the above facts with his findings at pages 614 and 625 and submitted that Exhibit £2 speaks for itself like other Exhibits and the evaluation by learned trial Judge points to no other conclusion that what was registered in the certificate is Gold Pack and all markings. Other Exhibits like Exhibit E4 and Exhibit H which highlights the Gold Pack and the slogan “Turn to Gold”, according to him, further re-enforce the classification and colouring of the Respondents’ pack and to further show the importance of Gold, he maintained.

It was further submitted that when all the Exhibits are taken together as tendered in the trial Court by the Respondents the conclusion is that the respondent registered: –
a) Benson and Hedges Logo (Exhibit E & EI)
b) Gold Pack Design (Exhibit E2)
c) Crest Design (Exhibit E3) and
d) Turn to Gold Slogan (Exhibit E4); and that a look at the particular box, the representation being registered be it crest, logo, word or colour and Exhibit E2 conspicuously show the colour of the pack and all other representations together as the Pack Design for the Respondents’ cigarettes.

On the submission that the evidence of PWI was an attempt to contradict Exhibit E2, he submitted that the PW I did not say anything to contradict Exhibit E2 as can be gleaned from page 380 of the Records, and that her testimony was only consistent with the proviso to section 132 (c) of the Evidence Act which is not inconsistent with the terms of the relevant document. The cases of Ali vs. Ikusebiala (1985) 1 N.W.L.R (Pt. 4) 630 at 641; Ekwunife vs. Wayne (WA) LTD (1989) 5 N. W.L.R (Pt. 122) 422 at 440-441 and Fortune International Bank vs. Pegasus Trading Office (GHBH) & Ors. (2004) N. W.L.R (Pt. 863) 381-388 If-A, were all cited in support of the view that the evidence of the PW 1 to that extent was validly accepted by the learned trial Judge.

On the submission by the Appellants’ counsel that there is no indication as to the limitation to colour on Exhibit E2 he cited again the case of Feredo Ltd & Anor. vs. Ibeto Industries Ltd (Supra) at 326 paras. C-G which held that what amounts to a registered Trademark is the mark shown in the evidence of registration, to contend that what were shown in all the Exhibits tendered by the Respondents and accepted by the lower COUl1in evidence including Exhibit E2 bear what the Respondents sought to register and to be protected as their mark for commercial purposes and that the Appellants submission that only Benson & Hedges Crest, ‘B & H’ sign, the words ‘BENSON & HEDGES’ and ‘Special filter’ without gold colour were registered, cannot be correct.

He then urged the court to hold that the true interpretation of the pack deign for registration purposes is the totality of the design of the pack including the colour, marks, writings e.t.c and the court was right to have held as he did at page 625 of the record that the gold colouring of the Plaintiffs’ pack is the substance of Exhibit E2, is unassailable when considered against their pleadings and the totality of the oral and documentary evidence they elicited.

On the contention by the Appellants that the learned trial Judge’s finding that the Respondents have proved distinctiveness is not consistent with the contents of Exhibit E3 and that there is no evidence that the pack had been used for the period referred to by the Judge, Learned Counsel for the Respondents replied that the findings of the trial Court on distinctiveness is based on the review of the evidence before him particularly Exbibit C upon which the Judge held that the pack had long and extensive use.

The Learned Counsel also added that what constitutes long or extensive user is a matter of fact to be determined in the light of the circumstances of the case not by the age of Methuselah but by frequent use to the extent of acquiring notoriety in the trade to the common and easy identification of persons in the trade. Tobi .I.S.C in Ferodo vs. lbeto (supra) at 367- 368 paras. H-A was also relied upon to buttress his submission. He then contended that in the instant case the most important thing was proof of notoriety in that trade which was extensively done by all the witnesses called by the ReslJondents. Furthermore, the use by other cigarette producers does not detract from the right of thc proprietor of a registered trademark under section 5 (2) as was held by Tobi .I.S.C in Ferodo’s case at 368 paras. B-F.

On the contention by the Learned Counsel for the Appellants that the Federal High Court has no jurisdiction to hear a claim of passing-off, he submitted that the law as far as the jurisdiction of the Federal High Court is concerned has been settled on the question of unregistered Trademarks, that by virtue of section 25 (I) (f) of the 1999 Constitution, the court is conferred with exclusive jurisdiction in matters relating to copyright, patent, design, Trademarks and passing-off e.t.c. Omnia Nig. Ltd vs. Dyke Trade Ltd (2007) 5 N.W.L.R (Pt. 1058) 576 at 601 Para . .E and 603-604 paras H-A was cited in support of the view that the Federal High Court has jurisdiction whether or not the claim arise out of unregistered Trademark. He urged us to resolve issue No. I in favour of the Respondents.

Arguing issue number 2 which is whether the Appellants’ Pack design tendered as Exhibit F is confusingly similar to the Respondents’ Pack design tendered as Exhibit G so as to entitle the Respondents to the judgment of the Lower Court, the Learned counsel for the Respondents referred to Section 5 (2) of the Trade Marks Act which is the basis of Trade Mark infringement liability and the judicial approach of the interpretation of the provision as exemplified in Alban Pharmacy vs. Sterling Products International INC (1968) All N.L.R 292 and Ferodo vs. Ibeto Supra per Tobi F.S.C at 374 paras. A and B, IN THE Matter of Application for Registration of a Trademark by Sandow Ltd (1914) 31 RPC 196 quoted with approval in the Alban Pharmacy vs. Sterling Products International INC. (Supra) and Ibeto’s case which all establish that in determining whether a mark constitutes an infringement of the other, the court considers either or both of the sounds of the marks or by visuals as it appears to the eye and that in such exercise only the offending Trademark is considered so that whether the person who sees it in the absence of the other Trademark was or would be liable to be deceived and to think of the trade mark before him as the other of which he has general recollection.

It was therefore submitted that from the above authorities the argument of the learned counsel for the appellants cannot stand in the face of the settled principles of law relating to trade marks infringement.

In respect of the arguments of learned. counsel for the Appellants that to the extent that the trademark displayed on the respondents’ product which is ‘Benson & Hedges’ word, the crest and logo and the ‘TURN TO GOLD’ as contained in Exhibit E, E3 and E4 the gold colouration is only decorative of the pack and not part of the trade mark citing FERODO’S case in support and further that there was no credible evidence from the Respondents’ witnesses as to show confusing similarity as between Exhibit F (the Appellants’ Pack) and Exhibit G (the Respondents Pack), the learned counsel for the Respondent argued as follows:-

1. That it is trite that cases are not decided in vacuum but in relation to the facts and that the ratio or dictum should be read along with the facts in order to decipher the clear meaning viz-a-viz the principle of stare decicis. Chief of Air Staff & Ors vs. Wing Commander Lyen (2005) 6 N.W.L.R (pt. 922) 469 at 546 was referred to.

2. That the manner a judge argues a case is not what to look for but the principle he is deciding and as such it is the fact of any particular case that must be considered in framing issues and the facts of two cases must be same before one can be used as the guide to the latter case. Adegoke Motors Ltd. VS. Dr. Adesanya & Anor. (1989)  3. N. W.L.R (Pi. 1090 250 at 275 paragraph E and 276 paras B-D was cited as authority for the submission above.

It was therefore submitted that where the facts of a case are dissimilar an earlier decision would not build a lower court in accordance with the principle of stare decisis. In that context after giving the facts of Ferodo’s case, he contended that from the decision of Musdapher lS.C with Tobi J.S.C concurring, the facts of Ferodo’s case are slightly different from the case on appeal and that where as in the Ferodo’s case only the word ‘Ferodo’ was registered and other devices contained in the Trademark were mere embellishments, in the present case a part from registering ‘BENSON & HEDGES’ word as a logo the respondents registered also the PACK DESIGN as Exhibit E2 and the slogan ‘Turn to Gold.’ He then concluded that from the above, the respondents attach importance not only to the words but to the pack design shown in the certificate tendered as Exhibit E2 as against the Ferodo’s case where only the name was registered which necessitated the three courts holding that all other devices apart from Ferodo were embellishments. In this case he further maintained, the Respondents went a step further to register devices other than ‘BENSON &HEDGES’ word to make the gold colouration a distinctive mark which warranted the lower court’s finding at page 625 of the records distinguishing the case of Ferodo from the present case.

On the second arm of the submission of counsel for the Appellants that there was no credible evidence from the respondents to show confusing similarity as between Exhibit F and G (the respective packs of the parties), he posited that the contention of the Learned Counsel to the Appellants that none of the witnesses led evidence to the effect that he or she purchased Exhibit F as a result of the perceived confusion is erroneous as the position of the law is that the burden of proof is on the Plaintiffs to show that customers are likely to be misled and confused by the infringement. References was then made to Section 5 (2) of the Trademarks Act where the word’ so clearly resembling it as likely to deceive or cause confusion’ is used.

The Learned Counsel for the Respondents then posed the question whether from the totality of the evidence the plaintiffs had discharged the burden as to whether there was likelihood of being deceived, which he answered by reference to the evidence of the PW2 – PW5 at pages 423, 432 to 433, 434 to 435 and the Court considered and taken together point to the confusing similarities between the Respondents and the Appellants Pack designs both to consumers and retailers alike. The confusion he further submitted, has led to the name ‘small Benson & Hedges’ which necessitated the court below to make the findings at page 630 of the record which findings of fact are matters within the province of the trial court. For this submission he relied on the case of Abusonwan vs. MercantileBank of (Nig.) Ltd. (1987)3 N. w’L.R (Pt. 60) 196 to assert on the authority of Abdullalli Mohammad Wali & A nor. VS. Attahiru Da/hatu Bafarawa & 3 Ors. (2004) N. w’L.R (Pt. 898)1 at 45-46 paras. H-B that the findings of the court not being perverse, this Honourable court should not intervene with the findings.

On the submission that the DWI contradicted the evidence of the Respondents, learned counsel for the respondents submitted on the contrary that the question is not whether if a person is looking at two trademarks side by side there would be a possibility of confusion but that whether a person who sees the proposed trade mark in the absence of the other trade mark and in view of only his general recollection of what the nature of the other Trademark was, would be liable to be deceived and to think that the Trademark before him is the same as the other, of which he has a general recollection A/ban Pharmacy vs. Sterling Products Internationa/1NC. (Supra) and Ferodo vs. 1beto (supra) at 374 paras G-H were relied upon to urge the court to hold that in line with the authorities above-cited the evidence of the DWI who had the benefit of seeing both the designs and comparing them is not the test but the evidence of PW4 and PW5 who saw the infringement pack, at a time when they only gave account of their general recollection of the BENSON & HEDGES PACK design, and confirmed without going into details of markings and slanting to say that both packs are similar.

It was finally submitted in reaction to the submission by the Learned Counsel for the Appellants that the Appellants had no intention to infringe on the respondents’ Trademark, that intent in this case is irrelevant once the requirements of section 5 (2) of the Trademarks Act is proved to the satisfaction of a court.

I have taken the time to reproduce almost verbatim the copious submissions of counsel on both sides and also considered the issues formulated by them for the determination of this appeal and I am of the view that the issues are synonymous except in the variation of their arrangements. Accordingly, I propose to adopt the issues formulated by the learned counsel in the Respondents brief as they appear to have hit the nail on the head as far the crux of the matter and the decision of the lower court which is now the subject of appeal is concerned, thus:

1. Whether from the totality of the documentary evidence led and tendered by the Respondents, what was registered in exhibit E2 includes the gold colouring of the respondents’ pack and therefore entitled to protection from infringement of same?

2. Whether the Appellants pack design tendered as Exhibit F is confusingly similar to the respondents pack design tendered as Exhibit G and therefore established a case of infringement on its registered trademark?

Before delving into the issues above formulated it is necessary to go down memory lane on the historical development of the Trademarks Law in both England and Nigeria. The statutory protection of Trademarks in the United Kingdom dates back to 1875 with the enactment of the Trademarks Registration Act of the same year.

THE EVOLUTION AND DEVELOPMENT OF THE TRADE MARKS LAW IN NIGERIA:

Like most of our laws of colonial origin, the Nigeria Trade Marks Law as it is today evolved from the 1883 English Trademarks Act – a Statute applicable only to the then Southern Protectorate but re-enacted as the Trademarks Proclamation Ordinance of 1900 – which was then the first autochthonous Trademark Legislation in Nigeria. The 1900 Act was repealed by the Trademarks Ordinance of 1910 with equally limited applicability to Southern Nigeria until the amalgamation of Southern and Northern Protectorates in 1914 when the Trademarks Ordinance No. 20 of 1923 was made a Statute of general application to the entire country and for the first time introduced a Trademarks Register in Part B thereof following the English Act of 1919.

Three years later, in 1926, the Trademarks Ordinance No. 13, and subsequently the J 958 Act which consolidated and amended the previous law on Trademarks was enacted as Cap. 199, Laws of the Federation of Nigeria, 1958. After independence in 1960, the 1965 Trademarks Act that has substantially transmuted into the current Trademarks Act, Chapter T. 13, Laws of the Federation of Nigeria, 2004; was enacted based also on the United Kingdom Trademarks Act of 1938.

Now, we shall proceed to determine ISSUE NUMBER 1: Whether from thc totality of the documentary evidence led and tendered by the Respondents what was registered in Exhibit E2 includes the Gold Colouring of the Respondents’ Pack and therefore entitled the Respondents to protection from infringement. Put differently, had the Respondents proved that the Gold colouring was/is part of their Registered Trademarks, the breach by the Appellants which would entitle them to the judgement of the lower Court?

A careful assessment of the documents tendered by the plaintiff would reveal that they speak for themselves. I shall begin with Exhibit E the Certificate of Registration for the mark Registered as RTM. 53107. Clearly what is displayed as the “REPRESENTATION OF TRADEMARK” are the B & H Logo, the Crest and the BENSON & HEDGES name at the bottom of the Pack. The background of the pack on the front page of the Certificate is white.

On the “Extract From The Register” (Exhibit E1) however, those designs are embossed on a chalky background. There is no indication whether the golden colouration of the packet was part of the mark or designs registered, but the “MARK” column glaringly shows that what was registered was “BENSON & HEDGES” – the name.

As for the Exhibit E2 which is the subject of this issue, what is displayed in photographic form is the pack design in golden background comprising the B & H Logo on top of the cap, followed by the “BENSON & HEDGES” name below, after the cap demarcation, then the Crest and finally “SPECIAL FILTER” in red background on the bottom. In the “EXTRACT FROM THE REGISTER” of the said certificate for the mark registered as TP39781, the column for the ‘MARK’ has no inscription but the photographic representation on the certificate is replicated in the column for “REPRESENTATION OF TRADE MARK”.

In Exhibit E3 the Benson and Hedges Crest in displayed on a milky background on the first page of the Certificate of Registration of trademark Number TRM29048. In the “EXTRACT FROM THE REGISTER”, the ‘MARK’ registered is “BENSON & HEDGES”. The Representation of Trade Mark on a milky background as shown under the “Extract”, is the Crest.

In Exhibit E4 the Certificate of Registration Number RTM. 56629, the inscription “TURN TO GOLD” on a milky background is displayed as the registered mark. In the Extract, the Mark registered is “TURN TO GOLD” so ,is the “REPRESENTATION OF TRADEMARK” as displayed at the left bottom comer of the said Extract.

Whereas the Appellants contend that Exhibits Exhibit E – E4 and in particular Exhibit E2 as well as their attached Extracts do not show that any colour (Gold, Red and Black) were registered by the plaintiff but that only the Benson & Hedges name, B & H Crest as well as the Logo were registered without explanation as to colours being part of the pack, the Respondents submit that apart from the Benson and Hedges sign, name and logo, Exhibit E2 registered its pack design as shown in RTM. 60722 and page 16 of the Records. The design they have insisted is boldly on the pack with all the other marks thereon.

When the said argument cropped up in the lewer Court, the learned trial Judge at page 28/626 of the Judgement/Record of proceedings held as follows-

“The Plaintiff registered the Gold colouring pack of Benson & Hedges whose Trademark Certificate of Registration No. is 60722 and tendered in this Court during hearing as Exhibit E2 and has been in long or .extensive use (going by Trademark Registration certificate) since 1999 and even earlier in 1973 going by Exhibit £3, 7,’ademark Registration Certificate No. 29048.

The classification of Gold Colouring pack of Benson & Hedges as basic idea of the Trademark is further reinforced by Exhibit E4 – Slogan ‘Turn to Gold’ with Trademark Registration No. 56629 and even Exhibit H – Printed promotional adverts of Benson & Hedges, which highlights the Gold Pack and the Slogan ‘Turn To Gold’.

This is because of the case of Woodward Ltd Vs, Boulton Macro Ltd. (1915) 32 Roc. 173 and Section 5 (2) of the TrademarkAct.”

At page 511629, the learned trial Judge also took the view that the Plaintiffs had proved the distinctiveness in respect of Gold packaging Exhibit E2 and the fact that Exhibit 4 containing the commercial ‘jingle’ or slogan ‘TURN TO GOLD’ again shows the Trademark Gold Colour Pack, Exhibit E2 to be the basic idea of the Trademark. He continued that assuming but not conceding that the Gold Colour Pack of Exhibit G was not specifically registered, the said exhibit G’S long or extensive use of Gold Colour Pack since 1973 for about (33 years) is more than enough for it to acquire distinctiveness.

He then referred to section 16 (I) of the Trademarks Act and Ferodo’s case (supra) which according to him encouraged him to find that the Gold Pack of Benson & Hedges admitted as Exhibit £2 is the basic idea of the Trade Mark.

After considering the provisions of the aforesaid section, the learned trial Judge went on to answer the question as to what extent colour or combination of colours may be used as a Trademark and posited that experts and authors on intellectual property are of the view that whether such colour or combinations of colours are considered as Trademarks depends on whether they received secondary meaning, that is whether the public recognises them as Trade Marks.

He then held that the public indeed recognise the Gold Colour Pack of Benson & Hedges as Trademark going by the testimonies of the Plaintiffs’ witnesses, particularly PW2-PW5 who easily accepted the Defendant’s Tradition Cigarette as small Benson & Hedges because of its Gold Colour Pack usually taken as Benson & Hedges Trademark.

The learned trial Judge further held as follows;-

1, That it is the apparent recognition of the Gold Colour Pack of Benson & Hedges Exhibit E2 by the public that the Plaintiffs highlighted the slogan “TURN TO GOLD” registered as Trademark Exhibit E4 and used it in such as Exhibit H.

2. That common sense dictates that the slogan ‘TURN TO TOLD” Exhibit 4 cannot mean any other thing than “TURN TO BENSON & HEDGES” and the reference can only be made if the Plaintiffs genuinely believe that it is only their good “BENSON & HEDGES” Exhibit G alone that has the exclusive right to use that Gold Pack.

3. That the various promotional adverts such as Exhibit H contained the slogan “TURN TO GOLD” and also the various Audit summary reports tendered as Exhibit D and PWl’s testimony show that Exhibit ‘G’ “BENSON AND HEDGES” is No. I Tobacco which has recorded 75% share of the Tobacco market in Nigeria.

The revenue generated by the sales of Exhibit G has been used to improve the welfare of the Nigerian economy.

At the end of the analysis of the totality of the evidence of the witnesses for the Plaintiff/Respondents the learned trial Judge stated thus:-

“This evidence of good will of Exhibit G is unchallenged. Thus it can be seen that there is more than sufficient Acquired Distinctiveness, resulting ji’om sales and heavy advertising throughout Nigeria since 1973 going by Exhibit E3. See Procter & Gamble Coy. Vs. Office Harmonisation in the Internal Market (OHIM) (2002) RPC 16 referred to in the Reports of Patents, Designs and Trade Marks cases 349 at 356 edited by Mary Victoria Q. C. “

I am of the candid view that the findings of the learned trial Judge cannot be faulted if regard is had to the provisions of section 16 (I) of the Trademarks Act, the oral testimonies of the witnesses and the contents of the documentary Exhibits tendered by the Respondents. Section 16 (I) cited by both counsel to press home their respective points as to whether or not Exhibit E2 registered any colour (Gold, Red and Black) as a trade mark, states thus:- “16. Registration without limitation as to Colour:-

i. A Trademark may be limited in whole or in part to one or more specified colours and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the Trademark.”

By subsection “(2) if and so far as a trade mark is registered without limitation of colour, it shall be taken to be for all colours. “

Once more, a look at Exhibit E2 would reveal that it is the only mark with the B & H Logo, Benson & Hedges name, Crest written in black colours and the “Special Filter” Brand name in conspicuous Red Colour engraved on a Gold Background as can also be gleaned from Exhibit G the Benson and Hedges Pack. All other marks in Exhibit E, EI, E3 and E4 and their respective Extracts are embossed on either white or milky coloured background and their respective inscriptions are in black. PW2 and PW3 gave evidence that the golden pack design is synonymous with Benson and Hedges.

Again, the PW4 in his evidence to the Court below testified that in his 13 years of smoking Benson and Hedges he had never seen any other pack designed in Gold, Red and Black like Benson and Hedges. As for the PW5 he had testified in Chiefthat:- “The Gold Pack is synonymous with Benson and hedges and so whenever a gold Pack is brought out and a stick given me, J do not have to look at the name on the pack or the cigarettes. ”

I have also been privileged to Examine Exhibits G and H and I agree with the findings of the learned trial Judge that it is in apparent recognition of the Gold Colour Pack of Benson and Hedges (Exhibit E2) by the Public as can be gathered from the evidence of the PW4 and PW5 that the Plaintiffs/Respondents had carried out sustained advertisements in Black, Red and Gold inscriptions like Exhibit H which for instance has the inscriptions:- “SIGNED & SEALED TO GIVE YOU GOLD STANDARD QUALITY” in black colour and then the enumerated qualities are dotted in red spots as follows:-

“Benson & Hedges is committed to quality worldwide. Signed & sealed by British American Tobacco to ensure nothing less than the gold standard, ” e.t.c.

There is no doubt as the learned trial Judge has also rightly observed that the “TURN TO GOLD” registered Trademark advertorials emphasize on the golden quality and colour as exemplified in the golden pack of Benson and Hedges Exhibit G.

I am of the considered view that the learned trial Judge took into consideration the provisions of the section 16 (I) of the Trademarks Act when he made the findings complained about by the Appellants and with the greatest respect, the submission by the Learned Counsel for the Appellants about the specific colour (Gold, Red and Black) which were registered or that the findings of the Court is speculative, is not borne out of the evidence before us in the face of the fact that Exhibit E2 highlights the Gold, red and black colours which are on the Designed Pack. The specified colours in Exhibit E2 are those that appear also in both the certificate and are particularly clear and speak for themselves in the “REPRESENT ATION OF TRADEMARK” contained in the Extract which the Court took into consideration to decide the distincti ve colour of the packet.

Thus, assuming there is no colour limitation as contended by the Appellants the learned trial Judge had found that the gold colour has acquired such distinctive notoriety that the average purchaser like the PW2, PW3, PW4 and PW5 had taken notice that the gold pack is synonymous with Benson & Hedges. Also the Brand of cigarette in question has contributed to economic development of this Country as can be gleaned from the Social Report and Retail Audit Summary Report that it controls 75% of the tobacco market in Nigeria such that it has acquired the necessary distinctiveness. Section 9 (2) and (3) of the Trademarks Act provide that:-

“9. Distinctiveness needed for registration in Part A

(1) In order for a trademark (other than a certification trademark) to be registrable in Part A
of the register, it must contain or consist of at least one of the following essential
particulars –
(a) ……………………
(b) ……………………
(c) ……………………
(d) a word or words having no direct reference to the character or quality of the goods,
and not being according to its ordinary signification a geographical name or a surname;
(e) any other distinctive mark:

Provided that a name, signature or word or words other than such as fall within
paragraphs (a) to (d) of this section, shall not be registrable under paragraph (e) of this
section except upon evidence of its distinctiveness.

(2) For the purposes of this section ‘distinctive’ means adapted, in relation to the goods in respect of which a trademark is registered or proposed to be registered, to distinguish good with which the proprietor of the trademark is or may be connected in the course of trade, fi’om goods in the case of which no such connection subsists, either generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which –
(a) The trademark is inherently adapted to distinguish as aforesaid; and
(b) By reason of the use of the trade mark 0′: of any other circumstances, the trademark is in fact adapted to distinguish as aforesaid. “

In RE: Cadbury Brothers Ltd’s Application (1915) 1 Ch. 331 it was decided that to satisfy the test of distinctiveness, “when one sees the mark, one’s mind should immediately go to the person or company who sells or manufactures the article, and to no other’s.” See the evidence of the PW2 to PW5 to the effect that the gold pack is synonymous with Benson and Hedges.

The contention of the Learned Counsel for the Appellants is that on the authority of Ferodo vs. Ibeto there is no limitation as to colour in Exhibit E2 and that what was registered in the said Exhibit E2 were the B & H sign, the words “Benson & Hedges”, the “Benson & Hedges Crest” and the words “Special Filter” without more and that the Respondents do not have a monopoly of exclusivity over the gold cardboard.

In the said case of Ferodo Ltd. VS. Ibeto Industries Ltd. (2004) 5 N.W.L.R. (Pt. 866) 317, Tobi J.S.C. at page 367 paragraphs E – F quoted with approval the definition of “distinctiveness” as it relates to the Law of trademarks, from Black’s Law Dictionary (sixth edition) at page 473 as follows:-

“An essential element of a device claimed to be a trademark is that it identifies the goods of a particular merchant and distinguishes 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 on~v acquire distinctiveness over time ….. A distinctive mark may lose its distinctiveness over time and become generic. “”An essential element of a device claimed to be a trademark is that it identifies the goods of a particular merchant and distinguishes them ji-om 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 on~v acquire distinctiveness over time ….. A distinctive mark may lose its distinctiveness over time and become generic. “

The Learned Justice then went on to posit inter alia:-

“In the Law of trademarks, the element of distinctiveness comes before that of passing off in the way the number 1 (one) comes before the number 2. In other words, the Plaintiff must first prove to the satisfaction of the court that the trademark has a distinctive character or nature, before he can prove the movement of the trademark of the Defendant in business circles by 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 offact to be determined in the light of the circumstances of the case. It is certainly not the age of Methuselah. Once the trademark, by ji-equent use, has acquired notoriety in the trade to the common knowledge and common identification of persons in the trademark, it will be said to have acquired the character of distinctiveness. In other words, the trademark has no hiding place so much so that to the eyes of the public, people say in chorus or union, of course thahs the trademark of XYZ, as it identifies their goods”

Going by this authority, the learned trial Judge from the totality of the evidence of the witnesses and in particular the documentary exhibits tendered has in my view correctly held that the Benson and Hedges Trademark has been extensively used for the past thirty-three years to the extent that it has acquired more than enough notoriety. In line with the dictum of my Lord Tobi J.S.C. since such findings are borne out of the facts of the case, it is not the duty of this Court in its appellate jurisdiction to interVene or interfere with such findings as these are matters within the exclusive precincts of the Court of first instance which had the singular opportunity of hearing the witnesses and watching their demeanours. See Abusanwan vs. Mercantile Bank of Nig. Ltd. (1987) 3 N.W.L.R. (PI. 60) 196. The findings of the lower Court on this vexed issue of Registration of the Gold Colour of the Pack design not being perverse, I am also very hesitant to intervene.

There is ample evidence in the “Extract From The Register” in respect of the Certificate of Registration of Trademark Number 29048 that the Filing date for the acquisition of the Trademark was 10th February, 1973 and the dates of first and second renewals of the Trademark were the 10th February, 1980 and 10th February, 1994 respectively. See the extract to Exhibit E3.

There is also the evidence of the PWI at page 346 (which was not contradicted) to the effect that:-

“The Benson and Hedges brand is particularly popular with the Nigerian market and as a result of this the Plaintiff enjoys considerable god will in the brand and has come to be identified with the brand by the general public. Our products are manufactured by our two factories one in Ibadan and the other in Zaria. The Factmy in Ibadan was built pursuant to an MOU (Memorandum of Understanding) that the 1″‘ Plaintiff signed with the Federal Government of Nigeria to build $150 Million Factory in fbadan, thereby contributing directly to the growth of the Nigerian economy. “

The witness further stated that the 1st Plaintiff by this factory had employed 1,900 (One Thousand Nine Hundred) indigenous farmers and established the British American Tobacco Nigeria Foundation through which portable water is supplied to communities both in the North and South of Nigeria that suffer from shortage of water supply with its attendant diseases. The foundation has also established cassava, maize and watermelon growing small scale enterprises and prides itself as a subdiary of the BAT (British American Tobacco) Group of companies, the largest manufacturer of Tobacco in the world, with operations in more than a hundred territories and more than three hundred brands etc.

He also testified and tendered Exhibit C, the Social Report documenting the social activities of the Plaintiff in Nigeria, adding that:.

“The lSi Piaintirfis the number one tobacco manu{acturer in Nigeria and this is based on the data (.~ic)our retail Audit had recorded a consistent 75% market share of the tobacco market in Nigeria of the British Tobacco. “The Retail Audit was tendered as Exhibit D.

I have already alluded to the evidence of the PW2 and PW3 and most importantly, the evidence of the PWI, PW4 and PW5 that the gold grand is synonymous with Benson and Hedges. Thus, although in the case of Ferodo vs. Ibeto (supra) the Supreme Court upheld the concurrent findings of the Federal High Court and Court of Appeal to the effect that what was registered was “Ferodo” and all other colourations like red, black and white packaging which are commonly used by manufacturers of brake linings were in the words of Tobi J.S.c. at page 377 of the Report, paragraph F:- “Mere beautifications, ornamentations, embellishments, flourishes, or what the Court of Appeal called garnishes “, it would appear that this case can be distinguished from the Ferodo’s case where only the name “Ferodo” was registered.

In the instant case, it is clear from the Extract of the Certificate of Trade Mark No. 56629 (Exhibit 4) that the Respondents went further than Ferodo by registering the “TURN TO GOLD” slogan to buttress the Golden Colour of the pack Design of Benson and Hedges Cigarette as registered in Exhibit E2. See Exhibit H an advertorial which also emphasizes the golden synonym of Benson and Hedges as buttressed by the evidence of the PWI, PW4 and PW5.

The Defendants/Appellants called DW2, DW7 and DW9 and have gone further to tender Exhibits J – J6 the designed packs of other brands of cigarettes in gold red and black colours and they claim, as in Ferodo’s case that these are common cardboards used generally by cigarette manufacturers which evidence they also claim the Respondents did not debunk. For instance the DW2 the National sales manager of the Appellants who had acquired seventeen (17) years experience in this field stated:-

“Exhibit G is Benson & Hedges Packet. Exhibit G is not the only cigarette packet packaged in Gold. The most common pack with Gold Colour normally has red black and gold markings on it. It is not exclusive to Benson and Hedges. Cigarettes with gold pack red, black, gold markings inclusive of logo include (1) yes (2) Business Club (3) Bond Street (4) Business man (5) Dorchester. These cigarettes are in the market but (sic) not sure whether they are registered in Nigeria. “

There is also no doubt that Exhibits J – J6 are cigarettes with golden packs with red and black colourations and embellishments. The Court below was aware of these facts but held that in the instant case, the designs, the slanting or colourations of red and black markings on the gold pack are not the trademarks registered by the Respondents but the words “Benson and Hedges” and the Gold specifications of its pack. Although, I have reservations for these findings in view of the conspicuous designs in black and red on the golden pack displayed in Exhibit E2 as well as the Extract (see for instance the red inscription of “Special Filter”, “Benson & Hedges” name in black, B & H logo in black and Crest also in black), I am of the view that the court below appropriately held that the pack design was the basic idea of the Respondents’ Trademark which was duly registered and ought to be protected in accordance with section 5 (I) Trademarks Act.

Again, the Court held and this IS buttressed by the evidence of the Appellant’s marketing manager, that:-

“It is pertinent to note that none of these Gold Colour packs of the cigarettes tendered by the Defence had its registered Trademark in Nigeria and no evidence was led to establish such. Also the evidence of age of u.~e of Gold pack by these other cigarettes were significantly absent, especially as it concerns Nigerian jurisdiction. Prominent is the absence of defence of non-use o.fTrademark by the Plaintiff proprietor. ” His Lordship continued, “A proprietor ‘.I’ right to use its Trademark is always protected. The proprietor ‘.I’ rights may lapse or be unenforceable in the event of non-use. As rightly observed recently by Advocate-General Jacobs in para. 34 of the opinion in case C – 400 Michael Hoelterhoff V.I’. Wrich Freirslcben:-

“A trader registers or acquires a trade mark primarily not in order to prevent others fi’om using it, but in order to use it himself (although exclusivity o.f use is of course a necessary corollary). UI’e by proprietor is indeed a central and essential element o.f ownership. “

. . It is pertinent to note that apart from not contending that the Plaintiffs have abandoned the use of their trademark, the Defendants have also not shown that the Plaintiffs are liable to non-use nor did they plead this fact of non-use. In any case the Defendants’ cigarette pack has not also been registered and the Court below found as a matter of fact that the Defendants/Appellants application for registration has been objected to by the Respondents and that he took judicial notice of the fact that the Defendants/Appellants cigarette only came into Nigeria in 2005 and so lacks long or extensive use to acquire distinctive Trademark of Gold Colour.

Above all, and in line with settled authorities on this vexed issue of distinctiveness and notoriety of the Gold Package of the Respondents pack, the learned trial Judge had appositely cited the case of Woodward Ltd. vs. Boulton Macro Ltd. (1915) 32 Roc. 173 and S. 5 (2) of the Trademarks Act, to hold that it is immaterial that there are other cigarettes with Gold Colour provided that the Respondents who registered their Gold pack are desirous of using same as their distinctive Trademark.

Section 5 (1) of the Trademarks Act provides that:- “5 (1). Subject to the provisions of this Section and of Section 7 and 8 of this Act, the registration (whether before or after the commencement 0/ this Act) of a person in Part A of the register as proprietor of a Trademark (other than a certification Trademark) in respect of any goods, shall, if valid, give or be deemed to have given to that person the exclusive right to the use a/that trademark in relation to those goods”

By the provisions of the above seqion, it is clear that registration IS prIma facie evidence of title to the particular trademark so registered and entitles the holder or proprietor/owner of such mark to institute an action to protect its breach. In the Ferodo case (supra), Niki Tobi J.S.C. at page 377 while commenting on the provisions of the said section 5 paragraphs G and H approved the decision of Eve 1. of the Chancery Division in the earlier cited case of Woodward Ltd. Vs. Boulton Macro Ltd. and in the Matter of Registered Trademark of Woodward Ltd. (No. 100) (1915) 32 R.P.C. 173 at 197 and 199 in the following terms:-

“The authority cited on the submission that the presence of look-alike products in the market do not detract from the right 0/ the proprietor 0/ a registered trademark under section 5 of the Act. J must say right away that J entirely agree with that submission although Learned Counsel/or the Respondent had no opportunity to respond to it. The provision of the section is peremptory as it sings the voice o(finality 0/ the exclusive right to the use by a proprietor 0/ a registered trademark. As a mailer of Law, the submission is vindicated by the provision o/Section 5 (2) o/the Act.”See also the case of Jobela Nig. Enterprises Ltd. vs. Kupolati (2005) All F.W.L.R. (Pt. 268) 1728 at 1739 paras. Bc and Dyktrade LTD. VS. Omnia Ltd. (2000) F.W.L.R. (Pt. II) 1985 (2000) 12 N.W.L.R. (Pt. 860) at 8.

From all these authorities, the submissions of the Learned Counsel for the Appellants on the commonality or non-exclusivity of the use of golden pack are neither here nor there as the Respondents have duly registered their gold pack as their trademark. The PWI when crossexamined had testified after all said and done at page 420 of the Record of proceedings that:- “Exhibit E2 is a pack design – Reg. No. 60722”

The case of Oyibo vs. Tolubi (1995) 7 N.W.L.R. (Pt. 403) 480 at 489 and Overseas Construction Limited vs. Creek Enterprises Limited (1985) 3 N.W.L.R. (PT. 13) 407 cited by Learned Counsel for the Appellants may have been decided on sound legal principles but I am afraid they are not applicable to the facts and circumstances of this case as there is nothing speculative on the evidence of registration as it pertains to Exhibit E2 in the light of the evidence of PWI and Exhibit E4 which emphasize the Golden Pack design of Exhibit G. With the greatest respect the Respondents discharged the burden of proving that they registered Exhibit E2, the Pack Design which is gold.

The Learned Counsel for the Appellants also alluded in his submission to the definition of Trademark. Section 67 of the Trademark Act defines “Trademark” thus:- “Trademark” means, except in relation to certification Trademark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having a right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trademark, a mark registered or deemed to have been registered under section 43 of the Act. “

This definition appears clumsy and fraught with a lot of complications and has been criticised as being restrictive. However, Black’s Law Dictionary 7’h Edition by Bryan A. Gamer at page 1500 has given us a working definition as follows:-

“A word, phrase. logo, or other graphic symbol used by a manufacturer or seller to distinguish its products from those of others. The main purpose of a trademark is to guarantee a product’s genuiness. In effect, the trademark is the commercial substitute, for ones signature”

The definition of Trademark as given by the Supreme Court in Ferodo’s case is not different from the reproduced section 67 of the Act. Musdapher .l.S.C. delivering the lead judgment of the Supreme Court explained that:- “a mark in this connection (i.e. Trademark) includes a device, brand, heading, label, ticket name, signature. word, letter, numeral or any combination thereof” In this case, the Gold Pack of the Respondents is shown in Exhibit E2 the Certificate of Registration No. 60722 iIi line with the Supreme Court’s decision in the above cited case that what amounts to registered Trademark is the mark shown on the evidence of registration.

There is this other submission by the Learned Counsel for the Appellants that the evidence of the PWI as to the gold colour being the Respondents trademark offends section 132 of the Evidence Act which provides that:-

“Where any judgment of any Court or any judicial or official proceedings or any contract or any grant or other property has been reduced to the form of a document No evidence may be given except the document. “

With the greatest respect, the PWI neVer said anything contrary to the contents of Exhibit E2 except that “Exhibit E2″ is a pack design – Reg. No. 60722;” which facts can be gleaned from the said Exhibit. He was therefore not in breach of Section 132 of the Evidence Act. In Fortune International Bank Pic. vs. Pegasus Trading Office (2004) 4 N.W.L.R. (Pt. 863) 369 at 387 – 388 Uwaifo J.S.c. held that the proviso to Section 132 (1) of the Evidence Act permits only evidence which will not be inconsistent with the terms of the relevant contract or document. See Alii vs. Ikusebiala (1985) 1 N.W.L.R. (Pt. 4) 630; Ekwunife vs. Wayne (WA) Ltd. (1989) 5 N.W.L.R. (Pt. 122) 422; Macaulay vs. Nal Merchant Bank Ltd. (1990) 4 N.W.L.R. (Pt. 144) 283.

In Ferodo vs. Ibeto Industries (supra) at 376 paras. H – A cited by the Counsel, the apex Court held that it is not enough for the Appellants to claim that the components or chequered device formed part of the trademark but that the onus was on them to prove further that the components or chequered devices were infact registered, which the Respondents have appropriately done in this case. If the PWI did not give oral evidence, how else could she have proved the purport of Exhibit E in the face of the controversy generated by the Appellants even when the “Representation of Trademark” which is the Pack Design of the Respondents’ cigarettes was apparent? As I had said earlier, assuming the evidence of the PWI is inadmissible what of the golden colour oftherepresentation of the Trademark which is distinct from the Benson & Hedges name, crest, and slogan displayed in all other certificates and Extract. I am of the view that even in the absence of the evidence of the PWl, it was the pack design that was registered, the distinctive colour of the mark together with the slogan “Tum To Gold” having demonstrated on the balance of probability that Exhibit E2 sought to, and indeed, registered the golden pack of the Benson & Hedges as can be seen in Exhibits E4, G and H as the Trademark of the Respondents. This issue should therefore be resolved in favour of the respondents and is accordingly so resolved.

ISSUE NUMBER 2
WHETHER THE APPELLANTS’ PACK DESIGN TENDERED AS EXHIBIT F IS CONFUSINGLY SIMILAR TO THE RESPONDENTS’ PACK DESIGN TENDERED AS EXHIBIT G AND THEREFORE ENTITLING THE RESPONDENT TO THE JUDGEMENT? (GROUNDS I AND 2 OF TIlE GROUNDS OF APPEAL).

On this issue the Appellants submit that the Respondents did not elicit sufficient evidence to have warranted the Court below to hold that the Appellants’ trademarks were confusingly similar with those of the Respondents.

For the avoidance of doubt, it is necessary to reproduce the pleadings in the statement of claim of the Respondents in respect of the trademark said to have been breached by the Appellants.

On the specific distinctive nature of the Plaintiffs “Benson & Hedges” trademark in the Nigerian market, the Plaintiff averred in paragraph 30 (i-ix) thus:-

“30 The distinctive nature of the Plaintiff’s “Benson & Hedges” trade mark in the Nigerian market lies in the following: –
(i) When in use, the mark is applied on gold coloured cigarette pack; and;
(ii) The mark adopts a bold slightly slanted cap-lock type face.
(iii) The defendants “Tradition” brand of cigarette is confusingly similar to the Plaintiff “Benson & Hedges” trademark on the following grounds’:
(iv) The defendants “Tradition” marks is applied on gold pack that is near identical to “Benson & Hedges” trade mark;
(v) The word “Tradition” is depicted in the same slightly slanted type:face as the Plaintiff Benson & Hedges; and
(vi) The colour represented by the d~fendanrs “Tradition” brand of cigarette are also gold, red and black.
(vii) That, as a result of the foregoing and combined with the fame and reputation of the Plaintiff’s “Benson & Hedges” trademark in the Nigeria Market, if the defendants “Tradition” is allowed to be used in the Nigeria markets on gold featuring wording that uses the same slanted type face as the “Benson & Hedges” trade mark, conji,sion in the minds of purchasing public would be inevitable, particularlyfor those members of the public for which English is not their first language or the illiterates.
(viii) That, as a result of the foregoing and combined with the fame and the reputation of the Plaintiff’s “Benson & Hedges” trademarks in the Nigeria market, members of the public are likely to erroneously infer some connection between the defendants and the plaintiffs by notice of the similarity of the pack designs of their cigarettes.
(ix) As a result of the similarity of the defendants “Tradition” brand of cigarette and the Plaintifft “Benson & Hedges” trademark, when in use, the purchasing public is likely to confuse and assume that the good~ of the defendant are those of the plaintiffs, or that the Plaintiffs have endorsed.

“31. The irifringing products are confusingly similar copies not only of their designs but also of the packaging and presentation of the Plainriff’s “Benson & Hedges” brand of cigarette thus giving the impressiOn that those copied products are the plaintiffs’
products. “

In paragraphs 33, 34, 35 and 36 the Plaintiff pleaded that they would lead evidence to show the following: –

I. That the marketers and distributors of “Benson & Hedges” have been misled and deceived by the Defendants and their agents into believing that the “Tradition” brand of cigarettes are indeed products of the Plaintiffs;

2. That the Defendants and their agents have been passing-off the “Tradition” brand of cigarette as the Plaintiff’s “Benson & Hedges” by referring to it as “Small Benson” and giving the impression that “Tradition” is a product of the Plaintiff;

3. That some marketers and distributors of “Benson & Hedges” have sold to its Customers the ‘Tradition” products in the mistaken belief that it was the product of the Plaintiff; and

4. That some of its customers have been complaining about the standard of the “Small Benson” they have purchased from its marketers and distributors and are losing a lot of patronage and good will or its “Benson & Hedges” brand of cigarette in their regard. The question now is whether from the testimonies of the witnesses called and the documentary exhibits tendered the Plaintiffs/Respondents had proved that the Appellants infringed their distinctive trademark or that Tradition brand from its pack design is so confusingly similar with the pack design of the Respondents’ Benson and Hedges brand so as to mislead customers and marketers of the Benson and Hedges cigarettes in believing that the ‘Tradition’ brand of cigarettes produced by the Defendants/ Appellants is Benson & Hedges cigarettes or a product of the latter’s manufacturers.

Before going into the evidence elicited by the Plaintiffs/Respondents witnesses, it is pertinent to note that like all other civil actions, the burden of proof lay squarely on the Plaintiffs/Respondents to establish on the balance of probabilities that the Defendants/Respondents infringed their trademark and passed off the Defendants/Respondents goods for those of the Plaintiffs/Respondents. It has been held in Ferodo vs. !BETO INDUSTRIES LTD Supra at page 366 paragraphs G-I–I.Where Tobi .I.S.C. again pointed that by the combined effect of Section 136 and 137 of the Evidence Act, the burden is on the Appellants who were the Plaintiffs in the lower Court to prove that the trademark of the Respondent is an infringement to theirs and that the act of the Responden s amounted to a passing-off. See UDIH VS. IDEMUDIA (1998)4 NWLR (Pt. 545)231; ODUKWE VS. OGUNBlYl (1998) 8 NWLR (Pt. 561) 339; DURU VS. NWOSU (1989) 4 NWLR (Pt. 113) 24; and ODOFIN VS. ONI (2001) 13 NWLR (PI. 701) 488 c.t.e.

I had already held on issue Number One relying on section 9 (2) of the Trade Marks Act, that the PlaintiffslRespondent had from Exhibits E2 and the Extract there from, the evidence of the PWI – PW5 established that the Benson & Hedges pack had acquired the distinctiveness and notoriety required to sustain a claim against the defendants if they (Defendants) so
infringed their said trade mark.

What is left here to determine is the proof of infringement or passing-off. In this eonneetion, it is necessary to reproduce the provision of section 5(2) of the Trademarks Act which state as follows:-

“(2) Without prejudice to the generality of the right to the use of a trade mark given by such registration as aforesaid, the right shall be deemed to be il)fringed by any person, who not being the proprietor of the trade. mark or a registered user thereof, using it by way of the permitted use, uses a mark identical with it or so nearly to deceive or cause confusion, in the course of trade, in relation to any goods in respect (~f which it is registered, and in such a way as to render the use of the mark likely to be taken either-

(a) as being used as a trademark; or

(b) in a case in which the use is use upon the goods or in physical relation there to or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trademark or to goods with which such a person as aforesaid is connected in the course of trade.”

Whereas in this case, there is controversy as to whether or not there was infringement or passing-off of the Plaintiffs/Respondents’ trademark by the Appellants or that their marks are confusingly similar as alleged by the respondents, the judicial test has always been to place the disputed marks side by side and compare them without necessarily looking at the associated features or get-ups and other embellishments, See BELL & SONS CO. LTD VS. AKA & DRS (1972)1 ALL NLR (Pt.1) 34 at 39.

In ALBAN PHARMACY LTD. VS. STRELING PRODUCTS INTERNATIONAL INC. (1968) ALL NLR 292,. Ademola C.J.N stated the position of the Law thus at page 304: – “This is sometimes stated that the !f!!.!:. must be considered as well as the eye; and this is generally shown in the confusion which may arise in the course of telephone conversation and this is a point that must be borne in mind”

This point was further emphasised by Tobi lS,C in his contribution to the judgement in FERODO VS. IBETO INDUSTRIES (Supra) at page 374 paras A-C inter alia:- “In determining whether two marks ate identical or of close resemblance within the provision of section 13 of the Act and therefore not registrable under Section 11, two senses of the human being are employed. Th~se are the sense of the ears and the eyes to arrive at a conclusion on the average memory arising from general recollection. 1n the exercise of comparison not only the visible inspection is important, the sound is equally important. The sound which is assimilated by ear is important when a telephone conversation takes place”

In the cases of Coca-Cola Company of Canada Ltd. vs. Pepsi-Cola Company of Canada Ltd. (1942) (ALL E.R. 615; Magdalena Securities Ltd’s Application (1931) 48 RPC 477; Alban Pharmacy Ltd. Vs. Sterling Products International Inc. (Supra); Beecham Group Ltd vs. Esdee Food Products (Nig.) Ltd (1985) 5 NWLR (Pt. J1) 112; the Courts decided that either by similarity of sound of the marks or the look, they were likely to deceive customers or members of the public.

There is also no doubt as the Learned Counsel for Respondents has submitted, citing In The Matter Of Application For Registration Of A Trade Mark By Sandow Ltd (J 914) 31 R.P.C. 196 quoted in Alban Pharmacy Ltd. Vs. Sterling Products International Inc. (Supra),and Ferodo vs. Ibeto (supra), that in determining whether a trademark has infringed another, it is the offensive or offending trademark that is considered such that whether the person who sees the offending trademark in the absence of the one breached, and in view of his general recollection, the nature of the offending trade mark is likely to deceive him into thinking that the trademark before him is the authentic one.

Again, it is pertinent to note that in order to found infringement, the intention of the Defendant needs not be fraudulent or deliberate. Thus in RE Egg Products Ltd’s Application (1922) 39 RP.C. ISS; the view was expressed that the phrase “likely to deceive” as used in section 5 (2) of the Trademarks Act, does not necessarily imply fraud, or anything of like nature on the part of the Defendant but that the relevant consideration is the likely effect of the trade mark on members of the consuming public.

Thus, where the mark is likely to confuse them, the likelihood of deceit is deemed to be present. See BcIl & Sons Ltd. Vs Aka & OR8 (supra). It has further been held that the above factor is of paramount importance particularly in Nigeria where a considerable number of her citizens are illiterates, more so, when what will not deceive an educated, diligent and careful purchaser may well deceive an illiterate. See THE UNITED KINGDOMS TOBACCO CO. LTD. VS. CARRERAS 16 N.L.Rl.

Going by the above authorities and the tcst above formulated, we shall now have recourse to the evidence of the Respondents, and the defencc proffcred by the Defendants/Appellants in order to determine whether it was proper for the Court below to give judgement to the PlaintiffslRespondents. At page 381 of the Records ofProcee4ings the PW1 (Mrs. Folashade Morgan) testified that they learnt that a Tobacco manufacturing company was to commence the immediate manufacture of cigarettes at its factory and they consulted their Lawyers because the pack design of “Tradition” cigarette which they had earlier heard were sold in IIorin, Ibadan, Kano and Sokoto in the wholesale market, was confusingly similar to their (Respondents) Benson
&Hedges cigarette pack.

In an attempt to protect their rights that were being infringed, their Lawyers were consulted to take legal action against the Appellants. The Respondents then purchased samples of those “Tradition” cigarettes from those centres in which they were sold. She tendered one of the samples of the pack of cigarettes that infringed on their (Respondents’) rights and same was admitted and marked Exhibit E, She also tendered a packet of Benson & Hedges cigarette which was admitted and marked Exhibit G.

According to the witness, the similarities between Exhibit F (the “Tradition” cigarette pack) and Exhibit G (Benson & Hedges pack) is that: –
(I) Exhibit F adopts a Gold Pack;
(2) The Slanting type face of the names of the cigarette in Exhibit F;
(3) The Use of the colours Gold, red and black in a manner that copies in the position and use of those colours in Exhibit G

She maintained that the calculated effect of this is to create confusion in the minds of the consumers into thinking that they are purchasing Exhibit G and also that it implies some connection between the two products as most of the consumers are illiterates and could only identify cigarettes packs by the colours represented in the pack and not by their brand names. She further stated in her evidence – in-chief that even when the consumers are not illiterates, because of the confusingly similar packs, a consumer would believe he is buying a by-product of Benson & Hedges or “somehow connected” to Benson & Hedges Product. The witness related how well known the Benson and Hedges products are in Nigeria and how they advertise same with emphasis on the distinctive pack design, via print and electronic media, musical shows, posters etc. bne of the posters which she tendered as Exhibit H. She added that an Anton Pillar order was obtained and they were able to retrieve the infringing products from the markets particularly in Horin and Ibadan. Earlier on the witness had tendered the following Exhibits:-

(a) Exhibit E2 Trademark Registration Certificate Number 60722 with the accompanying extract for the Pack Design.
(b) E3 Trademark Registration Certification No. 29048 with the accompanying Extract for the Design and
(c) Trade Mark Registration Certificate No. 56629 with accompanying Extract for the Slogan “TURN TO GOLD”- Exhibits E4.

Under cross examination she stated that Exhibit E I is the Trademark registration for Benson and Hedges; E2 for the Pack Design, E3 for the Crest Design; E4 for the Slogan “Turn of Gold” while Exhibit F is the Pack of “Tradition” cigarette which was purchased from one of the centres of sale she had earlier mentioned.

On further cross-examination the witness stated thus:-

“I have a fair knowledge of Nigeria tobacco market. I am not aware of any other Nigerian cigarette Pack in Gold colour with black and red.” When questioned thus: – “Does any of the Exhibits in Exhs. E, EI, E2, E3 and E4 show colours were registered?” She replied “Yes, they show colour were registered.”

PW2, Kehinde Oluwole, a business woman who se1ls cigarette at Agbeni market Agbeni in Ibadan, testified that she came to know the I SI Defendant/Appellant in 2004 when the 151 Defendant’s/Appellant’s sales manager brought “Tradition” cigarette to their (witness’) markets in Agbeni in Ibadan and intimated her that: “this product is their product that is small Benson and Hedges. I took a look at it and is very much like the Benson and Hedges I sell. I started selling to customers that this is small Benson and Hedges as the Sales Manager of “Tradition” cigarettes told me. My customers brought back the Tradition cigarette which I sold to them as small Benson & Hedges I normally sold to them. So most of my customers stopped buying cigarette from me because of “Tradition” I sold to them as small Benson. So I stopped selling Benson”.

She also identified Exhibits F the pack of “Tradition” cigarette which she sold as small Benson.

Under cross-examination she stated that both Exhibits G and F are of the same size and that Mr. Niran is the Sales Manager that sold the cigarette to her and it was when the customers complained of the quality of small Benson that she contacted the said Mr. Niran and the said Mr. Niran informed her that he was working for the Defendant.

PW3, Alhaja Oluwakemi Akande, on her part also testified that she sells various brands of cigarettes amongst which were Benson & Hedges (Exhibit G). She identified Exhibit F as the “Tradition” cigarette which was brought to her through Mr. Niran who had invited her to their office at ITC and asked her if Benson & Hedges was selling very well and she replied in the affirmative. Later Mr. Niran sent three of his boys to her shop to purchase a roll of Benson after three months which they brought Tradition cigarette to her and informed her that the taste is somehow like Benson and Hedges. Two Or three days after they had sold the “Tradition” cigarettes to their customers, the said customers returned them and complained that the taste was not good and that the cigarette was counterfeit of Benson. Since then they refused to buy cigarettes from her and it was then she realised that “Tradition” cigarettes were not manufactured by the 151 Plaintiff.

Under cross examination, she stated that apart from Benson and Hedges that was the first packet Exhibit F pack she was seeing in Gold colour since 1985.

As for PW4, Francis Adekoya Otepola, a marketing manager of an Electronic shop in Egbodanyo – Horin, he identified the said Exhibit G as the Pack of Benson and Hedges which he had smoked for the past 13 years. He also identified Exhibit F called “Tradition” cigarette which he saw for the first time in 2005 along Post office station Roundabout having bought two sticks from one Mallam who was his Benson and Hedges customer. As he lit the cigarette the taste was not the same as Benson & Hedges and he went back to complain and the Mallam told him that the sticks he gave to the witness was the same as Benson as they called it “Small Benson and Hedges”.

The witness demanded for his money back and the Mallam then gave him the authentic Benson and Hedges cigarette. A month later, he went back and said Mallam gave him “Tradition” instead of Benson and when he again lit it, he discovered the difference in taste and upon going to complain, the Mallam still related to him that that was small Benson and Hedges. Having returned the cigarette and Mallam gave him the authentic Benson and Hedges which he put inside the “Tradition” pack he then saw the “Tradition” pack for the first time. According to him, “it looked very much like Benson & Hedges and so I asked him is it because it looked like Benson and Hedges that they call it small Benson and Hedges and the Mallam answered “yes”. In my 13 years of smoking Benson and Hedges I have never seen any other pack designed in Gold, red and black like Benson and Hedges.”

When cross examined by Counsel for the Defendants/Appellants, he replied that his interest in the case is that he smokes Benson & Hedges and there is a difference between Benson & Hedges and “Tradition”. When asked to pronounce Exhibit G he pronounced same as “Benson and Hedges” whereas he pronounced Exhibit F as “Von Eiken Tradition” adding that the two names do not sound alike. He finally told the Court under cross examination that in all the three times he went to buy the cigarettes, he told the Mallam that he wanted to buy Benson and Hedges same as in all 13 years he had smoked Benson and Hedges.

The relevant portion of the PW5,Oloruntoba Olorunmaiye, a smoker of Benson and Hedges are that he indentified Exhibit G and F the cigarettes in question and related how he demanded for Benson and Hedges from a Mallam but he was given Exhibit F (Tradition) and upon lighting same which tasted differently from Benson & Hedges, he complained and the mallam again explained that that was small Benson and Hedges but changed it to Benson and Hedges. According to him, “the Gold Pack is synonymous with Benson and Hedges and so whenever a Gold pack is brought out and a stick given me, I don’t have to look at the name on the pack or cigarette. I look at the pack and see What is written on it.”

Under cross-examination he also pronounced Exhibit G as “Benson and Hedges” and Exhibit F as “Von Eiken Tradition” admitting further that the names do not sound alike.

It is worthy to note that the Defendants/Appellants disputed the distinctiveness of the Plaintiff/Respondents’ Benson & Hedges Design pack in paragraph 8 of their Amended statement of defence and with particular references of paragraph 26, 28, 30 and 31 of the PlaintiffslRespondents’ statement of claim contending that what the Respondents registered as their Trademarks were “Benson & Hedges” (name), “Benson & Hedges” logo, symbol or Crest and the advertising logo “Turn To Gold” and no more.

In paragraph 9 of the amended statement of defence, the Appellants contended that gold, Red and Black designs of the Plaintiff/Respondents packaging are not distinctive of the Plaintiffs alone as the GOLD, RED AND BLACK colourations were not registered by the Plaintiffs/Respondents at the Registry of Trademarks.

Further more, they averred in paragraph II of the Amended Statement of Defence that the word “TRADITION” does not have any semblance with the phrase “BENSON & HEDGES” neither did it have any similar pronunciation sound with “Benson & Hedges”. They also averred in paragraph 13 thereof that the Gold Colour Cardboard used for the pack for the Plaintiffs’ “Benson & Hedges” Brand of cigarettes is readily available in the Nigerian markets for buyers and thus the Plaintiffs cannot lay exclusive right to same.

Finally, the Defendants averred in paragr, aph 14 of the Amended Statement of Defence that the packaging design in Gold, Red and Black are common in the trade of cigarettes in Nigeria and that they shall contend that several other brands of cigarettes in the Nigerian market are packaged in Gold packs with letterings inscribed on the gold packs in black and red colours which by paragraph 10 of the statement of Defence are mere decorations. It would be recalled as I had earlier noted that the DWI testified that: “Exhibit G is a cigarette pack of Benson and Hedges Special Filter. The two cigarette packs and their names do not sound alike and do not look alike. “

Under cross-examination, he averred thus:-

“Exhibit F is gold pack with black Gold and red markings. Yes I still maintain they do not look alike because the markings. the positioning of the markings all are different inclusive of the Crest and logo markings. ,. (page 443 of the Record of Proceedings. At page 444 the DW2 Abimbola Olagbeso who had worked in the tobacco industry for 17 years testified in-chief that Exhibit G is the Benson and Hedges packet but that same is not the only cigarette packet packaged in gold, the most common pack of cigarettes being always in gold. His experience shows that cigarette packs with Gold Colour normally have the red, black and gold labels or markings on them. Those colour markings are not exclusive to Benson and Hedges. He enumerated the various brands of cigarettes packaged in gold with red, black and gold markings to include Exhibits J to J6 which were tendered, admitted and so marked at the trial although he admitted not being sure whether all those brands have been registered at the Registry of Trademarks.

Under Cross-examination, he stated thus:-

“I can distinguish Exhibit G and F by their names and also by their logo. I can distinguish the sticks also because their names are written on the sticks (sic) Illiterates smokers can identifY the cigarette they smoke by their brand names. They may not know the logo or their manufacturers but certainly they know the brand name “,

As for DW6, a cigarette seller, Kikelomo AgbooJa, her evidence in Chief was that illiterate buyers also pronounce the names of the cigarettes they want to buy just like any other person even though they may not pronounce such names well. Also smokers normally take the sticks from the packets themselves and illiterate smokers can identify or detect the brand of cigarettes through their tastes after lighting and smoking same. She distinguished Exhibit G (Benson and Hedges Cigarettes which she sells) from Exhibit F (Von Eiken Tradition) which she does not sell in the following terms: “Exhibits H – F Gold Colour is deeper than the gold Colour of Exhibit G but both had black and red markings. “

To buttress the fact that there are other brands of cigarettes with gold, black and red colour packs, she enumerated such brands as “YES”, “Business Club”, London Brand” and “Dorchester” and others she could not remember. She identified Exhibits .I -.16 as those brands of cigarettes.

However, when cross-examined, she stated that Exhibits G and F have their “International” markings, the warning sign of the Federal Ministry of Health, names, Crest and logo on the same side of the pack ditto the date of setting up of the brands. She further averred
that the back ground of Exhibit G’s Cap is Gold while that of Exhibit F is light Gold but that the Cap of Exhibit G and Exhibit F are not almost similar.

DW7, Latifat Yusuf, on her part testified that both colours of Exhibits F and G are gold and they both also have red and black. She confirmed that there are other many packs of cigarettes in gold packs like Exhibits .I- .16. DW9, the last witness for the Defendants/Appellants, Charles Makuwe the Technical Consultant for the Defendants/Appellants gave an analysis of the characteristics of the Benson and Hedges and “Tradition” cigarettes and his experience in the tobacco industry in both the Respondents and Appellants companies.

When Cross-Examined at page 480 – 481 of the Records, he stated thus:

“There are chances thaT anyone could make mistake as to the identity of both Exhibit G , . and Exhibit F Yes both packs are Gold. They both have writings in red on the pack of Exhibit F and Exhibit G. The names of Ihe cigarelles (Exhibil F & Exhibil G) are bolh slanting frontally. The bar codes are on Ihe same side of bolh Exhibit F and Exhibit G. The slanling type red names of bolh Exhibit F and Exhibit G are on bolh sides. ”

When re-examined, he then stated at page 481 thus:- “Benson and Hedges is wrillen in black on Benson and Hedges pack – Exhibit G. “Tradition” is written in red on Tradition Pack Exhibit F (lronl view). The name Benson and hedges is just below the lid in Packet cover while Tradilion is in the middle of the pack On the side view, “Tradition” is wrillen red and Benson and hedges wrillen in black On Ihe back view, Benson and hedges is written in black. Tradition is wrillen in red. “

The learned trial Judge in the bid to resolve this issue as to whether the Defendants/Appellants infringed the Gold Pack Trademark of the Plaintiffs/Respondents, carried out in my view a very critical analysis of the evidence of the parties laced with sound judicial authorities and at page 27/625 of the Records cited the Supreme Court case of FERODO LTD. VS. IBETO LTD. (Supra) on how infringement of Trademark is ascertained and posited rightly in my view that even though in deciding whether two marks are confusingly similar, the marks alone must be considered, divorced from associated features or get ups, evidence is nevertheless admissible to show which of the features shown on the Register of Trademarks are inessential so as not to be important in deciding the question of infringement.

He also rightly held that what the court considers in such determination of infringement is whether or not there is a semblance between the basic idea of the Trademark allegedly infringed and the other trademark so as to give rise to infringement by the other trademark.

Against this background, the learned trial Judge then held that the designs, slanting or colourations of red and black markings on the Gold pack on which the Defendants sold its cigarettes are not in his opinion an infringement of the Plaintiffs’ trademark because the basic idea of the Plaintiffs’ trademark as shown on their pack is not the designs or red and black markings/colourations but the words “BENSON & HEDGES” and the “GOLD SPECIFICATIONS OF ITS PACK”. In the words of the learned trial Judge:-

“The Bensons & Hedges words were nol used by Ihe Dejendanls bul Ihe Gold Colouring/Specification pack or something similar to Gold Colouring/ Specificalion pack was used by the Defendanls. The Plaintifft registered the gold Colouring pack of Benson & Hedges whose Trademark Cerlificate of Registralion is No. 60722 and tendered in Ihis Court during hearing as Exhibit E2 and ha~ been in long or extensive use (going by Trademark Certificate) since 1999 and even in 1973 going by Exhibit E3, Trademark Registralion Certificale No. 29048.”

At page 34/632 of the Record of Proceedings the Court below also reflected on Section 5 (2) of the Trademarks Act and posed the. question as to what is the right of the Plaintiffs/Respondents who are proprietors of Exhibit E2 -the registered Trademark of the Gold Colour Benson & Hedges as has been established by the evidence of the PWI and Exhibits E, E3 and E4. After relying on the cases of Woodward Ltd vs. Boulton Macro Ltd e.t.c (Supra); Alban Pharmacy Ltd. vs. Sterling Products Int. Inc. (1968) 1 All N.L.R. 300 and Beecham Group Ltd. VS. ESDEE FOOD PRODUCTS NIG. LTD (1985) 3 N.W.L.R. (Pt.

II) 112 he held that when the unregistered Gold pack of “Tradition” cigarette is compared with the registered Gold Pack (Exhibit E), it is deceitful and confusing.

At page 635, having agreed that the Plaintiffs Benson & Hedges Gold Pack is in itself “sufficiently arresting” to be likely to be taken as having trademark significance or “basic idea of Trademark” by the relevant customers and non-customers. the learned trial Judge finally held on this vexed issue of infringement inter alia:-

“I therefore do not hesitate in holding that the Gold Pack specification of the Defendants “Tradition” cigare/les is infringing to the Plaintiff5′ registered Trademark Gold Specification Pack of “Benson & Hedges. ” As earlier stated the red and black markings on the Gold Pack are inessential and not so imporTant in deciding questions of infringement of Trademark. They are what I may classilY as mere decorations. The red and black markings do not form part of the Trademark registered as No. 60722 in class 34 and tendered in this court as Exhibit £2.”

The learned trial Judge then went on to grant the declarations that the Respondents are the exclusive proprietors of the Trademarks Registered as Nos. 29048, 53107, 56629, 60722 and 17974 and a perpetual injunction restraining the Appellants from infringing the Respondents proprietary rights to the exclusive use of the afore-stated Trademarks and further from importing, advertising for sale, offering or selling or supplying any products or goods bearing the word ‘Tradition” as to be calculated to mislead the public to believe that the products are products of the Plaintiffs.

I adopt the findings and conclusions of the learned trial Judge and I am also of the considered view that the PlaintiffslRespondent from the totality of the oral and documentary evidence tendered have proved that they were the exclusive owners of the Gold Pack Trademark for purposes of manufacturing and marketing of their Benson & Hedges cigarettes. As the Court below rightly held, it is immaterial that the other cigarette manufacturers are using gold package and red, black and gold markings. The fact is that only the Respondents have a registered trademark in the nature of Exhibit E2 and ought not to be interfered with in the use of such Trademark. That is the essence of Section 5 (2) of the Trademarks Act.

The authorities earlier cited have shown that the fact that the evidence of the DWI and DW7 did not show that there was any intention to infringe is immaterial. See in Re: Egg Products LTD’s Application (1923) 39 R.P.c. ISS. Where the Court rightly found in my view that the gold pack of the Defendants when seen in the absence of the Benson and Hedges pack is likely to deceive or confuse the public, infringement has been proved as the likelihood of deceit does not necessarily imply fraud. See also Bell & Sons Co. Ltd. vs. Asa & Ors. (1971) 1 ALL N.L.R. (Pt. 1) 34 at 39 which held that where there is likelihood of the public being confused, the likelihood of deceit can be inferred.

As far as the two packs Exhibits F and G are concerned, even though a literate person may not be deceived because of the markings, names and location of the crests, an illiterate and even an undiscerning literate who prima facie encounters Exhibit F, would definitely mistake same for a packet of Benson and Hedges. See the’ case of the United Kingdom Tobacco Co. Ltd Vs. Carreras (1931) 16 N.L.R. 1. On the whole, this first arm of Issue Number 2 is resolved against the Appellants.

The learned trial Judge was right to have dismissed other claims as being too vague particularly as regards distruction of the infringing Exhibit F.

PASSING OFF
Turning to the claim in passing-off; the tort of passing off consists of the making of some false representation to the public, or to a third person(s), which is likely to induce them to believe that the goods and services of another are those of the Plaintiff. The misrepresentation may be done by imitating appearances of the Plaintiffs goods or by use of Plaintiffs trade name or mark.

The applicable test is not whether a customer can distinguish the two marks when placed side by side but whether when he has only his own recollections of the one he likes to go by, he may not accept the other in mistake for it. See the U.K.T. CO. ltd vs. Carreras Ltd (Supra) at page 4.

As Jessel M.R. appropriately put it in Re: Worthington’s Trademark 14 Ch. D. 10:- “If the proprietor of a business is honestly desirous of distinguishing his goods by a trademark from the goods of everybody else, he will choose a mark not in the slightest degree resembling that of anybody else because his anxiety and desire must be that the public shall by no possibility mistake his goods for the good\’ made by anybody else. ,. Thus, an action cannot lie where the actual marks are so different as to be in capable of causing confusion. See CARRERAS case supra. As had earlier been said the tort of passing-off is a Common Law action preserved by section 3 of the Trademarks Act and is normally appropriate for the protection of unregistered Trademarks or marks which validity is questioned Trebor Nig (LTD) Vs. Associated Industries LTD (1972) N.C.L.R 471; where, the Defendant as in this case allegedly imitated the presentation and packaging of the Plaintiffs product in a manner likely to cause confusion and it was held that since these were nonregistrable features, the Plaintiffs action was for passing-off.

In MC CULLOCK VS LEWIS A. MA \’ (Producc Distributor) (1947) ALL E.R 845, it was held that for passing off action to be maintainable, both the Plaintiff and Defendant should be involved or engaged in same trade or similar business since passing off is primarily concerned with unfair competition between traders rather than deception or otherwisc of the Defendant’s conduct per sc; even though the possibility of deception is one of the factors to be proved in an action for passing off. See Contra British Legion \’s. British Legion Club Ltd. (1931) 49 RP.C. 555.

The essential elements of this tort which must be proved by the Plaintiffs/Respondents in order sustain their claim are:-

1. That they have acquired a reputation in respect of the trademark; in other words, that the mark has become distinctive of their product and their customers and public have come to associate the mark with their business.

They also have to adduce evidence of their business activities such as the nature of goods they deal in, the volume of sales and the geographical spread it covcrs as well as the manner in which they have used their trademark, which members of the public have come to associate exclusively with them. See Niger Chemists Vs. Nigeria Chemists (1961) 1 ALL N.L.R 171.

In the case at hand, the Plaintiffs had called the PWI who gave evidence of the reputation that the Gold Trademark, nay Benson an9 Hedges, has acquired all over the world and in particular in Nigeria where they have invested massively in media publicity for their Benson and Hedges brand of cigarette, their massive contribution to economic development in Nigeria pMicularly in the Agro-allied sector by employing about 1,900 famers; the provision of portable water to communities and opening of cassava and watermelon farms/small scale enterprises by virtue of the BAT Foundation, having been in this country for more than 33 years. They have also elicited evidence of the number of factories opened and the provision of health facilities in the North and Southem parts of Nigeria.

Besides, they have tendered Exhibit C the Social Report which shows that they control 75% percent of the tobacco market in Nigeria and Exhibit D the Retail Audit Rep011 both which show their positive impact on the Nigerian economy. See also Exhibit H one of the Advertorials for their Gold Brand which was tendered and admitted. See also PW4 – PWS who testified that Gold was synonymous with Benson and Hedges.

2. The second element that must be proved is that the Defendants had engaged in acts which are capable of misleading the Respondents’ customers or members of the public into believing that the Defendants’ business and that of the Plaintiffs are connected. In this case, the claim of the Plaintiffs is that the Defendants misrepresented their “Tradition” cigarette as “Small Benson” which has misled customers of Benson and Hedges to buy the said ‘Tradition” Cigarette as Benson and Hedges and it was not after they had smoked and found out that the taste of the misrepresented cigarette was 110t that of Benson and Hedges that they realized the differences. This ordinarily was a patent case of passing-off. Again, where the Defendants marketed the “Tradition” cigarettes with trademark (Gold Package and other Colours and get-ups) which was deceptively close to or/an imitation of the Benson and Hedges Pack Design and outward appearance, the Plaintiffs/Respondents ought to be entitled to judgment. After all, in Defacto Works Ltd. vs. Odumotun Trading Co. (1971) 1 U.I.L.R. 417, the Defendant who sold bread in wrappers with colours and designs similar to those of the Plaintiffs bread, were held liable for passing-off. See also Trebor (Nigeria) Ltd. vs. Associated Industries Ltd (1958) L.L.R. where it was also held that the wrapper used on the Defendant’s product was so similar to that of the Plaintiff as to be likely to deceive.

3. The Plaintiffs/Respondents have also to prove one other essential element of this tort which is the likelihood of deceit. In other words, the Plaintiffs/Respondents ought to prove that the Defendant’s conduct was calculated to deceive but not necessarily that there must be evidence of actual deceit before the requirement can be met. Once it can be shown that there is likelihood or possibility of deception, the t0l1 is consummated and the intention of the Defendants is irrelevant.

The test as has been said earlier in deciding the likelihood of deceit would depend on the peculiar facts and circumstances of the case. For instance, where, as in this part of the country, the likely purchasers of the products in question are illiterates, the likelihood of deception is very high. That explains why the Defendants could misrepresent their “Tradition” cigarettes as “Small Benson and Hedges” and they were bought as such until the taste sold same out as counterfeit Benson and Hedges. In U.K. TOBACCO VS. CARRERAS (supra) at 121 the Supreme Court held that the fact that there was a large population of illiterate prospective purchasers of the product, the higher the probability of the likelihood of deception.

In that case, the Plaintiffs were proprietors of a brand of cigarettes called “Bandmaster” and part of the device on their label was the picture of a white man in uniform of bandmaster. The cigarettes commanded large patronage in Nigeria amongst all classes of persons including the uneducated and illiterates amongst whom the brand was popularly called “Oloyinbo” meaning “having the picture of a white man.” The defendants had begun to put on the market a new brand of cigarettes which was designed to attract the same customers and which they called “Barrister”. Part of the device was the picture of a Whiteman wearing a barrister’s robe among other similarities to the label of the Plaintiff’s product such as double vertical lines dividing the two halves of the label and the same first two and last four letters of the name. There were however some dissimilarities as to the size of the letters and the position of the figure of the Whiteman. The Plaintiffs alleged that the get-up of the Defendants’ cigarettes so resembled theirs as to be likely to deceive purchasers and brought the action to restrain the Defendants. The Court then posed two questions:-

(1). “can it be said, this appellation is not equally descriptive of Defendants’ mark;

(2) that an illiterate customer having asked for “Oloyinbo” and having been shown the Defendants’ cigarettes would be in a position to notice the difference and say “that is not what I want?” The Court held that unless these two questions are answered in the affirmative, the Plaintiffs are entitled to succeed and having found out that none of the questions could be answered in the affirmative, judgment was entered for the Plaintiff.

It should be noted however that although where the prospective consumers of a product are literate their tendency to be deceived by misrepresentation is low; the standard of awareness expected of a purchaser is not that of an observant person making a careful examination, but that of a casual and unwary customer.

It is against this background that we shall consider the judgment of the learned trial Judge on the basis of the evidence led by the Plaintiffs to prove their claim.

At pages 638 – 640, the learned trial Judge copiously reviewed the case of the parties and was of the view that evidence as to how the Defendants passed-off their goods as those of the plaintiffs and what would be the likely reactions of the average smoker were sketchy and did not induce him to find for the Plaintiff. He recalled that all the Plaintiffs’ witnesses were merely talking about “Tradition” cigarette (Exhibit F) being called “Small Benson & Hedges” on the prompting of the Defendants’ employee marketing manager, Mr. Niran which testimonies were not sufficiently arresting. According to the learned trial Judge, apart from Mr. Niran not being called the PWI and PW2 by their own showing, admitted that the said Mr. Niran did not claim to be an employee of the 1st or 2nd Plaintiff but to be I$I Defendant’s staff and even took the PW2 to his office.

Again, His Lordship highlighted the evidence of the PWI and PW2 who were sellers of cigarettes for twenty years and knew the offices of the Plaintiffs and the Defendants and held that they were clearly not deceived by Mr. Niran’s conduct if at all he existed. He believed the evidence of the Defendants and their witnesses as having created doubt in the mind of the Court as regards whether the Plaintiffs’ witnesses were deceived.

As for the evidence of the PW3, PW4 and PW5 who were smokers, the learned trial Judge again held that they did not themselves pick “Tradition” cigarette (Exhibit F) instead of Benson and Hedges (Exhibit G) based on false representation but that they merely discovered that the tastes were not the same, meaning that the “Mallam Sellers” of Exhibit F may have adopted a clever market strategy or were just being mischievous or embarking on sharp fraudulent practice. He was unable to see false representation of Exhibit F on the part of the Defendants and accordingly held that the passing-of Hails. On the ancillary issue of the Federal High Court lacking jurisdiction to entertain this suit and that the decision of the Supreme Court even though obiter is binding on this Court, in determining this sub-issue, there is no doubt that the court should be bound even by the obiter dictum of the Supreme Court in the absence of a decision from the apex Court over ruling itself, by virtue of the hierarchical structure of Courts. It has to be noted however that obiter dicta usually do not have binding force. See Yusuf vs. Egbe (1987) 2 N. W.L.R. (Pt. 56) 341.

However, there are occasions when obiter dictum may be binding as was decided in Mrs. Macleans VS. Inlaks Ltd. (1980) 8 – 11 S.C and Ifediorah VS. Uwe (1988) 2 N.W.L.R. (Pt. 74) 5.

It seems to me that by the combined effect of Section 251 (I) (I) which vests the Federal High Court with exclusive jurisdiction to hear: (I) civil causes and matters in respect of “any Federal enactment relating to copy right, patent. designs, trademarks and passing offs, industrial designs and merchandise marks, business names, commercial and industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards”; and (2) Section 3 of the Trademarks Act which provides thus:-

“No person shall be entitled to institute any proceeding to prevenl. or to recover damages for the infringement of an unregislered trademark; but nothing in this Act shall be laken to affect rights ofaclion againsl any person for passing off goods as the goods of another person or the remedies in respect thereat” the submission of the Learned Counsel for the Appellants that

Ayman Enterprises Ltd. vs. Akuma Industries Ltd. (2003) 13 N.W.L.R. (Pt. 836) page 22
& at Ratio 2 even though an obiter dictum is still binding on this Court, is no longer tenable.

In the first place the decision has been expressly overruled by the Constitution of the Federal Republic of Nigeria, 1999 and the statute governing Trademarks in this Country. Again, the Supreme Court has also overruled itself by the Judgement in Omnia Nigeria Ltd vs. Dyktrade Ltd. (2000) F.W.L.R. (Pt. 11) 1785 (2000) 12 N.W.L.R. (Pt. 860) I at 8 which supports the view that section 3 of the Act protects the common law action for passing off. See also Trebor Nigeria Ltd. vs. Associated Industries (1972) N.C.L.R. 47.

Accordingly, I am of the view that this submission by the Appellant on the issue of jurisdiction is unfounded and is hereby discountenanced. Issue Number 2 is resolved in favour of the Respondents.

Having held that the claim of passing-off failed, it is curious that the passing off still formed part of this appeal. Even the issue of the Federal High Court or Court of first instance having no jurisdiction is equally an academic exercise since the Court below dismissed the
claim of passing-off. For purpose of this appeal, I agree completely with the findings of the trial Court and the authorities cited to hold that the claim of passing off fails.

Although, I have my reservations on certain ~spects of the judgement, since there is no Cross-Appeal or Application to contend that the judgment of the Court be sustained on grounds other than the ones upon which judgment was entered in favour of the PlaintiffsIRespondents, this appeal shall succeed in part.

For the avoidance of doubt, I uphold the judgement of the lower Court on the infringement of Trademark and the injunctive orders restraining the Appellants as contained in the Plaintiffs’ statement of claim and the general daniages ofN50,000.00 awarded in favour of the PlaintiffslRespondents. I shall award N30,000.00 Costs in favour of the Respondents.

IGNA TlU GWE AGUBE
JUSTICE COURT OF APPEAL
Patrick Osu Esq for the Appellants
Gbenga Bello Esq for the Respondents

OLUFUNLOLA OYELOLA ADE,KEYE, J.C.A.
I agree.

CHIMA CENTUS NWEZE, JCA
This appeal advertises the antiquated status of the trademarks legislation in , Nigeria. My learned brother, Agube JCA,in the, leading judgement – which I had the opportunity of reading in draft – identifi,ed a curious feature of the Trade Marks Act in force in Nigeria. As His Lordship correctly observed, the current Trade Marks legislation can be found in the Trade Marks Act Cap T13, Laws of , Federation of Nigeria, 2004. This is the crux of the irony! The current Nigerian law on trademarks is still anchored on an outmoded English enactment: the Trade Marks Act, 1938; an , enactment that not only exemplified “intrica,te and difficult draftsman ship”, D. Bainbridge, Intellectual Property (fourth edition) (Essex: Pearson Education , Limited, 1999)525, but which had actuali,y been greeted with firm judicial disapprobation. The Nigerian Act, for example, re-enacted section 4 (1) of the 1938 English Act as section 5 (1). Yet, as far back as 1940, Mackinnon U in Bismag v Amblins (Chemists) Ltd (1940) 1 Ch. 667 had derided the said section 4 (1) as being of “fuliginous obscurity”.

Curiously, when the opportunity first presented itself in 1965, that is, when the Trade Marks Act, 1965 was promulgated, expressly repealing the Trade Marks Act 1958, nothing was done to purge the section of this remarkable sooty obscurity. It is this 1965 Trade Marks Act that is embodied in chapter T. 13 of the Laws of the Federation of Nigeria, 2004!

1′. What is more, even section 9 (2) of the 1938 English Act, which has been cited as ~ “a good example of the verbosity of some of the provisions of the 1938 Act”, D. Bainbridge, Intellectual Property (fourth edition) (Essex: Pearson Education Limited, 1999) 525, 530, was still re-enacted in Section 9 (2) of the Nigerian Act notwithstanding its notable irksome prolixity.

True, indeed, nothing can better underscore the urgency of a clarion call for the evolution of a modern enactment on trademarks in Nigeria to align the corpus of our laws with the contemporary trends in Intellectual Property Law than a damning verdict on the 1938 English Act, the precursor of the Nigerian Act. In GE Trade Mark (1973) RPC297, at 325, Lord Diplock offered pungent insights into the problems associated with the construction of the meaning of the English Trade Marks Act, Act in these memorable words:

My Lords it may well be a legitimate criticism of our methods of drafting legislation that in order to ascertain the meaning of an Act of Parliament passed in 1938, it should be necessary not only to consider its legislative history over the previous 63 years but also to engage in what in other systems of law might be regarded as antiquarian research, namely the state of the common law as it existed before the first Act to alter it was passed nearly 100 years’ago. But, in my view, the Act of 1938 which purports to consolidate our existing law becomes intelligible only when this course… is adopted

I share the sentiments of the distinguished. law Lord. I, even, take the view that the lexical complexities associated with the interpretation of most of the provisions of the Nigerian Act have to be located in the context of this penetrating observation. It is from this perspective, therefore, that I entirely endorse the opinion of my Lord, Agube JCA,who, in the leading judgement, described section 67 of the Nigerian Trade Marks Act as “clumsy and fraught with a lot at’ complications”.

Now, the decision in Ferodo Ltd and Anor v Ibeto Industries Ltd (2004) 2 KLR(pt. 172) 489 is remarkable for the fecundity of principles it established in Intellectual Property law. Unfortunately, and I say this with utmost respect, it would appear that the learned counsel for the appellant has not fully come to terms with the dynamic logic of the rationes decidendi of this far-reaching decision.

On the other hand, I find considerable merit in the submission of the learned counsel for the respondent that the facts of the present case are not the same with the facts of Ferodo’s case. At page 511 of the Report [Kings Law Reports], Musdapher JSC explained thus:

I am also convinced that what is registered as a trade mark is only the word ‘FERODO’. It is a distinct character marked sharply and boldly in exhibit D denoting that it represents the futuristic character by which the proprietor manufacturer intended to convey a message that the product is hers and no other person’s …there is nothing distinctive about the colouration and the graphic chequered design to make them part of the registered trade mark. Also…when a word is used to denote a product and when the other features contained are not distinctive, they are merely decorative of the trade mark and not part of it (Italics for emphasis).

However, in the present case, there were ample materials on the registered trade mark of the respondents, in the form of oral and documentary evidence, before the lower court: the testimonies of PW1, PW4 and PW5 and exhibits E2, E4, G and H. All these point to the dissimilarities between this case and Ferodo’s case.

What is more, the lower court based on these pieces of evidence made crucial findings of fact. As it is well-known, there are certain advantages which the lower court enjoys which are not available to this court. The lower court saw the witnesses. It heard them. It watched their demeanour. It evaluated their viva voce testimonies, CBN v Archibong customary Court, good sense and respect for the hierarchical structure of courts should have informed the court ,below to transfer the suit before it to the High Court so that both suits can be consolidated and determined once and for all in the overall interest of smooth administration of justice.

I agree with the ruling of the Learned trial Judge that there was no abuse of Court process as the filing of a cross-action with reliefs in excess of the customary court cannot tantamount to an abuse of court process in the peculiar circumstances of the case.

I too will dismiss this appeal as lacking in merit and shall abide by all other consequential Orders as made by my Lord including costs.

NLIPW Logo

Print Friendly, PDF & Email
FILE A TRADEMARK