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Patkun Industries Ltd v. Niger Shoes Manufacturing Co. Ltd.

Supreme Court of Nigeria

Judgement delivered on Friday, December 9, 1988
Citation: 31 NIPJD [SC. 1988] 189/1987
Suit No. SC. 189/1987       Jurisdiction: Nigeria

BEFORE THEIR LORDSHIPS

ABUBAKAR BASHIR WALI, J.S.C.
ABDUL GANIYU OLATUNJI AGBAJE, J.S.C.
ADOLPHUS GODWIN KARIBI-WHYTE, J.S.C. (Delivering the Lead Judgement)
AUGUSTINE NNAMANI, J.S.C.
MUHAMMADU LAWAL UWAIS, J.S.C.

Appearances: L. N. Umezurike for the Appellant
Felix C. Odiasi for the Respondent

Interpretation of the proviso to Section 3 of the Trade Marks Act 1965 — Whether or not that proviso to Section 3 of the Trade Marks Act 1965 preserved the common law right of action in passing-off as a common law remedy or whether the proviso had converted the remedy to a statutory one under the Act.

I. FACTS

This appeal was after argument on the 27th September, 1988 summarily dismissed with costs assessed at N500 to the Respondents. I indicated then that I will give my reasons today. I herein below state my reasons.

The very narrow point of law which fell for determination in the Federal Revenue Court was whether that Court had jurisdiction in an action for infringement of a registered trademark where damages for passing-off of the goods has also been claimed.

The appeal to this court arose in this way. Plaintiff hereinafter referred to as the Respondent brought an action dated 27/11/79 in the Federal High Court, Enugu, claiming from the Defendants hereinafter referred to as the Appellants as follows:-

CLAIM

“(1) The Plaintiff who has its registered office at No.132 Awka Road, Onitsha is the registered proprietor of trade mark described as NISHMACO and registered as No. 17229 on 6/2/66 under Section 22 and regulation 35 of Cap. 199 laws of Nigeria in respect of shoes, slippers (Foot wears) and all goods included in the class.

(2) On or about the month of November, 1979 at Onitsha, Ichi and elsewhere in Nigeria the Defendants as retailers, distributors and Importers or Agents thereof, sold and distributed and Imported or caused to be sold, distributed and Imported goods and in particular SLIPPERS, not of the Plaintiffs manufacture and merchandise, as and for goods of the Plaintiffs manufacture or merchandise, and/OR enabling others to do such act, by infringement of the Plaintiffs Trade Mark namely NISHMACO and passing off same thereof.

Whereof the plaintiff claims against the Defendant jointly and severally:-

(a) A Declaration that the Defendants by themselves or through their Agents are not entitled to pass off goods not of the Plaintiffs manufacture or merchandise (as hitherto they have been doing), as and for goods of the Plaintiffs manufacture and merchandise and/OR (enabling others to do such act).

(b) An Injunction, restraining the Defendants their Servants and Agents from passing off goods not of the Plaintiffs manufacture or merchandise and/OR enabling others to do such act.

(c) Delivery of all cartons, wrappers, labels, blocks, discs or stamps bearing any mark of NISHMACO or set up that would be in breach of the Injunction prayed for.

(d) An account of the profits made by the Defendants by reason of their having carried out the said act of passing off or alternatively an enquiry as to damages.

(e) In the alternative (d) above N1,000,000.00 (one million Naira) as damages.

(f) Costs of these proceedings.

(g) Further or other Relief.

Pleadings were duly ordered, filed and served.

The following averments in the statement of claim are relevant and of critical importance to the action before the Court. Paragraphs 1, 2, 3, 4, 13, 14(a) (b) (c) (d) of the statement of claim aver as follows:-

“(1) The Plaintiff who has its registered office at No. 132, Awka Road, Onitsha is the registered proprietor pf trade mark described as NISHMACO and registered as No. 17229 on 6/2/66 under Section 22 and regulation 35 of Cap. 199 laws of Nigeria in respect of shoes, slippers (Foot wears) and all goods included in the class. The certificates will be founded upon at the trial.

(2) On or about the month of November, 1979 at Onitsha, Ichi and elsewhere in Nigeria the Defendants as retailers, distributors and Importers or Agents thereof, sold distributed and Imported or caused to be sold, distributed and Imported goods and in particular SLIPPERS, not of the Plaintiffs manufacture and merchandise, as and for goods of the Plaintiffs manufacture or merchandise and/or enabling others to do such act, by infringement of the plaintiffs Trade Mark, namely NISHMACO and passing off same thereof.

(3) On or about the 13th November, 1979 information reached the Plaintiffs that certain persons were infringing the Trade Mark of the Plaintiffs and passing off certain goods and in particular slippers not of the Plaintiffs manufacture and merchandise, as and for goods of the Plaintiffs manufacture or merchandise and/OR enabling others to do such acts.

(4) On or about the 14th November, 1979, the Plaintiffs found as a fact that the 1st Defendant, who carries on business under the name and style of TOMA BROTHERS assemble and market the said slippers at Onitsha, Ichi, Nnewi and elsewhere in the country.

(13) The Defendants, in breach and violation of the proprietary rights of the Plaintiffs imported, and distributed and sold respectively those slippers with the plaintiffs labels of Trade Mark thereon in order to catch the market and indeed caught up with the market – for at the material period of the Police raid the whole of the slippers markets in Onitsha, Ichi Nnewi and elsewhere were flooded with slippers with the labels of the Plaintiffs Trade Mark thereon.

(14) The Defendants by the said acts must have made hundreds of thousands of profits by such acts as are complained of by the plaintiff.

Wherefore the Plaintiff claims against the Defendant jointly and severally:-

(a) A Declaration that the Defendant by themselves or through their Agents are not entitled to infringe the Plaintiff’s Trade Mark and pass off goods not of the Plaintiff’s manufacture or Merchandise (as hitherto they have been doing) as and for goods of the Plaintiff’s manufacture and merchandise and/OR enabling others to do such act.

(b) An injunction, restraining the Defendants their Servants and Agents from passing off goods not of the Plaintiff’s manufacture or merchandise and/OR enabling others to do such act.

(c) Delivery of all cartons, wrappers, labels, blocks, discs or stamps bearing any mark of NISHMACO or get up that would be in breach of the Injunction prayed for.

(d) An account of the profits made by the defendants by reason of their having carried out the said act of Infringement and passing off or alternatively an enquiry as to damages.

The appellants after denying the above averments in paragraphs 1, 2, 3, 4, 5, 6, 7, 8 of the Statement of Defence and specifically in paragraph 9 averred as follows –

“9. In further answer to paragraph 3 of the Statement of Claim the 1st and 2nd Defendants deny that they passed off the goods as and for goods of the Plaintiffs. The 1st and 2nd Defendants do not admit that they infringed the Plaintiff’s Trade Mark or any other trade mark. The labels aforesaid were ordered by, and made for, the Plaintiff. They were not used in a spurious manner by the 1st and 2nd Defendants, but were used on the Plaintiffs goods,”

After the above specific denial, Appellant pleaded in paragraphs 16 and 18 of the Statement of defence as follows –

“16. The 1st and 2nd Defendants will at the trial of this suit contend that this action is not properly constituted and incompetent and will urge that it be dismissed.”

“18. The 1st and 2nd Defendants will at the hearing of this suit put forward all legal and equitable defences and will in particular contend that this Court has no jurisdiction to entertain this suit.”

Relying on this averment in the statement of defence Appellants brought a motion under Order 33 rules, 1. 2, and 4 of Rules of the Federal Revenue Court, 1976 and section 7(1)(c)(ii) of the Federal Revenue Court Act 1973, praying the court to strike out the suit for want of jurisdiction. Thus the jurisdiction of the court was argued as a preliminary issue. After arguments on the motion the learned Judge on 8/7/81 held that the court had jurisdiction and dismissed the application. Appellants dissatisfied with this ruling appealed to the (Federal) now Court of Appeal, relying on three grounds of appeal. Grounds 1 and 2 challenged the interpretation of the provisions of section 7(1)(c)(ii) of the Federal Revenue Court Act 1973 and section 230 of the Constitution 1979. Ground 3 related to the construction of section 3 of the Trade Marks Act, 1965.

In the brief of argument filed by the appellant in the (Federal) Court of Appeal, the issue arising for determination was stated as follows –

“… whether the learned trial Judge was entitled to hold that the Federal High Court has and can exercise jurisdiction in a claim for infringement of registered trade mark and passing off joined together in one action.”

Respondents in the Court of Appeal, also the Respondent in this court did not put in appearance and no brief of argument was filed on their behalf.

Learned counsel for the Appellant relied on the argument in his brief and did not advance any oral argument. In a considered judgment the (Federal) Court of Appeal observed that

“There is no controversy as to the proper forum for the claim for infringement of trade mark to be litigated. The problem as I have earlier indicated is with the claim for passing off.”

After setting out the provision of section 3 of the Trade Marks Act, the Federal Court of Appeal stated,

“In the light of this provision, it is my considered opinion that a common law action of passing-off can arise from an infringement of registered trade mark. It is also my view that since the statutory bar does not apply to actions in respect of passing-off, a plaintiff may and often does, join in one action a claim for passing off and for infringement of his registered trade mark. This is the situation in the case in hand. The claim for passing-off arose from an infringement of the plaintiff’s registered trade mark. The claim in passing off surely derives its existence from the infringement of the registered trade mark and it makes good sense that both claims be joined in one action…”

The Federal Court of Appeal on the above reasoning and in a considered judgment delivered by Katsina-Alu, J.C.A. to which Olatawura and Aseme, JJ.C.A. concurred, dismissed the appeal on 21/4/87. Appellant still dissatisfied has now appealed to this court. The grounds of appeal, which are now five substantially contain the same challenge to the jurisdiction of the Court as in the Court of Appeal, for the alleged wrong construction of the enabling statutory provisions.

Omitting the particulars because of their prolixity, the grounds of appeal filed are as follows –

“1. The Learned Justices of the Court of Appeal misconstrued Section 7(1)( c)(ii) of the Federal Revenue Court (now Federal High Court) Act, 1973 and in so misconstruing it came to a wrong conclusion.

2. The Learned Justices of the Court of Appeal erred in law when they held that:

“The fundamental question is whether a common law action of passing off can arise from an infringement of trade mark.”

3. The Learned Justices of the Court of Appeal erred in law in their construction of Section 3 of the Trade Marks Act, 1965.

4. The Learned Justices of the Court of Appeal erred in law in mixing up the issue of cause of action with the issue of jurisdiction and in so mixing up the issues came to a wrong conclusion.

5. The Learned Justices of the Court of Appeal erred in law when they held in effect that the Federal High Court can entertain a passing off action when joined with an action for the infringement of registered trade mark.”

Both Appellants and Respondents filed their briefs of argument, and relied on them in argument before us. Appellant filed a reply to the respondent’s brief of argument. Appellant in his brief of argument formulated three issues for determination as follows:-

“(1) Whether the jurisdiction of the Federal High Court as spelt out in Section 7(1)(c)(ii) of the Federal Revenue Court Act, 1973 extends to passing-off action.

(2) Whether:

(i) Section 3 of the Trade Marks Act deals with causes of action or jurisdiction;

Section 3 of the Trade Marks Act, 1965 can confer jurisdiction on the Federal High Court to entertain passing off action.

(3) Whether the Federal High Court can entertain a passing off action when joined with an action for the infringement of registered trade mark.”

Although the issues for determination was differently formulated by respondent, that formulation seems to me to encompass the same areas as that formulated by the appellant. The issues for determination as formulated by the Respondent is as follows –

“Whether the Federal High Court adopted the correct approach when it assumed jurisdiction and entertained an action for passing off when such passing off arose from an infringement of a registered trade mark and both the infringement of the trade mark and the passing off are joined together.”

Ideally, the above formulation which-states concisely the issue raised in the preliminary objection is the better of the two formulations. This is clear from the argument in the appellant’s brief which duplicates in the three issues the arguments in the first issue.

I shall now state the submissions of counsel before us. In his brief of argument which he adopted, counsel to the appellant argued ground 1 of the grounds of appeal in the first issue, grounds 2, 3, 4 and 5 in the 2nd and 3rd issues. Concisely stated Counsel was challenging the same lack of jurisdiction on the different grounds stated therein. A careful reading of issue number 1 formulated by counsel for the appellant discloses that if successful it was sufficient for the determination of the appeal.

Mr. Umezurike of counsel for the appellant argued the first issue for determination. Citing and relying on sections 7(1)(c), (ii) of the Federal Revenue Court Act 1973, Section 230 of the Constitution, and the judgment of this Court in Bronik Motors Ltd. & anor. v. Wema Bank Ltd. (1983) 6 S.C. 158 he submitted quite correctly that the jurisdiction of the Federal Revenue Court was limited to the matters prescribed in section 7 of the Federal Revenue Court Act, 1973, and such other matters as may be prescribed by the Constitution or the National Assembly. Counsel conceded that Section 7(1)(c)(ii) of the Federal Revenue Court Act, 1973 vested the court with jurisdiction in respect of civil causes or matters arising from any enactment relating to specific types of intellectual property, namely, copyright, patents, designs, trademarks, and merchandise marks, but only where the cause of action arises from an enactment.

Counsel referred to the definitions of “cause of action”, “enactment” in Section 63(1) of the Federal Revenue Court Act 1973 and “enactment” in Section 27(1) of the Interpretation Act, 1964 and came to the conclusion that they did not include “common law.” From this premise it was contended that since action for infringement of registered trade mark is a cause of action and passing-off is a cause of action, and whereas the former is created by statute, namely section 3 of the Trade Marks Act 1965, and Passing-off action is a common law cause of action not created by statute, and does not arise from any enactment but common law, the Federal High Court has no jurisdiction in actions founded on passing-off. Counsel sought to apply the maxim expressio unius est exclusio alerius to the construction of Section 7(1)(c)(ii). Relying also on Morgan & ors. v. Henry Crawsberg (1871) 5 LRHL. 304,317-318, it was submitted that by the specific mention in Section 7(1)(c)(ii) of the Act of Copyright, patents, designs, trademarks and merchandise marks, all of them types of intellectual property and the omission of passing off action, an action for the protection of intellectual property, Passing-off is excluded and is not one of the causes of action in respect of which jurisdiction is conferred on the Federal High Court by Section 7(1)(c)(ii) of the Act No. 13 of 1973.

On issue No.2, Counsel submitted that Section 3 of the Trade Marks Act 1965 deals with causes of action and not jurisdiction. Counsel conceded that the same set of facts can give rise to infringement of trademarks as well as passing-off, but he argued that the question of which court will entertain the action is one of jurisdiction. It was submitted that the Court of Appeal confused the two issues of “jurisdiction” and “cause of action,” because the same set of facts were involved. The Federal High Court cannot exercise jurisdiction in respect of causes of action giving rise to passing-off actions.

On the third issue, it was submitted that although the Federal High Court has jurisdiction in respect of actions for infringements of registered trade marks, there is none in respect of passing-off actions. The Federal High Court, it was submitted, is allowed to unite several causes of action in the same suit, but such joinder is only permissible where there is jurisdiction in all the causes of action. It was therefore submitted a joinder of the two causes of action, namely infringement of registered trade mark and passing off action was not possible.

Respondent in their brief of argument supported the judgment of the Court of Appeal and submitted that the Federal High Court not only has jurisdiction in actions for passing-off arising from infringement of registered Trade Marks, it also has jurisdiction where actions in respect of the infringement of trademarks and passing-off actions are joined in the same suit. For this proposition reliance was placed on Sections 7(1), 63 of the Federal High Court Act No. 13 of 1973, Sections 228,230(1) of the Constitution 1979 and Section 3 of the Trade Marks Act, No 29 of 1965, The Respondent relied on Bullen and Leake and Jacobs, Precedents of Pleadings 12th Ed. P. 872 and Kerly’s Law of Trade Marks and Trade Names (1972) 10th Ed. p. 871 for the submission that claims for passing-off, and infringement of registered trademarks can be joined in one action. It was submitted that while action for passing- off per se is a creature of the common law, it can also arise from infringement of a registered trademark. All that was required to confer jurisdiction on the Federal High Court was that the cause or matter arises from an enactment relating to trademark. Counsel relied on Johnson Ishekwene v. E. O. Ogunbode & anor. (1976) FRCLR (pt.11) p.64 at p. 68. These summarily stated were the submissions before us. The question of the scope and content of the jurisdiction of the Federal High Court. very much misunderstood by many legal practitioners, appears to stem from the very restrictive interpretation given to the statutory and constitutional provisions of Section 7 of the Federal High Court Act, 1973 and Section 230(1) of the Constitution 1979 which govern the jurisdiction of the Court. In Bronik Motors Ltd. v. Wema Bank Ltd. (supra) and many other cases, the most recent of which is Savannah Bank Ltd. v. Pan Atlantic (1987) 1 NWLR (Pt.49), 212 the scope of the jurisdiction of the Federal High Court has been pronounced upon. The only issue in this appeal concerns the interpretation of the scope of the provisions of section 7(1)(c)(ii) of the Federal High Court Act. 1973. In construing the relevant provision it is helpful to consider the whole section and especially the opening words of the different paragraphs (a)(b) and (c) of the section. I reproduce the whole of the section for the sake of clarity and ease of reference.

“7. (1) The Federal Revenue Court shall have and exercise jurisdiction in civil causes and matters-

(a) relating to the revenue of the Government of the Federation in which the said Government or any organ thereof or a person suing or being sued on behalf of the said Government is a party;

(b) connected with or pertaining to –

(i) the taxation of companies and of other bodies established or carrying on business in Nigeria and all other persons subject to Federal taxation,

(ii) customs and excise duties,

(iii) banking, foreign exchange, currency or other fiscal measures;

(C) arising from –

(i) the operation of the Companies Decree 1968 or any other enactment regulating the operation of companies incorporated under the Companies Decree 1968,

(ii) any enactment relating to copyright, patents, designs, trademarks and merchandise marks;

(d) of Admiralty jurisdiction.”

Whereas Section 7, (1)(a) which specifically refers to the revenue of the Government of the Federation uses the words “relating to,” 7(1)(b) uses the expression “connected with or pertaining to;” and 7(1)(c) uses the phrase “arising from.” In 7(1)(d) no expression appears. Each of these expressions has its own emphasis on the expression of legislative intention. They all refer to ‘civil causes and matters.’

Thus for the court to exercise jurisdiction under s.7(1)(a) the action before it must relate to the revenue of the Government. It is not sufficient that a servant of the Government of the Federation is a party. The action must involve the revenue of the Government of the Federation – See Ishekwene v. Ogunbode (1976) FRCLR. 64. On the other hand, where S. 7(1)(b) uses the expression “connected with or pertaining to” it suggests a necessary natural relationship between two factors. Thus for the exercise of jurisdiction the cause of action must fall within this paragraph only where it has a relationship, namely there must be a logical nexus. Thus the expression necessarily connotes belonging or within the sphere of. Paragraph (c) under which (ii) trademarks, is, opens with the expression “arising from,” and specifically refers to an “enactment relating to.” Something arises from another when it is traceable to that other thing from which it is said to arise from. Thus in this case where a cause of action is said to arise from any enactment, it means such cause of action has its being from such enactment.

Counsel for the appellant has relied on the interpretation section i.e.  S.63(1) of the Federal High Court Act 1973 for the meaning of the words “cause,” “action” “enactment.” There is no doubt that the word ’cause’ or ‘matter’ as used in Section 7(1) means and includes “any action, suit or other original proceeding between a plaintiff and a defendant…” It was further submitted and correctly in my view, that since Section 7(1)(c)(ii) speaks of enactment and has named particular enactments in respect of which jurisdiction can be exercised, by the application of the rule expressio unius est exclusio alterius, only statutes were contemplated in the exercise of jurisdiction. Civil “causes or matters” other than those arising from the named enactments were not in contemplation of the provision. Accordingly whilst civil causes founded on enactments relating to infringement of registered trademarks are within the jurisdiction, common law actions for passing-off arising from infringement of registered trademarks do not fall within the jurisdiction.

It seems to me Counsel to the appellant has either misunderstood the clear words of the section or has deliberately refused to understand the meaning.

For a proper understanding of the scope of section 7(1)(c)(ii) in relation to the exercise of jurisdiction with respect to the infringement of registered trademarks, it is essential to read the Trade Marks Act 1965. This is because it is in this Act that the cause of action can be found. Thus section 7 having conferred jurisdiction, the scope of the jurisdiction and exercise of the right of action is found in the Act itself. It is well settled that a cause of action includes all those things necessary to give a right of action, and every fact which is material to be proved to entitle the Plaintiff to succeed – See Cooke v. Gill (1873) L.R.8 C.P. 107

Section 3 of the Trade Marks Act 1965 provides as follows-

“No person shall be entitled to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered trade mark; but nothing in this act shall be taken to affect rights of action against any person for passing off goods of another person’s or remedies in respect thereof.”

The section prohibits action in respect of unregistered trademarks but preserves the right of action for passing-off goods as the goods of another. Thus a right of action in respect of passing-off arising from the Trade Mark Act 1965 is preserved by the proviso italicised.

Counsel for the appellant Mr. Umezurike, has submitted that the Tort of passing-off is a common law action and does not arise from any enactment and therefore cannot fall within the jurisdiction of the Federal High Court. This is a misunderstanding of the true legal position. It is well settled law that where the provisions of a statute are positive, clear and unequivocal as to the abrogation of existing rights whether statute or common law, the words of such statutory provision must be given effect.

Again where a statutory provision is in conflict or differ from common law, the common law gives place to the statute. A statutory right may be conferred in addition to, and not in derogation of a common law right – See National Assistance Board v Wilkinson (1952) 2 Q.8. 648. This is exactly what Section 3 of the Trade Marks Act, 1965 has done. In addition to the right of action conferred on the owner of a registered Trade Mark, the statute has in this section conferred an additional right of action by preserving the right of action of passing-off in respect of such goods. Section 3 of the Trade Marks Act. 1965 proprio vigore thus gives a right of action of passing-off. The right of action is therefore derived from the Trade Marks Act, 1965 and not from the common law. It is not correct to assume that a right of action enacted into a statutory provision is ineffective merely because it has its origin in the common law. This is not so. The common law tort of passing-off in respect of other matters still exists, but in respect of trade marks. In this country the right of action of passing-off relating to the infringement of registered trademarks is statutory and can be found only in section 3 of the Trade Marks Act 1965.

The Court of Appeal in affirming the judgment of the learned Judge held erroneously that the passing-off action which arose from an infringement of plaintiffs trademarks is a common law action. The action is derived from the enactment and not from the common law.

It is well settled law that where a common law right has been enacted into statutory provision, it is to the statutory provision so made that resort must be had for such rights and not in the common law. In IML/Air Chartering Nig. Ltd. v IMNL International Messengers Ltd. (1979)5 FRCLR. 113 the same argument as in this case was put forward successfully by the defendant at the same state of the proceedings. There the action was a claim for N5,000 for passing-off the services and functions of the Plaintiffs by the defendants, their agents and servants. Again Plaintiff did not rely on any of the enactments regulating companies or stated in Section 7(1)(c)(ii) of the Federal High Court Act 1973 or Sections 19 & 25 of the Patents and Designs Act No. 60 of 1970. The general common law tort of passing-off would appear to have been relied upon. As was stated in that judgment “it is obvious from the writ of summons and statement of claim that the claim is one in respect of “passing-off” of services and functions which in my opinion is not the category of “passing off’ contemplated either in the Companies Decree 1968, Section 19 or in the enactments stated in Section 7(1)(c)(ii).”

I will adopt this reasoning in the interpretation of this provision. However on reading the writ of summons and statement of claim, in the instant case it is obvious that the action by the Plaintiff arose from the defendant infringing the Trade Marks of the Plaintiff. The first claim on the writ of summons states as follows:-

“(a) A declaration that the Defendants by themselves or through their agents are not entitled to infringe the Plaintiffs Trade Mark and passing-off goods not of Plaintiff’s manufacture or merchandise (as hitherto they have been doing), as and for goods of the Plaintiff’s manufacture and merchandise and/or enabling others to do such act”

The above claim was supported by paragraphs 2 & 3 of Plaintiffs amended statement of claim which averred as follows –

“2. On or about the month of November, 1979 at Onitsha, Ichi and elsewhere in Nigeria the Defendants as retailers, distributors and Importers or Agents thereof, sold distributed and Imported or caused to be sold, distributed and Imported goods and in particular SLIPPERS, not of the Plaintiffs manufacture or merchandise, as and for goods of the Plaintiffs manufacture or merchandise and/OR enabling others to do such act, by infringement of the plaintiffs Trade Mark, namely NISHMACO and passing off same thereof.

3. On or about the 13th November, 1979 information reached the Plaintiffs that certain persons were infringing the Trade Mark of the Plaintiffs and passing off certain goods and in particular slippers not of the Plaintiffs manufacture and merchandise, as and for goods of the Plaintiffs manufacture or merchandise and/OR enabling others to do such acts.”

Nothing can be clearer than that the above pleadings relied on the infringement of the registered Trade Marks for the claim before the court; and that the claim for passing off arose from the infringement of the trade mark. This claim of passing-off is different from a claim for passing-off which postulates that the plaintiff is actually marketing some goods and that the defendant is passing-off his own goods as and for the goods marketed by the plaintiff. This latter claim is clearly not founded on any of the enactments stated in Section 7(1)(c)(ii) and will not be within the jurisdiction of the court. – See IML/AIR chartering Nig. Ltd. v. IMNL International Messengers Nig. Ltd. (supra); Samuelson v. Producers Distributing Co. Ltd. (1932)1 Ch. 201.

It is therefore not correct to argue, as appellants have done in this case, that a passing-off action being an action at common law is not within the jurisdiction of the Federal High Court. It is undoubtedly correct to hold and I hold that a passing-off action arising from the infringement of Plaintiff’s registered trade mark or patents, its common law origin notwithstanding, is clearly within the jurisdiction of the Court as a civil cause or matter arising from any enactment relating to copyright, patents, trademarks and merchandise marks as provided under Section 7(1)(c)(ii) of the Federal High Court Act No.13 of 1973. In this case it is Section 3 of Trade Marks Act 1965.

In arguing the third issue, the faulty premise on which counsel for the appellant developed his argument of lack of jurisdiction was that although the Federal High Court has jurisdiction in respect of actions for infringement of registered trademark, it has no jurisdiction in respect of passing-off actions. Accordingly the Federal High Court cannot entertain a passing off action in respect of which it has no jurisdiction when joined with an action for the infringement of registered trademark in respect of which it has jurisdiction. The error in the argument lies in the view that the action for passing off goods by infringement of a registered trademark, is a common law action of passing off. We have already shown in this judgment that the right of action of passing-off arises from Section 3 of the Trade Marks Act, 1965, and therefore is a civil cause or matter, arising from the Trade Marks Act, 1965 which is an enactment relating to trademarks as prescribed in Section 7(1)(c)(ii) of the Federal High Court under the Federal High Court Act No. 13 of  1973. Accordingly the Federal High Court has jurisdiction to entertain the action.

Although the question of a joinder of causes of action is necessarily determined by whether there is jurisdiction, Order 11 r.6 Rules of the Federal High Court, 1976 allows joinder of several causes of action in the same suit, if both can conveniently be tried or disposed of together – See Gafai v. 4 U.A.C. Ltd. (1961) All NLR. 785. Even two distinct claims arising from the same transaction can be included at the time of the issue of the writ in one writ of summons – See Edilit Ltd. v. Elias Khawam & ors. Ltd. (1966) NMLR.289.

This is of course where the two claims can conveniently be tried together. There is no doubt that the infringement of the trade mark and the passing-off of the goods of the plaintiff as that of the defendants arise from the same transaction – See Bendir v. Anson (1936) 3 All ER. 326. They therefore can be tried together.

On the above analysis the Federal High Court has jurisdiction in respect of an action of passing-off arising from infringement of plaintiff’s registered trademarks, since the passing-off and the infringement of plaintiff’s registered trademark are matters from the same transaction which can conveniently be included in the same writ of summons and can be tried together.

All the grounds of appeal therefore fail and are dismissed.

These are my reasons for dismissing this appeal.

NNAMANI, J.S.C.:

This appeal came before this court on 27th September, 1988. Having read the record of proceedings, as well as the briefs of argument filed, and having heard learned counsel to the appellant, I was satisfied that it ought to be dismissed and I dismissed it. I gave indication that I would give my reasons for that judgment today. I now give my reasons. I have before now had the advantage of reading in draft the Reasons for judgment just delivered by my learned brother, KARIBI-WHYTE, J.S.C. and I entirely agree with them and adopt them as my own.

Following the action instituted by the respondent against the Appellant and 2 ors. in the Federal High Court, pleadings were exchanged by the parties. In paragraph 18 of the Statement of Defence, the appellant and the others averred as follows:-

“18. The 1st and 2nd Defendants will at the hearing of this Suit put forward all legal and equitable defences and will in particular contend that this court has no jurisdiction to entertain this Suit.”

Pursuant to this, the defendants brought an application in the Federal High Court under Order 33, Rules 1, 2 and 4 of the Rules of the Federal Revenue Court, 1976 and Section 7(1)(c)(ii) of the Revenue Court Act, 1973 praying for the dismissal of the Suit on the grounds of lack of jurisdiction. The Federal High Court on 8th July, 1981 refused the application and dismissed it. An appeal to the Court of Appeal against that ruling was unsuccessful. In his Ruling of 21st April, 1987 Katsina-Alu, J.C.A. who read the lead Ruling stated the principles relating to this matter correctly in my view. He stated at page 34 of the Record as follows:-

“Having said that I now come to the issue before the court. It is whether an action in passing off goods comes within the matters set out in Section 7(1)(c)(ii) of the Act No. 13 of 1973 ……………..

In the light of this provision (that is Section 3 of the Trade Marks Act), it is my considered opinion that a common law action of passing off can arise from an infringement of registered trademarks. It is also my view that since the statutory bar does not apply to actions in respect of passing-off, a plaintiff may and often does, join in one action a claim for passing off and for infringement of his registered trade mark. This is the situation in the case in hand. The claim for passing-off surely derives its existence from the infringement of the registered trade mark and it makes good sense that both claims be joined in one action I think however, that where an action is one in respect of passing off simpliciter of services, then the Federal High Court cannot exercise jurisdiction since it is outside the scope of Section 7(1)(c)(ii) of the Federal Revenue Court, Act 1973. Put simply it is not an action arising from any enactment relating to copyright, patents, designs trademarks and merchandise marks. Jurisdiction over such matters remains in the State High Courts.”

Notwithstanding this, the appellant appealed to this court. Issues for determination were set down in both appellants’ and Respondent’s briefs of argument.

In his argument before this court. learned counsel to the Appellant. Mr. Umezurike, submitted that having regard to the wording of Section 7(1)(c)(ii) of the Federal Revenue Court Act 1973, the Federal High Court cannot entertain an action of passing-off. He contended that the action of breach of trade mark cannot be joined with one of passing-off since one could not join an action within jurisdiction of a court with another action outside the court’s jurisdiction. He further contended that although the infringement of trade mark could give rise to passing-off, they are still two different issues and different courts ought to handle them. In his brief he referred to Section 63(1) of the Federal Revenue Court Act on the definition of cause of action; Section 28(1) of the Interpretation Act. 1964 on the definition of enactment. These definitions he contended did not include common law. Passing-off being a common law action does not arise from any enactment and cannot come within Section 7(1)(c)(ii). He did not dispute. however, that the same facts can give rise to passing-off and infringement or trade mark.

It seems to me that this matter can be resolved by looking at Section 7(1)(c)(ii) of the Federal Revenue Court Act No. 13 of 1973 and Section:; of the Trade Marks Act No. 29 of 1965. The two provisions are in these terms:

Section 7(1)(c)(ii) of Act No. 13 of 1973

“7(1). The Federal Revenue Court shall have and exercise jurisdiction in civil causes and matters-…

(c) arising from-

(i) . ……

(ii) any enactment relating to copyright, patents, designs, trade marks and merchandise marks.”

Section 3 Trade Afarks Act 1965.

“No person shall be entitled to institute any proceeding to prevent, or to recover damages for, infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or remedies in respect thereof.”

These two provisions when read together provide, in my view, the same answer as the Court of Appeal, gave in this matter. The Revenue Court Act states, a civil cause arising from an enactment relating to Trade Marks. Clearly the Trade Marks Act 1965 is an enactment relating to Trade Marks. The Act makes provision for actions for Infringement of Registered Trade Marks. It bars actions in respect of Unregistered Trade Marks. More significantly, it preserves in the proviso to Section 3 of the Act set down above, a right of action against any person for passing-off. It is necessary to observe that the words of the proviso are Nothing in this Act not Nothing in this Section for, if it were the latter. it would have been argued that the right of action on passing-off goods so granted would be limited to matters arising from unregistered trade marks. In the way it is worded, it is my view that there is preserved a right of action in passing-off of goods whether what is involved is an unregistered or registered Trade Mark. It seems to me that from the wording of the proviso to Section 3 read together with Section 7(1)(c)(ii) of Act No. 13 of 1973, a Statutory right of action on passing-off is provided. What is involved, at least as it relates to Trade Marks, is not the Common Law action of passing-off, but a statutorily guaranteed right of action. This to my mind is sufficient to dispose of the matter of jurisdiction. For it thus falls within Section 7(1)(c)(ii) of Act No. 13 of 1973.

As to joining the two actions in one suit, the complaint would not really arise once it is held that in this case of Trade Marks the Federal High Court has jurisdiction in both causes. It is conceded that in most cases of infringement of Trade Marks, the same facts would cover both the infringement and passing-off. Indeed it is the passing-off of the goods that may well constitute the infringement of the Trade Mark. To institute separate actions in such cases would only amount to an unnecessary multiplicity of actions.

It was for these reasons, and the more comprehensive reasons given by my learned brother which I had earlier adopted, that I dismissed this appeal.

UWAIS, J.S.C.:

I have had the opportunity of reading in draft reasons for judgment read by my learned brother Karibi-Whyte, J.S.C. I agree with the reasons and conclusion therein and only wish to add the following.

Section 3 of the Trade Marks Act. 1965 (No. 29 of 1965) provides-

No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”

Learned counsel for the appellant by referring to the provisions of Section 7(1)(c)(ii) of the Federal Revenue Court Act, 1973 (No. 13 of 1973) has submitted that the tort of passing-off relates to common law; and that although the respondent as plaintiff could sue in the Federal High Court for the infringement of its registered trade mark, by virtue of the provisions of Section 7(1)(c)(ii) of Act. No. 13 of 1973, it cannot do so in respect of passing-off arising from the breach of its trade mark, because the Federal High Court lacks jurisdiction in cases pertaining to tort.

Now section 7(1)(c)(ii) reads as follows –

“7.-(1) The Federal High Court shall have and exercise jurisdiction in civil causes and matters –

…………..

(c) arising from – .

(ii) any enactment relating to copyright, patents, designs, trade marks and merchandise marks, ..

There is no dispute that the facts which gave rise to respondent’s right to sue for the infringement of the respondent’s trade mark are the very facts that also gave the respondent the right to sue for the tort of passing-off. For the respondent’s claims in the Federal High Court read, as relevant, as follows-

“Wherefore the Plaintiff claims against the Defendants jointly and severally –

(a) A Declaration that the Defendants by themselves or through their Agents are not entitled to infringe the Plaintiff’s Trade Mark and pass off goods not of the Plaintiff’s manufacture or Merchandise (as hitherto they have been doing), as and for goods of the Plaintiff’s manufacture and merchandise and/or enabling others to do such act.

(b) An injunction, restraining the Defendants their servants and Agents from passing off goods not of the Plaintiffs’ manufacture or merchandise and/or enabling others to do such act.

(c) …….

(d) An account of the profits made by the defendants by reason of their having carried out the said act of infringement and passing off or alternatively an enquiry as to damages.”

And paragraphs 1 and 2 of its statement of claim reads –

“(1) The Plaintiff who has its registered office at No. 132, Awka Road, Onitsha is the registered proprietor of trade mark described as NISHMACO and registered as No. 17229 on 6/2/66 under Section 22 and regulation 35 of Cap. 199 laws of Nigeria in respect of shoes, slippers (Foot wears) and all goods included in the class. The certificates will be founded upon at the trial.

(2) On or about the month of November, 1979 at Onitsha, Ichi and elsewhere in Nigeria the Defendants as retailers, distributors and Importers or Agents thereof, sold, distributed and Imported or caused to be sold, distributed and Imported goods and in particular SLIPPERS, not of the Plaintiffs manufacture and merchandise, as and for goods of the Plaintiffs’ manufacture or merchandise and/or enabling others to do such act, by infringement of the plaintiffs’ Trade Mark, namely NISHMACO and passing off same thereof.”

It is not in doubt that the Federal High Court has jurisdiction to hear cases of alleged infringement of registered trade marks by virtue of the provisions of Section 3 of the 1965 Act read together with the provisions of Section 7(1)(c)(ii) of the Federal Revenue Court Act, 1973. It is also not in dispute that there cannot be an action for the infringement of unregistered trade mark by virtue of the provisions of Section 3 of the 1965 Act. However, where the infringement of the unregistered trade mark leads to the tort of passing-off, the 1965 Act, allows an action to be brought in respect of the passing-off. The flaw in the argument on behalf of the appellant that the Federal High Court lacks jurisdiction in passing-off actions can be seen in the fact that first, Section 7(1)(c)(ii) of the 1973 Act which vests jurisdiction in the Federal High Court, does not distinguish between the infringement of registered trade mark and unregistered trade mark. It simply talks of “enactment on trade marks.” So that the infringement of registered trade mark and unregistered trade mark could have been the subject of suit in the Federal High Court. But the limitation provided by the 1965 Act is that no action for the infringement of unregistered trade mark can be brought except an action for passing-off which stems from such infringement. Secondly, the 1965 Act does not state which court is vested with the jurisdiction to entertain cases of passing-off. Thirdly, if the same facts, as in the present case, give rise to both the infringement of a registered trade mark and passing-off: should two different suits be instituted in two different courts? That is, infringement of trade mark in the Federal High Court and passing-off in a State High Court? I think this dichotomy will not only lead to unnecessary multiplicity of cases and expense but may lead to the plaintiff losing one of the ‘two causes of action in the process. For where the Federal High Court hears and determines the case pertaining to the infringement of registered trade mark first before the plaintiff sues for passing-off in a State High Court, a demurrer or plea in the State High Court that the action thereat is res judicata or the plaintiff is estopped from suing by reason of the earlier decision of the Federal High Court in the infringement case is likely to succeed, since the facts or transaction giving rise to both the infringement of the registered trade mark and the passing-off are the same – See Fadiora v. Gbadebo (1978) 3 S. C. 219, and Odjevwedje v. Echanokpe (1987) 1 N.W.L.R. (Pt.52) 633 and Alhaji Bature Gafai v. U.A.C. Ltd. (1961) All N.L.R. 785. Moreover, it is against public policy that there should be multiplicity of actions arising from the same facts or transaction -interest re-publicae ut sit finis litium. See Ejiofodomi v. Okonkwo, (1982) 11 S.C. 74 at p.116

In my opinion, therefore, the Federal High Court has the jurisdiction, by virtue of Section 63 of the 1965 Act read together with Section 7 (1)( c)(ii) of the 1973 Act, to hear at the same time both the claims in respect of the infringement of the respondent’s registered trade mark and passing-off – see Gafai v. U.A.C. Ltd., (supra).

It was for these and the reasons given by my learned brother Karibi-Whyte, J.S.C. that I agreed on the 27th day of September, 1988 that this appeal should be dismissed with N500.00 costs to the respondent.

A. G. O. AGBAJE, J.S.C.: I dismissed the appellant’s appeal summarily on 27th September, 1988. I indicated then that I would give reasons for my judgment today. I now proceed to do so.

I have had the opportunity of reading in draft the lead reasons for judgment of my learned brother Karibi-Whyte, J.S.C. I agree with him that this appeal lacks merit. I will in view of the issue involved like to make the following contributions:-

The plaintiff company, Niger Shoe Manufacturing Company Ltd. sued the defendants Timothy Enemuo & 3 others in a Federal High Court, holden at Enugu claiming the following reliefs:-

“(1) The plaintiff who has its registered office at No. 132 Awka Road, Onitsha is the registered proprietor of trade mark described as NISHMACO and registered as No. 17229 on 6/2/66 under Section 22 and regulation 35 of Cap 199 laws of Nigeria in respect of shoes, slippers (Foot wears) and all goods included in the class.

(2) On or about the month of November, 1979 at Onitsha, Ichi and elsewhere in Nigeria the Defendants as retailers, distributors and Importers or Agents thereof, sold, distributed and Imported or caused to he sold, distributed and Imported goods and in particular SLIPPERS, not of the Plaintiffs manufacture and merchandise, as and for goods of the Plaintiffs manufacture or merchandise, and/OR enabling others to do such act, by infringement of the plaintiffs Trade Mark. namely NISHMACO and passing off same thereof. Whereof the plaintiff claims against the Defendants jointly and severally:-

(a) A declaration that the Defendants by themselves or through their Agents are not entitled to pass off goods not of the Plaintiffs manufacture or merchandise (as hitherto they have been doing) as and for goods of the Plaintiffs manufacture and merchandise and/OR enabling others to do such act,

(b) An Injunction, restraining the Defendants their servants and Agents from passing off goods not of the plaintiffs manufacture or merchandise and/Or enabling others to do such act,

(c) Delivery of all cartons, wrappers, labels, blocks, discs or stamps hearing any mark of NISHMACO or get up that would be in breach of the Injunction prayed for.

(d) An account of the profits made by the Defendants by reason of their having carried out the said act of passing off or alternatively an enquiry as to damages,

(e) In the alternative (d) above, N1,000,000 (one million Naira) as damages.

(f) Costs of these proceedings.”

By paragraph 14 of its amended statement of claim, the plaintiff’s claims against the defendants are stated as follows:-

“Wherefore the Plaintiff claims against the Defendant jointly and severally:-

(a) A Declaration that the Defendant by themselves or through their Agents are not entitled to infringe the plaintiffs Trade mark and pass off goods not of the Plaintiffs manufacture or Merchandise (as hitherto they have been doing), as and for goods of the Plaintiffs manufacture and merchandise and/OR enabling others to do such act.

(b) An injunction, restraining the Defendants their servants and Agents from passing off goods not of the Plaintiffs manufacture or merchandise and/OR enabling others to do such act.

(c) Delivery of all cartons, wrappers, labels, blocks, discs or stamps bearing any mark of NISHMACO or get up that would be in breach of the Injunction prayed for.

(d) An account of the profits made by the defendants by reason of their having carried out the said act of Infringement and passing off or alternatively an inquiry as to damages.

(e) In the alternative (d) above, N1,000,000.00 (one million Naira) as damages.

(f) Costs of these proceedings.”

Since the statement of claim supercedes the writ, the plaintiff’s claims against the defendant must be taken as contained in paragraph 14 of the statement of claim which I have just reproduced above.

The 1st and 2nd defendants by paragraph 16 of their amended statement of defence pleaded as follows:-

“16. The 1st and 2nd Defendants will at the trial of this suit contend that this action is not properly constituted and incompetent and will urge that it be dismissed.

18. The 1st and 2nd Defendants will at the hearing of this suit put forward all legal and equitable defences and will in particular contend that this court has no jurisdiction to entertain this suit.”

The issue of jurisdiction was taken as a preliminary point and was in fact the subject-matter of a motion on notice filed on behalf of the 1st and 2nd defendants by their counsel under Order 33 Rules 1, 2 and 4 of the Federal High Court (Civil Procedure) Rules and Section 7(1)(c)(ii) of the Federal High Court Act, praying the Federal High Court to strike out the plaintiff’s suit on the ground that the claims in the action were not within the jurisdiction of the Federal High Court. Tofowomo, J. who heard the arguments on the preliminary point refused to accede to the request of the 1st and 2nd defendants who appealed unsuccessfully against the ruling to the Court of Appeal Enugu Division. This is a further appeal against the ruling to this court, by the 2nd defendant only.

The issues for determination in this appeal according to the 2nd defendant are as follows:-

1. “Issue No. (1): Whether the jurisdiction of the Federal High Court as spelt out in Section 7(1)(c)(ii) of the Federal Revenue court Act, 1973, extends to passing off action.”

2. “Issue No.2: Whether (i) Section 3 of the Trade Marks Act, 1965 deals with causes of action or jurisdiction; (ii) Section 3 of the Trade Marks Act, 1965 can operate to confer jurisdiction on the

Federal high Court: (GROUNDS 2 & 3 OF APPEAL)”

3. “Issue No. (3): Whether the Federal High Court can entertain a passing off action when joined with an action for the infringement of registered trade mark. (GROUND 1 OF APPEAL)”

Section 7(1)(c)(ii) of the Federal Revenue Court Act, 1973 provides inter alia for the civil jurisdiction of the Federal Revenue Court as follows:-

“7. – (1) The Federal Revenue Court shall have and exercise jurisdiction in civil causes and matters-

c) arising from –

(ii) any enactment relating to copyright, patents, designs, trade marks and merchandise marks.”

This court has held in Bronik Motors Ltd. & anor. v. Wema Bank Ltd. (1983) 6 S.C. 158 that the jurisdiction of the Federal High Court is limited by Section 7 of the Federal Revenue Court Act, 1973 and Section 230 of the Constitution of the Federal Republic of Nigeria, 1979.

In this regard, Bello, J.S.C. as he then was, said at pages 167-168:-

“…..the jurisdiction of the Federal High Court is limited to:

(1) such matters connected with or pertaining to the revenue of the Federation as may be prescribed; See Section 230(1)(a):

(2) such other matters than those specified in (1) above as may be prescribed; See Section 230(1)(b);

(3) such jurisdiction as was vested in the former Federal Revenue Court established under the provisions of the Federal Revenue court Act, 1973: Section 230(2)” .

Section 3 of the Trade Marks Act, 1965 provide as follows:

“No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered Trade Mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”

The question for determination on the point of jurisdiction raised by the defendant is therefore whether or not on a true and proper construction of the plaintiffs claims they arise from any enactment relating to copyright, patent, design trade marks and merchandise marks as stated in Section 7(1)(c) of the Act of 1973.

By paragraph 1 of the plaintiff’s statement of claim, the plaintiff pleads that it is the registered proprietor of trade mark described as NISHMACO and registered as No. 17229 of 6/2/66 under Section 22 and Regulation 35 of Cap. 199 Laws of Nigeria in respect of shoes, slippers and all goods included in the class. It is about the infringement of this trade mark by the defendants that the plaintiff complains and seeks the reliefs it is praying for in this action.

It is to be noted that the plaintiff’s action is not grounded or founded in the common law tort of passing off simpliciter. Passing off of the plaintiffs goods is only referred to as an incidence of the infringement of the plaintiff’s registered trade mark complained of. So it is not correct as contended for by counsel for the 2nd defendant that the plaintiff’s claims are based on the common law passing off action. The expression “pass off” is an ordinary expression. And when it is said that something is passed off as something it means no more than that something is falsely represented as something. The indications in the plaintiff’s statement of claim, are clearly to the effect that it is using the expression “pass off” in its ordinary meaning not in any technical sense.

The plaintiff’s claims in my judgment relate exclusively to the infringement of its registered trade mark. The claims evidently arise from an enactment relating to trade marks to wit Trade Marks Act, 1965. So the Federal High Court has jurisdiction, in my judgment, to try the action under Section 7(1)(c)(ii) of the Act of 1973. We are here concerned “with a registered trade mark, so Section 3 of the Trade Marks Act, 1965 which I have quoted earlier on in this judgment cannot be invoked against the plaintiff’s action but rather in favour of it.

It is for the above reasons that I dismissed the appellant’s appeal on 27/9/88

A. B. WALI, J.S.C.:

This appeal was heard on 27th November, 1988 and was summarily dismissed with costs of N500.00 to the Respondent. On that day I reserved giving my reasons for doing so today, which I now give.

I have had the privilege of reading before now the Reasons for Judgment of my learned brother, Karibi-Whyte, J.S.C. with which I agree and therefore adopt same as my own.

The gravamen of the complaint in this appeal is as stated by the Respondent in the only issue he formulated in his brief of argument, which is –

Whether the Federal High Court adopted the correct approach when it assumed jurisdiction and entertained an action for passing off when such passing off arose from an infringement of a registered trade mark and both the infringement of the trade mark and the passing of are joined together'”

It has been conceded by the appellants that the Federal High Court can entertain an action for infringement of registered trade mark, but what is disputed is whether it can entertain an action for passing off when joined with that of infringement of registered trade mark.

Section 3 of the Trade Marks Act, 1965 provides that-

“No person shall be entitled to institute any proceeding to prevent, or to recover damages for infringement of an unregistered trade mark, but nothing in this Act shall be taken to affect rights of action against any person for passing off goods of another person or remedies in respect thereof.”

The true intendment and purpose of the Section has been neatly summarised in the Respondent’s brief as follows –

(a) No person shall sue for infringement of an unregistered trade mark.

(b) Any person can sue for passing off of an unregistered trade mark.

(c) Any person can sue for infringement and passing off for a registered trade mark.

Section 63 of Decree No.13 of 1973 defines the words “’cause” and “‘matters arising” as contained in Section 7(1) of the Decree, and from that definition it is clear that the Federal High court can assume jurisdiction in civil proceedings arising from the provision of section 3 of the Trade Marks Act. See Bronik Motors Ltd. & anor. v. Wema Bank Ltd. (1983) 6 S.C. 158 and Savannah Bank v. Pan Atlantic (1987) 1 N.W.L.R. (Pt.49) 212.

The endorsement on the Writ of summons and the Amended Statement of Claim of the Respondent showed clearly that the cause of action is the “‘infringement of the registered trade mark” resulting in the 2nd cause of action which is “passing off.” The two causes can conveniently be joined and dealt with together, as the infringement of the trade mark and the passing off of the goods arose from the same transaction. See Gafai v. U.A.C. Ltd. (1961) ALL N.L.R. 785 and Bendir v. Anson (1936) 3 ALL E.R. 326.

It is for these and the more detailed reasons contained in the lead REASONS FOR JUDGMENT of my learned brother, Karibi-Whyte, J.S.C., that I dismissed the appeal.

II.  CASES REFERRED TO

  1. Alhaji Banture Gafai v. UAC (1961) ALL NLR 785
  2. Bendir v. Anson (1936) 3 All E.R. 326 – Foreign Case
  3. Bronik Motors Ltd. v. Wema Bank Ltd (1983) 6 S.C. 158
  4. Cooke v. Gill (1873) L.R. 8 C.P. 107 – Foreign Case
  5. Edilit Ltd v. Elias Khawam Ltd (1966) N.M.L.R.
  6. Ejiofodomi v. Okonkwo (1982) 11 S.C. 74 at 116
  7. Fadiora v. Gbadebo (1978) 3 S.C. 219
  8. IML Air Chartering Nig. Ltd v. IMNL International Messengers Ltd (1979) 5 FRCLR 113
  9. Ishekwene v. E. O. Ogunbode & Anor (1976) FRCLR (Pt.II) 64 at 68
  10. Morgan & Ors v. Henry Crawsberg (1871) 5 L.R.H.L. – Foreign Case
  11. National Assistance Board v. Wilkinson (1952) 2 Q.B. 648 – Foreign Case
  12. Odjevwedje v. Echanokpe (1987) 1 NWLR (Pt.52) 633
  13. Samuelson v. Producers Distributing Co. Ltd (1932) 1 Ch. 201 – Foreign Case
  14. Savannah Bank Ltd. v. Pan Atlantic (1987) 1 NWLR (Pt. 49) 212

III. JUDGEMENT

Appeal Dismissed.

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