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Niger Chemists Limited v. Nigeria Chemists and D.K. Brown

High Court (East)

Judgement delivered on March 16, 1961
Citation: 4 NIPJD [SC. 1961]
Jurisdiction: Nigeria

Judgement delivered by Palmer J.

Appearances: Iguh for the Plaintiff
Aniagolu (with him, Ofodile) for the Defendants

Trademark Infringement, Likelihood of Confusion — The court considered whether the defendants’ use of the mark “Nigeria Chemists” in the same line of business as that of the plaintiff, was likely to mislead the public into thinking it was the same as the plaintiff’s business, “Niger Chemists”.

I. FACTS

The plaintiff (well known as ‘Niger Chemists’) had carried on business as chemists since April 1952, and had several branches in Onitsha and other towns in Eastern Nigeria. In June of 1957, the second defendant and his partners founded a firm carrying on exactly the same business in Onitsha under the name of ‘Nigeria Chemists’ and their only premises was on the same street as one of the plaintiff’s business. Both companies were registered with the Corporate Affairs Commission (CAC) in Nigeria. The plaintiff sued.

The court granted an injunction against the defendant on the grounds that their use of the name ‘Nigeria Chemists’ was intended to deceive the members of the public into believing that there was a relationship between Nigeria Chemists and Niger Chemists.

Quoting Lord Cozens-Hardy MR in Ewing v. Buttercup Co. (1917) 2 Ch 1, Palmer J, held:

‘I know of no authority, and I can see no principle, which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the plaintiff or are carrying on a branch of the plaintiff’s business.’

II. CASES REFERRED TO

The following cases are referred to in the judgement:

  • British Vacuum Cleaner Co. v. New Vacuum Cleaner Co. (1907) 2 Ch. 312
  • Cellular Clothing Co. v. Maxton and Murray (1889) A.C. 326
  • Ewing v. Buttercup Co. (1917) 2 Ch 1
  • Hendriks v. Montagu (1881) 17 Ch.D. 638; (1881) 50 L.J. Ch. 456
  • North Cheshire and Manchester Brewery Co. v. Manchester Brewery Co. (1889) A.C. 83; 68 L.J. Ch 74

III. JUDGEMENT

Judgment for the Plaintiff, Injunction granted.

“In the result therefore, I am satisfied that the name used by the defendants is so similar to the Plaintiff’s trade name that there is very likely to be confusion and deception. The word “Niger” and the similar word “Nigeria” are in no way descriptive of the articles sold or the business carried on by the parties. There is no absolute right in law to the use of the name of a country or place by people who live there. Consequently the Plaintiff company is entitled to the protection of the law and the defendants will be restrained from using the name “Nigeria Chemists” or any other name so closely resembling “Niger Chemists”. It is not disputed that the Plaintiff company gave the defendant adequate notice of their objection to the use of the name and ample opportunity to change it, but the Defendants refused to do so. The Plaintiff company is entitled to nominal damages, which I assess at five pounds. The injunction will come into force on the first of April 1961, as I realise the Defendants may require a little time to put a change of name into effect. If it is intended to appeal and apply for a stay of execution, the necessary steps should be taken without delay.”

NOTES:

The case establishes the principle that an action in passing-off may lie in cases of misuse of trade names, trademarks or the design get-up of the goods or businesses.

FULL FACTS

PALMER J: This case involves an important point of law and I have had the advantage of hearing it very well argued on both sides. In April 1952, a firm of chemists was founded in Onitsha under the name of Niger Chemists. It was registered under the Pharmacy Ordinance and the name under the Registration of Business Names Ordinance. In July 1954, it became a limited liability company incorporated under the Companies Ordinance and the word “Limited” was officially added to the name although popularity it was still known simply as “Niger Chemists”. The company continued to develop and now has three branches in Onitsha in addition to the head office and five branches in other places in Eastern Nigeria, as far away as Enugu and Okigwi. I am told however that for five years it has not shown a profit. The business is the normal business of chemists, druggists and dispensers. In 1957, one of the branches of the company was at 21 Iweka Road, Onitsha.

In June 1957, the second defendant D.K. Brown and two partners founded a firm of chemists, carrying on exactly the same business and called it “Nigeria Chemists” and the only premises were at 31 Iweka Road, Onitsha, although they have since moved to 101 Iweka Road. This firm is also registered under the Pharmacy Ordinance and the Registration of Business Names Ordinance, but it is not incorporated as a limited liability company. The company, Niger Chemists Limited, protested against the use of a name so similar to its own., but the protests was rejected and in September 1957 the company took action against the firm and against the manager, D.K. Brown.

The first point for determination is whether the name “Nigeria Chemists” is so similar to the name “Niger Chemists” as to be calculated to deceive. Two matters are, I think, well settled.

First, it is not necessary to prove that there was any intention to deceive; this has been held in a long series of cases, and it is not disputed. In this case, I strongly suspect that the defendants did in fact choose a name and address as similar as possible to that of the plaintiff in the hope of diverting some of its business to themselves, but it is not necessary to decide the point and I do not do so.

Secondly, it is not necessary to prove that deception has actually taken place. The plaintiff is entitled to take quia timet before he is actually injured and the question is whether the words are calculated to deceive, not whether they have in fact deceived. But evidence of actual deception may be given and in this case there was such evidence.

I was not impressed by the witness who claimed to be a deceived customer, but I fully accept the evidence of the managing director of the plaintiff company who says that he continually receives letters, bills, receipts etc, intended for the defendant firm. A number of such documents were tendered. But quite apart from the evidence it seems to me as a matter of common sense that when two firms trade in the same town — and in the same street — in the same line of business, one calling itself “Niger Chemists” and the other “Nigeria Chemists” there must be grave risk of confusion and deception. A good deal was said about literates and illiterates. I can only say, as a literate, that I might well be mistaken myself with two such similar names and go into the one shop under the impression that I was patronising the other. And if I sent an illiterate servant to buy something at Niger Chemists, I should hardly be surprised if he returned with an article purchased at Nigeria Chemists.

In Hendriks v. Montagu (1881) 17 Ch. D. 638, the plaintiff’s trade name was “Universal Life Assurance Society” while the defendants sought to use the name “Universe Life Assurance Association”. The Court of Appeal was unanimous in granting an injunction and in his judgement James L.J. said: “Now, is there such a similarity between those names as that the one is in the ordinary course of human affairs likely to be confounded with the other? Are persons likely who have heard of the Universal to be misled into going to the Universe? I should think, speaking for myself, very likely indeed. Many people do not care to bear in mind exactly the very letters of everything they have heard of…” Mutatis mutandis, those words of James L.J. would appear to apply exactly to the present case. I have no hesitation in deciding that the use of the words “Nigeria Chemists” is calculated to deceive persons who know of and intend to deal with Niger Chemists.

There was however a broader line of defence. It is argued that the defendants are entitled to use the name “Nigeria Chemists” and would even be entitled to use the name “Niger Chemists” because the names are merely descriptive. Two cases are relied on, Cellular Clothing Co. v. Maxton and Murray (1899) A.C. 326 and British Vacuum Cleaner Co. v. New Vacuum Cleaner Co. (1907) 2 Ch. 312. In the first case, the pursuers were refused an interdict in respect of the word “cellular” and in the second the plaintiffs were refused an injunction in respect of the words “vacuum cleaner”. The ratio decidendi in the two cases is similar. The words “cellular” and vacuum cleaner” were held to be ordinary English words, describing the goods sold, which had not acquired a secondary or special denoting only the goods of a particular person. There can of course be no doubt whatever that the word “Chemists” is an ordinary English word denoting the trade in which the plaintiff company engages and which has developed no special meaning exclusive to the plaintiff. The defendants cannot possibly be restrained from using the word “Chemists” and the plaintiff does not suggest that they should. The dispute is about the word “Niger” or “Nigeria”.

The difficulty which seems to me to lie in the defendants’ way is this. In both the cases relied on, the words complained of were descriptive of the goods sold or the trade carried on. Now words such as “Niger” or “Nigeria” are not. The plaintiff does not suggest that in dispensing prescriptions water from the Niger is used in place of aqua pura! “Niger” in no way describes the goods sold or the trade engaged in. Nor does “Nigeria”. Both words are used as a name to distinguish the person selling the goods or engaging in the trade. In British Vacuum Cleaner Co v. New Vacuum Cleaner Co., the point was made very clear by Parker J, who said in his judgement:

I think a distinction must always be drawn between cases in which the word in question –the word which it is proposed to restrain the defendant from using — is a word of ordinary use descriptive of an article, and cases in which the word complained of more or less partakes of the character of a “fancy” word, or primarily does not relate to the article, but to the person who makes the article.”

“Niger” and “Nigeria” in no way relate to any article. Either they are fancy words or they are descriptive of the parties — not of the articles they sell. The plaintiff chose the name “Niger” to distinguish his firm from other firms of chemists. It is the name of the river near which his head office is situated. The second defendant says that he chose the name “Nigeria” from patriotic motives. Possibly, but he admits that he knew well of the existence of the plaintiff company and he cannot but have known of the confusion which was likely to ensue. But neither word is descriptive of an article or a trade and there seems no reason on that ground why the defendants should not be restrained from using either of the words.

Another argument for the defence is that since the defendants are Nigerians, living in Nigeria, they cannot be prevented from using the name of their country. But I am not aware of any rule of law that gives an absolute right to the use of the official or geographical name of any territory. In this regard, I think the decision in North Cheshire and Manchester Brewery Co. v. Manchester Brewery Co. (1899) A.C. 83 is relevant. The Manchester Brewery Co. had carried on business under the name for about eight years, when the defendant firm adopted the name of East Cheshire and Manchester Brewery Co. There was no doubt that the defendants carried on business in East Cheshire and Manchester, but despite that and despite the considerable difference between the two names an injunction was granted restraining the defendants from using any name that incorporated the whole of the plaintiff company’s name. If therefore the use of the name “Nigeria” is otherwise wrongful, I do not think it is made lawful simply because the defendants are Nigerians and live and carry on business in Nigeria.

There is one other matter to which I ought perhaps to have referred to at an earlier stage and that is the meaning of the word “deception” which is commonly used in cases of this nature. It will I think be sufficient to quote from the judgement of Lord Cozens-Hardy M.R. in Ewing v. Buttercup Margarine Co. (1917) 2 Ch. 1.

‘I know of no authority, and I can see no principle, which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the plaintiff or are carrying on a branch of the plaintiff’s business.’

In the result therefore I am satisfied that the name used by the defendants is so similar to the plaintiff’s trade name that there is very likely to be confusion and deception. The word “Niger” and the similar word “Nigeria” are in no way descriptive of the articles sold or the business carried on by the parties. There is no absolute right in law to the use of the name of a country or place by people who live there. Consequently, the plaintiff company is entitled to the protection of the law and the defendants will be restrained from using the name “Nigeria Chemists” or any other name closely resembling “Niger Chemists”. It is not disputed that the plaintiff company gave the defendants adequate notice to their objection to the use of the name and ample opportunity to change it, but the defendants refused to do so. The plaintiff company is entitled to nominal damages, which I assess at five pounds. The injunction will come into force on first of April, 1961, as I realise that the defendants may require a little time to put a change of name into effect. If it is intended to appeal and apply for a stay of execution, the necessary steps should be taken without delay.

The Plaintiff company is entitled to costs which are assessed at fifty guineas inclusive.

Judgement for the Plaintiff and Injunction granted.

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