Passing-off and Trademark Infringement Cases in Nigeria (Issue 2)

COMPARATIVE

NLIPW Trademark Law Volume 2 Number 1

eDigest

(Passing-off and Trademark Infringement Cases in Nigeria)

November 18, 2013

Content:

  1. Nabisco Inc. v. Allied Biscuits Company Ltd.
  2. Iyke Merchandise v. Pfizer Inc & Anor.
  3. Beecham Group Ltd. and ors. v. Essdee Food Products Ltd.
  4. Alban Pharmacy Ltd v. Sterling Products International Incorporated

|| Passing-off and Trademark Infringement Cases ||

1. Nabisco Inc. v. Allied Biscuits Company Ltd (1998)

Suit No: 257/1990

On October 30, 1977, Allied Biscuits Company filed an application at the Trademarks Registry in Nigeria to register ‘RITZ’ as a trademark in Class 30. An acceptance form (TP 31795) was issued. About eight (8) months later (June 15, 1978), Nabisco Inc. made an application for “RITZ” to be registered in Class 30 and their application was accepted and subsequently advertised in the trademarks journal in Nigeria.

When Allied discovered the advertisement, it commenced opposition proceedings at the registry. At the close of hearing, the Registrar refused to register “RITZ” as Nabisco’s trademark. Although Nabisco provided evidence to show that it had sufficiently used the mark outside Nigeria, the Registrar refused the submission. Relying on the provision of Section 21(1) of the Trade Marks Act of 1965, Nabisco appealed to the Federal High Court. The Appeal was successful — overturning the Registrar’s decision.

At the Court of Appeal, the Federal High Court’s decision was set aside and the Registrar’s ruling was restored. Dissatisfied with the decision, Nabisco appealed to the Supreme Court of Nigeria. The Supreme Court held that Nabisco had not used the mark RITZ sufficiently to acquire a reputation for the Mark in Nigeria.

Excerpt from the Registrars decision:

From the totality of the pros and cons, I accept the Opponent’s arguments (viz. Allied Biscuits Co. Ltd.) that they are first in law and that the Registry issued Letter of Acceptance in error. I find as a fact that the Applicant (viz. Nabisco) has not used the Mark sufficiently to acquire a reputation for the Mark in Nigeria… I accordingly accept the Opponent’s evidence that the Applicant intended to destabilise the Nigerian market and her economy. Only an unreasonable tribunal would fail to take judicial notice or cognizance of commercial law promulgations of his government

2. Iyke Merchandise v. Pfizer Inc & Anor. (2001)

Suit No: 29/1996

On October 18, 1993, Pfizer Inc. (the 1st plaintiff/respondent) brought a suit against Iyke Medical Merchandise (the defendant/appellant) for trademark infringement and passing-off of their goods as those of the 1st plaintiff/respondent. The 1st plaintiff/respondent was engaged in the manufacture and sale of a pharmaceutical product,  a worm expeller for the treatment of worms in children and adults, known as “Combantrin Plus” and duly registered under trademark No. 31159. Thereafter, the defendant/appellant, also a pharmaceutical outfit, sought to introduce into the Nigerian market a product known as “Combiterin”, also for the treatment of worms in both children and adults.

The 1st plaintiff/respondent filed an action in the Federal High Court claiming that the defendant/appellants were Infringing the 1st plaintiff’s trademark “Combantrin Plus” registered trademark and for passing-off or assisting others to pass-off the defendant/appellant’s product (the worm expeller branded as ‘Combinterin’) not being of either of the plaintiffs’ manufacture.

The plaintiffs/respondent also brought the action against the defendant appellant on the grounds that they were Importing or supplying the infringing product on a get-up which closely resembled the mark or get-up used by the plaintiff/respondent in connection with their “Combantrin Plus” worm expeller as to be calculated to lead to the belief that worm expeller products not of the plaintiffs/respondents manufacture are the goods of the plaintiffs/respondents.

The plaintiff’s action for injunction, order of delivery up for destruction of the infringing product (Combinterin), and general damages succeeded.

3. Beecham Group Ltd. and ors. v. Essdee Food Products Ltd (1985)

Suit No: CA/L/12/84

Following the introduction and sale of a non-alcoholic beverage under the trademark “Glucos-Aid” by the defendants (Essdee Food Products), the plaintiffs/respondents (Beecham Group) who were the owners of the registered trademarks “Lucozade” with trademark Nos. 5452 and 5456, filed an injunction restraining the defendants from infringing upon their registered trademarks. The plaintiffs/respondents also sought the delivery for destruction, all goods, cartons, wrappers, blocks, discs or stamps bearing any mark or set up that would be in breach of the injunction prayed for.

At the trial court, it was held that “Glucos-Aid” is confusingly similar in sound to the registered trademark “Lucozade”, and as such it offends the provision of Section 5(1) of the Trade Marks Act of 1965. The court therefore awarded N5,000 as damages to the plaintiffs/respondents.

On appeal to the Supreme Court, counsel for the plaintiffs/respondents cited the case of Bell Sons and Co. v. Godwin Alco & Others to buttress the point that both the ears and the eyes must be together involved in the exercise of comparison. Applying the test in that case, the Supreme Court dismissed the appeal and held that “Glucos-Aid”, in sound, is confusing to ‘Lucozade’ and it will undoubtedly mislead the public.

“…I also see no reason why I should interfere with the damages awarded by the learned trial Chief Judge.  I regard the award as reasonable in the circumstances of the case.  In the end this appeal has failed and it is dismissed. The judgment of the Chief Judge of the Federal High Court in Suit FHC/L/86/80 is affirmed. I award N300.00 costs in favour of the respondent.”

4. Alban Pharmacy Ltd. v. Sterling Products International Incorporated (1968)

Suit No. S.C. 459/1966

In Alban v. Sterling, the appellants — a firm known as Sterling Products International Incorporated, were the proprietors of the registered trademark “Castoria” in Nigeria.  The mark was registered on November 26, 1958 in Class 3 for medicinal products. On May 3, 1962, the respondent, Alban Pharmacy Limited, applied to the Registrar of Trademarks for the registration of the word “Casorina” in Class 3. The appellants objected to the respondent’s application to use the mark “Casorina” on medicines of the same type as those sold by the appellant i.e. laxative for children and growing children.

At the High Court, the learned trial judge found in favor of the respondent.

The two marked, exhibit 1 and 3 are so different when put side by side that the question that these are similar in picture does not at all arise… In the case in hand, the suggestion is that anyone may be deceived into taking the mark of the plaintiff for that of the defendant.  I have no hesitation in holding that the mark sought to be registered by the applicants is different from that already registered by the respondent and in no way resembles the marks of the respondent either in reference to the background or the words of the two products. I would therefore find in favor of the applicants and will make the order that the registrar of Trade Marks do proceed to register the mark of the applicants notwithstanding opposition by the respondents.”…Adefarasin J.

The case proceeded to the Supreme Court where the court held that the trial judge’s approach to the issue was in error. According to the Supreme Court, putting the two trademarks side by side in order to look for resemblance was not the right approach — “what the learned judge had in mind was a case of passing-off which must be distinguished from a claim of infringement”. The court therefore held that the apprehensions of the appellants were well founded because if the proposed trademark “Casorina” was allowed to be registered the syllable “Cas” will no doubt form the essential part of the name of the medicine and was likely to cause confusion in the minds of the public. Again, the last syllable in the mark “Casorina” namely “RINA” in itself was not free from causing confusion with “RIA” in “Castoria””.

Ademola C.J.N. was of the opinion that in determining what constitutes an infringement, “the mark sought to be registered must not when compared with what is already registered, deceive the public or cause confusion”.

“The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection.”…Ademola C.J.N.

This case establishes the principle that in determining the likelihood of confusion between two marks, it may be necessary to compare the marks visibly and also phonetically.

This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.

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About Bob Aroture 555 Articles
Bob is a Senior Editor and Content Development Manager at Nigerian Law Intellectual Property Watch. He holds a BS degree, with a major in biochemistry. He works directly with the Newsroom Team. His focus areas are technology and innovation, and pharmaceutical technology. Email: editorial@nlipw.com