May 26, 2019

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NLIPW Cases and Principles

Metropolitan Industries Nigeria Ltd v. Industrial Applications Nigeria Limited

Supreme Court of Nigeria

Judgement delivered on Friday, January 26, 1973
Citation: 16 NIPJD [SC. 1973] 112/1972
Suit No. SC.112/1972      Jurisdiction: Nigeria

BEFORE THEIR LORDSHIPS

ATANDA FATAYI-WILLIAMS, J.S.C. (Delivering the Lead Judgement)
AYO GABRIEL IRIKEFE, J.S.C.
TASLIM OLAWALE ELIAS, J.S.C.

Appearances: Chief F.R.A Williams (with him G.N. Emechi) for the Appellant
Mr. B.O. Benson for the Respondent

CITED IN

Nigerian Breweries Plc. v. Pabod Breweries Ltd. & Anor.

Excerpt from Citation:

In design infringement disputes, it is not enough for the complainant to merely allege similarity of the new design to his design. See DENSY INDUSTRIES LTD v. UZOKWE (1998) 9 NWLR [pt 567] 569 at 585. There must be “in some way a special, peculiar, distinctive, significant or striking appearance” that has been imitated in the latter design of the defendant. See METROPOLITAN INDUSTRIES (NIG) LTD v. INDUSTRIAL APPLICATIONS (NIG) LTD (1973) NSCC 14.

CITED IN

Uzokwe v. Densy Industries (Nig) Ltd.

Excerpt from Citation:

Similarity in design has nothing to do with its novelty or distinctiveness. A claim for an infringement of rights in design cannot be sustained merely because the infringing product is similar to that of the plaintiff. More is required from the plaintiff bearing in mind the provisions of section 1 of the Act. The earlier observation of the learned trial Judge that owing to the absence of the design for Exhibit “5”, he could not compare Exhibits “2” and “5” is sound but he derailed when he proceeded to compare the finished products as against the designs from which they were produced. See METROPOLITAN INDUSTRIES (NIG) LTD v. INDUSTRIAL APPLICATIONS (NIG) LTD (1973) 1 NMLR 274Amp. Incorporated v. Utilux Proprietry Ltd. (1972) R.C.P. 103.

I. FACTS

In the Lagos High Court in Suit No.LD/66/71, the plaintiff claimed against the defendant –

1.”An injunction restraining the defendant, its servants or agents from manufacturing or, causing to be manufactured; from marketing or causing to be sold or exposed for sale any plastic sandals or shoes bearing the plaintiffs’ registered design No-934784 or any obvious or colourable imitation thereof;

2. 50,000 (Fifty Thousand Pounds) damages for the infringement by the defendant of the plaintiff’s said registered design or any enquiry into an account of sales of all plastic goods to which the said design or an obvious or colourable imitation thereof shall have been applied and of the profits made thereon;

3. Delivery for public destruction of all plastic goods to which the said design or an obvious or colourable imitation thereof shall have been applied, the moulds, designs and other manufacturing materials that are in possession or under the control of the defendant, its servants or agents;

4. Costs;

5. Further or other reliefs.

The defendant continues to market and expose for sale the plastic footwear similar and/or identical to the registered design of the plaintiff within the city of Lagos and, in fact, all over the Federation in spite of warning from the plaintiff.”

To this claim, the defendant counter-claimed as follows;-

“The defendant counterclaim for a declaration that the plaintiff have not acquired any exclusive privileges and rights in Nigeria in the design or purported design registered in the United Kingdom as Number 934784.”

Paragraphs 3 – 9 of the plaintiff’s Statement of Claim read

“3. Sometime in 1967, the plaintiff designed a particular style of plastic footwear known as ‘NIGERIAN’, and, in January, 1968, registered the said design as No.934784 under the Registered Design Act, 1949, in the United Kingdom.

4.The plaintiff commenced production of footwear of the said registered designed in January 1968.

5.The plaintiff published the fact that the design was registered in the names of the plaintiffs in the issues of the Daily Times of the 31st day of August, 1970 and the 3rd day of September, 1970.

6.The plaintiff marked the Registration No.934784 on their footwear.

7.The defendant, with the knowledge that the said design is registered in the name of the plaintiff and without the licence or written consent of the plaintiff, made an obvious imitation of the footwear of the said registered design and have been manufacturing and selling the said imitation.

8. Further or in the alternative, the defendant fraudulently made an unimportant, minor and/or inessential difference in the design of their own footwear to distinguish it from the design of the plaintiff.

9. In the premises aforesaid, the defendant have infringed the said registered design of the plaintiff and the plaintiff have suffered and will continue to suffer damages unless the defendant is restrained.

In their own Statement of Defence, the defendant averred in paragraphs 4, 5, and 6 thereof as follows:-

“4. The defendant avers that the registration of Registered Design No. 934784 is and has at all material times been invalid for the reasons in the Particulars of Objection delivered herewith.

5.The defendant avers that the said Registered Design is ambiguous in that “no or no sufficient indication is given as to the respects in which it is to be distinguished from other sandals commonly sold on the Nigerian market prior to the date of the Application for the Registration thereof other than upon features which are immaterial trade variants.

6.Subject to the averments in paragraphs 5 and 6 hereof, the defendant admits the sales alleged in paragraph 15 of the Statement of Claim.”

The Particulars of Objection referred to in paragraph the Statement of Defence are as follows:-

Particulars of Objection

i. The said Registered Design was neither new nor original at the date of the Application for Registration thereof and was before such date published in Nigeria in respect of the same or similar article or differs from such a Design only in immaterial details or in features which are variants commonly used in the trade.

ii. The said Registered Design does not consist of or contain features of shape configuration pattern or ornament applied to a sandal by any industries process or means or features which in the finished sandals appeal to and are judged solely by the eye and the defendant will contend that

a. anything the plaintiff alleges to constitute the Design consists only of a  method or principle of construction, and,

b. any feature the plaintiff defines or formulates as being a feature of the alleged Design is feature of shape or configuration which is dictated solely by the function which the sandal to be made in that shape or configuration has to perform.

iii. If (which is denied) the Design as registered had features of novelty then this these are purely matters of pattern and ornament and not of shape or configuration.”

The plaintiff’s reply to the “Objection/Counterclaim” read:

“1. The plaintiff did not know and could not have known that a similar design, if any, has been made available to the public either in Nigeria or in the United Kingdom, prior to the registration of their design.

2.The design was not made available to the public prior to the application for its registration in the United Kingdom or in Nigeria.

3.There is no earlier design to which the plaintiff’s design is identical.

4.The plaintiff’s design is new, original and distinct from other footwear in shape and/or pattern.

5. The defendant’s objection is belated and/or made in bad faith.”

On 8th March 1971, the learned trial Judge (Lambo, J.,) after hearing both parties, ordered that the production of the particular sandals should cease pending the hearing of the suit.

At the hearing on the 1st of February, 1972, Romeo Barberopoulos (1st P/W), the managing director of the plaintiff, testified that the plaintiff registered the design of a plastic footwear, that the design was called “Nigerian” and that it bore the code No. 3/N in their books. The application for the registration of the design was made in London in January, 1968 and it was finally registered on 14th August, 1968, and the Certificate (Exhibit ‘A’) issued as a result:

The contents of the Certificate read:-

“REGISTERED DESIGN ACT, 1949. CERTIFICATE OF REGISTRATION OF DESIGN

Number of Registration: 934784.

Date of Issue of Certificate: 14th August, 1968.

This is to certify that, in pursuance of and subject to the provisions of the Registered Designs Act, 1949, the Design, of which a representation is annexed, has been registered in the name of Industrial Applications (Nigeria) Limited as of the 17th day of January, 1968, in respect of the application of such design to a sandal.

Gordon Grant

Registrar

Subject to the provisions of the Act and Rules Copyright in this Design will subsist for five years from the earlier above-mentioned date, and may be extended for two further periods, each of five years.”

The 1st P/W further testified that the plaintiff commenced production of the design in January, 1968, when they had been informed by their London Office that the application had been accepted and that production and sale of the sandals could start. Although the sale started in 1968, it only became “successful” in the middle of 1970. At the beginning of January, 1971, following certain information received from their customers, the 1st P/W went to the market where he discovered that the same design was being manufactured and sold by the defendants. The witness then pointed out that the only distinction between the defendants’ sandals and theirs is the addition by the defendants of “three crescent half-moon” to their own “decorative stars.” He then described their own sandal further as follows:-

“Our design is new as compared with other sandals because mainly the front of our sandal is the part of the strap going across the sandal while at the same time there is an extension of the strap containing the other toes….This makes the sandal more successful in the market because it holds the foot more firmly. Other differences consist of the decoration, the position of the decorative stars, and the arrangements of the stars in general.”

Under cross-examination, the witness testified further as follows:-

“I fully agree that the main function of a sandal is to protect the foot from dirt from the ground. The sole of the sandal must be shaped as near as possible to the shape of a foot. There is nothing distinctive about the shape of the sandal…..We did not inform the Registrar we were registering the design in respect of the distinctive features mentioned earlier this morning because it was not necessary; we only registered the appearance of the shoe.”

While the 1st P/W was still under cross-examination, the learned counsel for the defendant tendered through the witness certified true copies of –

a. The application for the registration of the design; and

b. A letter addressed to the Designs Registrar by Messrs Abel & Imray (the plaintiffs’ agents) in respect of the registered design Exhibit ‘A’).

The application for registration (Exhibit “G”) contained the following footnotes:-

N.B- Three identical representations or specimens of the design should accompany this Form, and except in the case of an application in respect of wallpaper or lace, it should further be accompanied by a statement of the feature of the design for which novelty is claimed.”

The contents of the letter dated 25th July 1968, (Exhibit “G1”) read

“Sir,

Design No.934784 –

Industrial Application (Nigeria) Ltd. – Sandal.

The novelty of the design lies in the shape or configuration of the article as shown in the representations except for the underside of the sole.

We are, Sir,

Your Obedient Servants,

(Sgd.)

I certify this to be a true copy of the statement of novelty filed in connection with Design Application No.934784.

(Sgd.)

For Registrar.”

The defendant did not call any evidence. Learned counsel for the defendant however, addressed the court and submitted that the sandal was in the market before registration, contrary to Section 4(2) of the United Kingdom Designs (Protection) Act (Cap. 204 – Laws of the Federation), that the registration was invalid since there could be no monopoly in the configuration of the sandals or in the function it has to perform.

In a reserved judgment, the learned trial Judge dealt first with the counterclaim in respect of which he found as follows:-

“no evidence was led by the Defendant in support of either the Statement of Defence or the Counter-claim. There is also no evidence that notice of the counter-claim was given to the Registrar nor was there any evidence at the trial within the provisions of Section 4(i) of the United Kingdom Design (Protection) Act, Cap. 204 of the Laws of Nigeria alleging that Defendant’s interests have been’ prejudicially affected by the registration of the design. The counter-claim, therefore, fails and is hereby dismissed.”

With respect to the defence that there was no novelty in the plaintiff’s design, the learned trial Judge observed:-

“It is pertinent to refer to the evidence of plaintiff’s Managing Director when, on the issue of novelty of the design, he said-

‘Our design is new as compared with other sandals because mainly the front of our sandal is the part of the strap going across the sandal while at the same time there is an extension of the strap containing the other toes…

Other differences consist of the decoration, the positions of the decorative stars, and the arrangements of the starts in general, The only difference which I can see, and which the defendants also confirm by the penultimate paragraph of their letter of the 14th January, 1971, (Exhibit ‘F’) lies in the addition of the half-moon to the decorative stars in plaintiff’s design. Apart from this small difference the two designs are identical in every other respect.”

The learned trial Judge then gave judgment for the plaintiff after finding further as follows:-

“After looking minutely at the two designs, I have come to the conclusion that the sandal of the defendant i.e. (Exhibit ‘D’) is an obvious imitation of the registered design of the plaintiff. It follows from this, that there is no merit, whatsoever, in the submission of Chief Williams that there can be no monopoly in the configuration of this particular sandal or in the function it has to perform.”

The defendants have now appealed against the decision. The three grounds of appeal argued before us read –

“1. The learned trial Judge erred in law and on the facts in giving judgment to the plaintiff when –

(a) The Registered Design claimed by the plaintiff was neither new nor original at the date of the registration thereof;

(b) the said Design does not consist of or contain features of shape configuration pattern or ornament applied to a sandal by any industrial process or means of features which in the finished sandal appeal to and are judged solely by the eye.

2. The learned trial Judge erred in law and on the facts in failing to observe that all features the plaintiff claim or formulate as being features of the alleged design are features of shape or configuration which are dictated solely by the function which the sandals to be made in that shape or configuration have to perform.

3. The learned trial Judge erred in law and on the facts in dismissing the defendant’s counterclaim having regard to:-

(a) grounds 1, 2 and 3 hereof; and

(b) the fact that the alleged Registered Design consists of features of shape configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.”

Briefly, the submission of Chief Williams who appeared for the defendant/appellant is this. The law applicable here in Nigeria by virtue of the United Kingdom Designs (Protection) Act (Cap.204 of the Laws of the Federation) is the United Kingdom Registered Designs Act of 1949. According to that Act, registration is not conclusive as to the exclusiveness of the design.

The courts can still go behind the registration of the design and see whether the design is one that is registrable. This is because it is the registrability of the design that is crucial in deciding whether the design should be protected or not. The aim of the legislation, Chief Williams also contended, is to confer on the originator or author or proprietor of the design an exclusive right to apply the design to an article. That being the case, what is being registered is not the article itself but the design e.g. the “pattern, feature of shape or configuration” of the article.

In the instant case, Chief Williams further submitted, there is nothing novel in the design of the sandal, in that it does not contain any feature of shape, configuration, pattern or ornament which is distinctive or has a striking appeal to the eye by its distinctive as indicated in Section 1(3) of the Registered Design Act, 1949. Therefore, in order to succeed, the plaintiff must have created or originated a new shape of sandal but as there was nothing distinctive in the shape of the sandal for which they sought protection, the learned trial Judge was in error in giving judgment in their favour.

Finally, Chief Williams submitted in the alternative that the features for which novelty was claimed by the plaintiff were not the features for which registration was effected and that, in the present case, the features shown in the sandal are all dictated by the functions it was meant to perform.

Chief Williams then dealt with the order dismissing the counter-claim and submitted that the learned trial Judge was also in error in this respect because the reasons given for dismissing the counter-claim would not apply in the circumstances of the case.

In reply, Mr. Benson, for the plaintiff/respondent submitted that it is the duty of the defendant/appellant to prove in the lower court that the registered design was invalid. Mr.Benson, then referred to the Certificate of Registration (Exhibit’A’) and contended that it in prima facie evidence that the design is new and original, and that, therefore the design is valid until it is set aside by the court. He also submitted that this court could not decide on the validity of the design but that the case should be sent back to the court below for this to be considered. If, however, the court was of the view that the question of the validity of the design could be entertained, the court should hold that the representation of the design indicated in the Certificate of Registration (“Exhibit ‘A’) and referred to in the application for registration (Exhibit ‘G’ & ‘G1’) complied with the requirements of Section 1(3) of the Act.

As for the counter-claim, the contention of Mr. Benson was that it could not stand and that the learned trial Judge was not in error in dismissing it as he had done.

In our view and for the reasons which we set out at length hereunder, there is merit in each of the submissions made by Chief Williams in support of this appeal.

It is provided in Section 2 of the United Kingdom Design (Protection) Act (Cap. 204 of the Laws of the Federation) as follows:

“2. Subject to the provisions of this Act, the registered proprietor of any design registered in the United Kingdom under the Patents and Design Acts, 1907 to 1932, or any Act amending or substituted for those Acts shall enjoy in Nigeria the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to Nigeria.”

The Act at present in force in the United Kingdom is the Registered Designs Act, 1949. The designs registrable under the Act are specified in Section 1 subsection (1) to (3) thereof, the provisions of which are as follows:-

“1. Subject to the following provisions of this section, a design may, upon application made by the person claiming to be the proprietor, be registered under this Act in respect of any article or set of articles specified in the application.

2. Subject to the provisions of this Act, a design shall not be registered thereunder unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in the United Kingdom in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

(3) In this Act the expression ‘design’ means features of shape, configuration, pattern or ornament applied to an article by an industrial process or means, being features which in the finished article-appeal to and are judged solely by the eye, but does not include a method or principle of construction, or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.”

The particulars to be stated by an applicant when applying for the registration of a design under the Act are provided for in Rules 14-15 of the Design Rules which read –

“14 (1) Every application shall state the article to which the design is to be applied, and that the applicant claims to be the proprietor thereof.

(2) Except in the case of an application to register a design to be applied to a textile article, to wallpaper or to lace, the application shall further be accompanied by a statement of the features of the design for which novelty is claimed.

15. The applicant shall, if required by the Registrar in any case so to do, endorse on each of the representations or specimens, a statement satisfactory to the Registrar of the novelty claimed for the design.”

From the above, it will be seen that, to be registrable, a design must not only come within the definition of the word “design” in Section 1(3) of the Act, it must also be “new or original.” For this reason, the statement of novelty provided for in rules 14 and 15 quoted above is of considerable importance as it may have a bearing upon the interpretation which the court will place upon the design. The object of having this statement of novelty is, in effect, to call attention to any special or outstanding novel feature of the design which gives it a mark of distinctiveness. In other words, a statement of novelty defines the ambit or scope of the monopoly. Therefore, if what is claimed as a special feature of the design is not indicated in the statement of novelty, the registered design will be invalid as there can be no infringement of a feature, no matter how special, which is not registered. Furthermore, when novelty is being claimed in respect of the shape of an article, it is the shape that must be new or original, not the article.

In this respect, we refer to the decision of the House of Lords in Amp Incorporated v. Utilux Proprietory Limited (1972) RPC 103. In the High Court, the plaintiffs, in an infringement action, alleged that the defendants had infringed two of their registered designs. The plaintiffs admitted that function was the sole cause or reason which led the author of the design to choose the shape he did, but they contended that the article could have been of a different shape without affecting its function. The trial Judge held that both designs were invalid as lacking novelty or originality and also on the ground that the alleged novel or original features were dictated solely by the function which the article in question had to perform. This decision was reversed on appeal by the Court of Appeal. On a further appeal to the House of Lords, the decision of the Court of Appeal was set aside and that of the trial Judge was restored in a judgment delivered on 6th April, 1972.This date is significant because the learned trial Judge in the instant case, Lambo. J.,) in his judgment for the plaintiff delivered a month earlier on 6th March, 1972, referred with approval to that decision of the Court of Appeal which has now been set aside.

Lord Reid, in considering the scope of the word “design” in Section 1(3) of the Registered Designs Act, 1949, in his judgment in the Amp Incorporated case, observed at page 108 as follows:-

“Parliament has been concerned to see that the originator of a profitable design is not deprived of his reward by others applying it to their goods. But it has not given protection under the 1949 Act to everything which could be called a design. To be protected the design must come within the definition. Designs which do not come within this definition may or may not be protected by other legislation. We are not concerned with that in this case. The question in this case is whether this terminal has a design which comes within this definition.

The definition includes features of shape, configuration, pattern or ornament. We are not concerned with pattern or ornament. Configuration may have a meaning slightly different from shape; no point is made of that in this case. The first requirement is that the shape is ‘applied’ by an industrial process. ‘Applied’ is an appropriate word for pattern or ornament but is an awkward word with regard to shape. The idea must be that there can be two articles similar in every respect except shape, and that the novel feature of shape which is the design has been added to the article by making it in the new shape instead of in some other shape which is not novel.”

In dealing with the appeal of the finished article to the eye referred in Section 1(3) of Act, Lord Pearson, in his own judgment at page 121 observed at follows:-

“From this point onwards the phrase ‘which in the finished article appeal to and is judged solely by the eye’ has been a statutory phrase to be interpreted in its statutory context and not necessarily having quite the same meaning as in the judgment from which the language was derived. The phrase is naturally to be read as importing some limitation of the expression ‘features of shape, configuration, pattern or ornament.’ Not all such features constitute a design. It is not reasonable to suppose that the only limitation is that the features are visible in the finished article. If that had been the intention, it could have been expressed much more simply. The emphasis is on external appearance, but not every external appearance of any article constitutes a design. There must be in some way a special, peculiar, distinctive, significant or striking appearances something which catches the eye and in this sense appeals to the eye . The phrase was interpreted in this way by Lord Evershed in Cow (P.B.) & Co. Ltd. v. Cannon Rubber Manufacturers Ltd (1959) RPC 347 at pp. 350, 351, 352 and by Lord Avonside in G.A. Harvey & Co. (London) Ltd v. Secure Fittings Ltd (1966) R.P.C.N 515 and by Lloyd – Jacob. J., in Swain (Matthew) Ltd v. Thomas Barker & Sons Ltd (1967) RPC 23 at 28-29.”

As we have pointed out earlier, the first plaintiff witness, in the instant case, admitted under cross-examination that there was nothing distinctive about the shape of their sandal. He also admitted that they did not inform the Registrar of Designs that they were registering the design in respect of the distinctive features to which he had earlier referred in his testimony but only because of its appearances; in other words, the design was not registered because of the placing of the strap in the front of the sandal, or of the decoration, or of the position and arrangement of the decorative stars. As against this admission, it must be recalled that in the “Statement of novelty” dated 25th July, 1968 (Exhibit.’G1′) which accompanied their application for registration, the plaintiff/ respondent stated that the novelty of their design lay in the shape or configuration of the sandal except,for the underside of the sole. These admissions boil down to this. The novelty of the design (meaning what is new and original about it) lies in its shape or configuration but the design was not registered because of these but merely because of its appearance. Why then did they inform the Registrar of Designs that the Design was novel and that the novelty lay in its shape or configuration?

By informing the Registrar that the shape of the design is novel (new or original) when in fact, by their own admission, there was nothing distinctive in the shape, and by also stating that the configuration was also novel when their application for registration did not indicate that it was based, again on their own admission, on the position of the straps or the decorative stars, the plaintiffs/respondents had obtained the registration of the design on the basis of a novelty which did not exist and was in fact not relied upon. Moreover, the evidence of the 1st witness for the plaintiff/ respondent that their design was new because the position of the straps “makes the sandal more successful in the market because it holds the foot more firmly” takes what has been registered out of the scope of what constitutes a “design” as defined in Section 1(3) of the 1949 Act. In that definition, it is clearly stated that a design “does not include……….. features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.”

For the above reasons, the learned trial Judge should have held that the registered design is invalid and dismissed the plaintiff/respondent claim either on the ground that it is not a design within the meaning of Section 1(3) of the Act or on the ground that there was nothing new or original about it at the date of its registration, or even on both grounds. Moreover, in view of the observation of Lord Pearson in the Amp Incorporated Case with which we respectfully agree, we think the learned trial Judge was in error in stating as he did that, after looking minutely at the two designs, he had come to the conclusion that the sandal of the defendants was obvious imitation of the registered design of the plaintiffs. Similarity of designs has nothing to do with its novelty or distinctiveness. A claim for an infringement of rights in design cannot be sustained mainly because the new design is similar to that of the complainant. More is certainly required if one bears in mind the provisions of Section 1 of the 1949 Act.

We will now proceed to consider the submissions in respect of the defendants/appellants counterclaim, the particulars of which read –

“The defendants counterclaim for a declaration that the plaintiffs have not acquired any exclusive privileges and rights in Nigeria in the design or purported design registered in the United Kingdom as Number 934784.”

Generally, a defendant to an action for infringement of rights in a design, if he desires to dispute the validity of the design as had been done in the instant case, may also counter-claim for the rectification of the register (see Order 103 rule 30(1) of the English Rules of the Supreme Court). The Rules were made in 1965. Paragraphs (2) and (3) of rule 30 of the said Order 103 also provide as follows:-

“(2) A party to any such proceedings who in his pleading (whether a defence or counter-claim) disputes the validity of the registration of a registered design must serve with the pleading partculars of the objections to the validity of the registration on which he relies in support of the allegation of invalidity.

(3) A party to any such proceedings who counterclaims for an order that the registered designs be rectified, must serve on the comptroller a copy of the counterclaim together with a copy of the particulars mentioned in paragraph (2) and the comptroller shall be entitled to take such part in the proceedings as he thinks fit but need not serve a defence or other pleadings unless ordered to do so by the court.”

The “Comptroller” is defined there as meaning “The Comptroller-General of Patents, Designs, and Trade Marks.” From the above rules, it seems to us that it is only when a party is counterclaiming for rectification of the register that he must serve the Comptroller with a copy of his counter-claim.

In the case in hand, the defendant/appellant has counterclaimed, not for rectification, but for a declaration that the plaintiff/respondent have not acquired any exclusive privileges and rights in the purported design in Nigeria. The counter-claim, no doubt, is based on the wording of Section 4(1) of the United Kingdom Designs (Protection) Act (Cap, 204 of the Laws of the Federation) which reads –

“4 (1) The court shall have power upon the application of any person who alleges that his interests have been prejudicially affected to declare upon any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom that exclusive privileges and rights in a design have not been acquired in Nigeria under the provisions of this Act.”

The reason for the above provisions in our own law is not far to seek. Since the Comptroller-General of Patents, Designs and Trade Marks and the Register of Designs are both out of the jurisdiction of the Nigerian courts, no useful purpose would be served by empowering our courts to order the rectification of that Register. Admittedly, it will also be futile to provide that the Comptroller (who is also the Registrar under the Registered Designs Act) must be served with a copy of the counter-claim.

In the instant case, however, the learned trial Judge dismissed the counter-claim on the grounds –

(a) that the defendant/appellant failed to give notice of their counter-claim to the Registrar; and

(b) that they did not prove that their interests have been prejudicially affected by the registration of the design as required by law.

With respect to the first ground, it is sufficient to say that since the defendant/appellant is not counter-claiming for rectification of the register they would not be required to put the Comptroller on notice; moreover, there is no Comptroller in Nigeria who could have been served even if they are required to serve him. In any case, the Lagos High Court could not, in the circumstances of this case, order the Comptroller in the United Kingdom to do any thing in respect of the counter-claim.

As for the second ground it seems to us that the interests of the defendant/appellant have been prejudicially affected is self-evident. As has been correctly pointed out by the learned author of “Copyright in Industrial designs (4th Edition)” at p.72 –

“Anyone will be aggrieved who makes articles of the type to which the registration applies, and who, by reason of the presence of the registration, is debarred from making them according to the design in question.”

It is therefore not without justification that Fry LJ., in In re Apollinaris Company’s Trademarks (1891) 2 Ch. 186 at p.225 observed as follows:-

“Further we are of opinion that whenever one trader, by means of his wrongly registered trade-mark, narrows the area of business open to his rivals, and thereby either immediately excludes, or with reasonable probability will in the future exclude, a rival from a portion of that trade into which he desires to enter, that rival is an ‘aggrieved person’….A man in the same trade as the one who has wrongfully registered a trade mark and who desires to deal in the article in question is prima facie an aggrieved person.

Again, in Powell v. Birmingham Vineger Brewery Company (1894) AC 8 at p. 10, Lord Herschell, LC., ventilated the same opinion as follows:-

“Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade-mark, and whenever the trade-mark if remaining on the register would or might limit the legal rights of the applicant so that by reason the existence of the entry upon the register he could not lawfully do that which but for the appearance of the mark upon the register he could lawfully do, it appears to me that he has a locus standi to be heard as a ‘person aggrieved.”

In our view, there is in the present case ample evidence before the court from which it could be inferred that the defendant/ appellant is an aggrieved person in that its trading interests has been prejudicially affected by the registration of the design. To our mind, no further proof is necessary. For the reasons which we have set out above, we are clearly of the view that the learned trial Judge was also in error in dismissing the counter-claim on these two grounds.

The appeal therefore succeeds and it is allowed. The judgment of the learned trial Judge in Suit. No. LD/66/71 delivered in the Lagos High Court on 6th March, 1971, including the order as to costs, is set aside and we accordingly order as follows:-

“1 (a)  that the plaintiff’s claim be and is hereby dismissed;

(b) that the defendant’s counter-claim succeeds and that it is declared that the plaintiff has not acquired any exclusive privileges and rights in Nigeria in the design or purported design registered in the United Kingdom as No. 934784; and

(c) that this shall be the judgment of the court.

2. That the defendant/appellant be awarded costs in the court below assessed at 210 Naira and in this court at 78 Naira.

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