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The Procter and Gamble Company v. Global Soap and Detergent Industries & Ltd. & Anor

Federal High Court

Judgement Delivered on December 17, 2007
Citation: 50 NIPJD [FHC. 2007] 777/1998, overturned by CA/L/369/2008
Suit No. FHC/L/CS/777/98      Jurisdiction: Nigeria

Judgement delivered by Honourable Justice Abdullahi Mustapha

BETWEEN:

THE PROCTER AND GAMBLE COMPANY……………………………………………..Plaintiff

1. GLOBAL SOAP AND DETERGENT INDUSTRIES LTD
2. THE REGISTRAR OF TRADE MARKS………………………………………………..Respondents

Registration of Trademarks in Nigeria — The court considered whether the Plaintiff could register the trademark, “Ariel and Atomium Device” after having initially registered the trademark “Ariel” in Nigeria.

I. FACTS

On July 17, 1998, the Plaintiff filed a suit at the Federal High Court in Lagos (Suit No. FHC/L/CS/777/1998). The Plaintiff claimed that it is the proprietor of the trademark ARIEL, which it invented since 1921 and that the mark is associated with Atomium Device in respect of detergents, bleaching preparations and other substances for laundry use manufactured and sold worldwide. The Plaintiff also asserted that it had registered over 600 different ARIEL related marks in 120 countries including Nigeria and that it had extensively advertised goods branded with the ARIEL mark in the International press including Nigeria and by way of circulars to the trade magazines. Evidence was provided by the Plaintiff as proof of the registration of ARIEL as a trademark in Nigeria in December 1969 [Certificate of Registration No. RTM 21233 of December 3, 1959 (Exhibit B.1)]. The registration was duly renewed at due dates in 1976 and 1991 respectively (Exhibits B2 and B3).

As the registered Proprietor of the ARIEL trademark, the Plaintiff asserted that it had used the trademark since 1969 in relation to goods indicating a connection in the course of trade between the goods and itself as proprietor within and outside Nigeria as buttressed by Exhibits C, C1, C2, C3, C4 and C5.

In 1990, the Plaintiff, in order to further secure its trademarks, applied for the registration of Atomium Device which it regularly used in association with its ARIEL trademark. The 2nd Defendant issued to the Plaintiff an Acknowledgment and Acceptance form under No. TP 9509 indicating the acceptance of its application. (Exhibit 84)

Evidence was led to show that the Plaintiffs product “ARIEL” was duly registered by the National Agency for Food and Drug Administration and Control (NAFDAC) conveying Certification to the Plaintiff as the Importer, Manufacturer and Seller of ARIEL brand of detergent powder within the Nigerian market. The Registration certificate issued by NAFDAC i.e. Exhibits B5 was dated May 18, 1998.

Sometime in 1998 the Plaintiff discovered that the 2nd Defendant accepted from the 1st Defendant, an application to register and actually registered ARIEL and Atomium Device as a trademark in Class 3 in the name of the 1st Defendant as Proprietor in 1985 (Exhibit D). Exhibit D was said to have been issued to the 1st Defendant when the trademark registration for “ARIEL” in the name of the Plaintiff as the proprietor was still subsisting and valid and under prohibitive circumstance. The get up/trade dress of the 1st Defendant’s product branded NEW GLOBAL ARIEL (Exhibit G) was said to be an exact and or similarly identical copy of the Plaintiffs product sold, marketed and advertised all over the World including Nigeria.

At the Federal High Court, the Plaintiff claimed as follows:

1. A declaration that the Plaintiff, being the earlier registered proprietor since December 3, 1969 of the trademark “ARIEL” in respect of goods/products listed in Class 3 as No. 21233 of the Trademarks Register in Nigeria, and also being the proprietor of over 500 identical trademarks some with additional suffixes spanning over 150 countries since 1921, is entitled to the exclusive use of the said trademark in relation to goods of the said class.

2. A declaration that the Plaintiff having applied to register its trademark “ARIEL Atomium Design” under No. TP 9505 in respect of goods/products Registration by the Registrar of Trademarks in 1991 and the Plaintiff also being the proprietor of several identical trademarks spanning over 50 countries is entitled to the exclusive use of the trademark in relation to goods of the said class.

3. A declaration that the 1st Defendant’s act in procuring the registration of the trademark “ARIEL Automatic” and Atomium device, with the inscriptions “New improved”, in the same class and with identical ‘get up’ as the Plaintiffs earlier used and registered Marks knowing that the Plaintiff’s mark and products were registered and extensively used worldwide is deceitful, and an infringement on the Plaintiff’s trademark as registered in Class 3 of the Trademark Register.

4. An order compelling the Registrar of Trademarks (2nd Defendant herein) to rectify the Register of Trademarks by expunging/striking out the 1st Defendant’s Trade Mark “Ariel Automatic” and Atomium device listed in Class 3 as No. 45673 of the Trademarks Register as the registration of the mark was unlawful, contrary to law, and is a deceitful duplication of an earlier registered mark and likely to cause confusion.

5. An injunction perpetually restraining the 1st Defendant by itself and or through its servants, agents, subsidiaries or any person or persons connected with it or acting under its authority from using or attempting to use the Plaintiffs trademark similar to or identical to the Plaintiffs said trademark(s).

The 1st Defendant in their amended statement of defence and counter-claim dated 24th April 2006, counter claimed as follows:

a. An order of this Honourable Court on the second Defendant to rectify the trademark ARIEL simpliciter registered as No. 21233 in favour of the Plaintiff by expunging the same therefrom on the ground that the said trademark has been wrongfully remaining on the register of trademark.

b. Perpetual injunction restraining the Plaintiff, its servants, agents, subsidiaries or any person or persons connected with it or acting under its authority from registering or attempting to register ARIEL with or without Atomium, Atomia, or Automatic as trade mark in Nigeria; and also perpetual injunction restraining the second Defendant from accepting the same from the Plaintiff, its servant, agents, subsidiaries or any person or persons connected with it or acting under the authority for registration as a trademark in Nigeria.

In proof of their case, the Plaintiff called one witness through whom 19 documents were tendered and admitted in evidence as Exhibits and put in evidence one document through DW1. The Defendant in proof of their defence and counter claim also called one witness through whom 10 documents were tendered and admitted in evidence as Exhibits.

The Exhibits put forth by the Plaintiff are as follows:

1. Power of Attorney dated 1/7/2004 (Exhibit A)

2. Power of Attorney dated 2/7/2004 (Exhibit A.1)

3. Record of Data Base for Trademark ARIEL Page 16 of which contains particulars of Registration in Germany (Exhibit B)

4. Certificate of Registration of ARIEL Trademark in Nigeria No. 21233 (Exhibit B.1)

5. Certificate of Renewal of registration of the Trademark ARIEL in 1976 (Exhibit B.2)

6. Certificate of renewal of Registration of the Trademark ARIEL in 1990 (Exhibit B.3)

7. Sachet of the Plaintiffs ARIEL detergent (Exhibit C)

8. Magazine picture of ARIEL AUTOMATIC (Exhibit C.1)

9. Copy of TIME MAGAZINE of 12/4/1984 (Exhibit C.2)

10. Copy of TIME MAGAZINE of 26/3/1984 (Exhibit C.3)

11. Carton of ARIEL and Device (Exhibit C.4)

12. Poster of ARIEL and Device (Exhibit C.5)

13. Certified copy of Certificate of registration of ARIEL dated 27/3/85 in the name of the 1st defendant (Exhibit D)

14. Certificate of Reward of registration of trademark No.46673 (Exhibit D.1)

15. The 1st Defendant’s product NEW GLOBAL ARIEL (Exhibit E)

16. 1st Defendant’s product ARIEL DETERGENT POWDER (Exhibit E.1)

17. The Book “Jewel of Nigeria Commerce” (Exhibit E.2)

18. Acceptance Form for Atomium Design (Exhibit 8.40

19. NAFDAC Certificate of registration No. 020757 in respect of ARIEL POWER DETERGENT dated 8/5/1998 issued to Procter and Gamble Nigeria Limited (Exhibit 8.5)

20. Certificate of registration of ARIEL Automatic tendered by the Plaintiff through DW1 during cross examination.

   The Exhibits put forth by the 1st Defendant are:

1. Trademarks Journal No. 24 Vol. 14 of August 1988 (Exhibit F)

2. Product of the 1st Defendant i.e. NEW GLOBAL ARIEL (Exhibit G)

3. Way bills and Sales Invoices which the 1st Defendant used in selling and distributing its products (Exhibit G.1)

4. Trademarks Journal No.1 Vol. 3 of 4/1/2000 P. 125 wherein Plaintiff applied to register Atomism as a trademark (Exhibit H)

5. Copy of the opposition filed by 1st Defendant Agent against registration sought by the Plaintiff of Atomium Device (Exhibit H.1)

6. Trademarks Journal No. 1 Vol. 1 of 10/6/2002 Page 43 wherein Plaintiff applied to register Atomium with AERIAL as a trademark on 15/7 /98 (Exhibit H.2)

7. Copy of 1st Defendant opposition to registration of Exhibit H.2 filed by the 1st Defendant (Exhibit H.3)

8. Copy of Trademarks Journal No. 5 Vol. 5 of November 2002 Page 44 wherein Plaintiff applied to register Atomium Device (Exhibit H.4)

9. Copy of opposition to registration of Exhibit H.4 by 1st Defendant (Exhibit H.5)

10. Fax letter dated 26/2/02 from the Regional Manager West & East Africa of Procter & Gamble addressed to DOYIN INDUSTRIES for the attention of Prince Dr. Samuel Adedoyin. – Exhibit J.

The 1st Defendant’s case is that in 1985, the 1st Defendant applied to register ARIEL with Device as a trademark and that before the application, it searched the Register of Trademarks and all new pending applications in the Registry to see if there was any similar or identical trade mark to the one that the 1st Defendant wanted to register. It was found out that there was none and so the Defendant submitted its application for registration for its trademark and it was accepted by the 2nd Defendant. The 1st Defendant was given No. 46673. Subsequently, the application was advertised in the Trademarks Journal No. 14 Volume 14 of August 31st, 1988 in respect of goods in Class 3 (Exhibit F). There was no Notice of opposition filed against the application to register the trademark. After the expiration of 60 days and there being no Notice of Opposition received, the 1st Defendant applied for Certificate of Registration and was given No. 45573 as its Certificate of Registration by the 2nd Defendant (Exhibit D). The 1st Defendant renewed the Certificate in 1992 and obtained Certificate of Renewal of Registration (Exhibit D.1).

Since 1985 when the 1st Defendant registered its ARIEL with device, it has been selling and distributing soap powdered detergent with it. The soap, detergent which the 1st Defendant has been selling and distributing as its product i.e. NEW GLOBAL ARIEL was tendered and admitted in evidence as Exhibit G. The 1st Defendant has been selling its product throughout Nigeria and other ECOWAS countries. In proof of this, the 1st Defendant put in way bills and Sales invoices (Exhibit G.1).

However, in January 2000, the 1st Defendant discovered on page 125 of the Trademarks Journal No.1 Volume 3 dated 4th January 2000 (Exhibit H) that the Plaintiff had applied to register Atomium as a trade mark with the 2nd Defendant in respect of cosmetics which is one of the items in Class 3 and that the Plaintiff was given No. 9505. The 1st Defendant therefore filed a notice of opposition to the registration (Exhibit H.1). Again in the year 2002, the 1st Defendant discovered on page 43 of Trade Marks Journal No.1, Vol. 1 of June 2002 (Exhibit H.2) that the plaintiff had applied to register Atomium with ARIEL as a trade mark on 15th July 1998 in respect of goods in Class 3 and was given No. 37505 as a reference. The 1st Defendant opposed the registration and filed a notice of opposition with the 2nd Defendant (Exhibit H.3). In November 2002, the 1st Defendant again discovered that the Plaintiff again applied to register Atomium Device as a trade mark which was advertised on page 44 of the Trade Marks Journal No. 5 Vol. 5 of November 2002 (Exhibit H.4).The 1st Defendant opposed the registration and filed a notice of opposition (Exhibit H.5). The Plaintiff then sued the Defendants claiming the reliefs already set out above.

Issues were joined by the parties.

II. JUDGEMENT

After hearing the case, the Federal High Court on December 17th, 2007 dismissed the Plaintiff’s claim and entered judgment in favour of the 1st Defendant, granting part of the counter claim.

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