March 23, 2019

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Societe BIC S.A. v. Charzin Industries Ltd. & Anor.
Federal High Court

Judgement delivered on Friday, May 9, 1997
Citation: 40 NIPJD [FHC. 1997] L/1182/95
Suit No. FHC/L/CS1182/95  Jurisdiction: Nigeria

Judgement delivered by Justice G.A.A.T. Jinadu

Appearances: Mrs. S. Shinaba for the Plaintiff/Respondent
Mr. C. U. Akwarandu for the Defendants/Applicants

Copyright Infringement, Jurisdiction of the Court, Trademark Infringement and Passing-off — The Federal High Court had to decide on the question of who can sue under Section 2(1) of the Copyright Act, CAP. 28 Laws of the Federation of Nigeria, 1990. The court also had to decide on other issues including jurisdiction of the Federal High Court for a claim relating to the infringement of unregistered trademarks and passing-off.

I. FACTS

The Plaintiff filed the suit over the sale of “Charzin Ball Point Pens” because they are very similar in packaging, designs and coloring to the Plaintiff’s “Bic” ball point pens.

JINADU, J.:  The Defendants brought a notice of preliminary objection seeking:-

“An order striking out paragraphs 1, 2(a), (c), (d), (e), (f) and (g) of the Particulars of Claim in this suit herein.

And for such further order or orders as this Honourable Court may deem fit to make in the circumstances.

FURTHER TAKE NOTICE that the grounds for the objection are as follows:

1. An action for infringement of a Trade Mark before the Federal High Court cannot be founded on an unregistered trade mark.

PARTICULARS

 The Plaintiff’s ‘BIC’ (Logo) and ‘CRISTAL’ (Package) are unregistered Trade Marks in Nigeria.

2. The Plaintiffs are not competent to bring an action for infringement of Copyright before the Federal High Court.

(a) Copyright in ‘BIC’ cannot be vested in the Plaintiff’s as ‘BIC’ does not qualify to be conferred with Copyright Act Cap. 68, LERN,

(b)    The Plaintiff’s being bodies corporate incorporated under the law of France are not qualified persons within the meaning of S. 2(1)(a) of Copyright Act to be conferred with Copyright in Nigeria”.

The grounds for the objection are as stated supra. The Plaintiff filed a counter-affidavit of 12 paragraphs.

Moving the application, the learned counsel for the Defendants submitted that the paragraphs considered offensive can be categorised into two broad headings. He said that the first was the head of claim founded on an unregistered trade mark and that these are contained in paragraphs 2(c), (e), (f) and (g) of the particulars of claim and that the second are the heads of claim founded on infringement of copyright as contained in paragraphs 1, 2(a) & (d) of the particulars of claim. He submitted that it is settled law that an action for infringement of trade mark cannot be founded on an unregistered trade mark in the Federal High Court as the said Court has jurisdiction under the provisions of 230(1)(f) of Decree No. 107 of 1993 to hear actions for the infringement of registered trade marks only. He submitted that an action for infringement presupposes that the trade mark is registered and that it is the fact of registration that entitles a party to the protection of this court against unauthorised use of mark. He submitted further that where the mark is not registered in accordance with the provisions of Section 3 of the Trade Marks Act, Cap. 436 Laws of Nigeria, 1990, the question then arises, are the Plaintiffs’ BIC ‘Logo’ and ‘Cristal’ package registered trade marks in Nigeria to ground an action in this court for their infringement as being claimed by the Plaintiff in paragraphs 2(c) and (f) of the particulars of claim. Learned counsel submitted that the answer is in the  negative and that this has been admitted by the Plaintiffs themselves in paragraph 9 of the affidavit in support of the application for interlocutory injunction deposed to on 11/10/95. He submitted that an application for registration is not the same thing as registration and that in   the absence of a certificate of registration of trade mark there is  remedy for infringement.   He also submitted that an action for an alleged passing off of another person’s goods in an unregistered trade mark does not lie in this Court such a right being a common law remedy.  He submitted that paragraph 2(e) of the particulars of claim is not within the jurisdiction of this court to entertain. He commended to the court the case Patkum Industries Ltd. v. Niger Shoes Manufacturing Co. Ltd. (1988) 5 N.W.L.R. (Pt. 93) 138 at 152 and 155.

It is the learned counsel’s further submissions that the Plaintiff’s claim in paragraphs 1, 2(a) & (d) of the particulars of claim alleged infringement of their copyrights in their registered design and artistic works of their trade mark. He said that Section 1 of the Copyright Act, Cap. 68 Laws of Nigeria, 1990 has listed works that are eligible for copyright and under the section copyright is not rested in a registered design or artistic work of a trade mark. He submitted  that it is a legal misnomer for the Plaintiffs to claim as they have done in those headings of the particulars of claim.  He also submitted that on the strength of Section 1(3) of the Copyright  Act the artistic work of their trade mark here is not even eligible for copyright since it was intended to be used as a model or pattern to be multiplied by an industrial process. Learned Counsel then submitted that Section 2(1)(a) and (b) of the Copyright Act clearly defines a person qualified to be conferred with a copyright in Nigeria who should be a Nigerian citizen or a body corporate incorporated under the Nigerian Law.  He said that the Plaintiffs have  admitted that they are French companies and not Nigerians.  He referred to paragraphs 3 and  4 of the affidavit in support, supra. He therefore submitted that the Plaintiffs cannot claim what they are not entitled to. He submitted that paragraphs 4, 8, 9 and 10 of the counter-affidavit  are contrary to the Evidence Act in that they are legal submissions and conclusions. He submitted that this application goes to the root of this suit because the Defendants are challenging the jurisdiction of the court to hear some heads of the particulars of claim and that there is no relationship between this application and the contention of the Plaintiffs that the effect of this application is to determine issues yet to be argued in their application for interlocutory injunction. He urged the court to grant this application and strike out the offending heads of the particulars of claim.

In her reply the learned counsel for the Plaintiffs submitted that the preliminary objection is misconceived and premature and should be dismissed with substantial costs.  She said it  was pertinent to state that the Plaintiffs instituted this action on 11/10/95, that there were four main heads of claim, the Defendants applied for security for costs and/or stay of  proceedings pending the payment of such security and the said application was dismissed on 8/3/96 with costs to the Plaintiffs. She said that the Plaintiffs’ application for injunction which was pending since October, 1995 was then adjourned for argument but the Defendants have not filed a counter-affidavit to that application rather the Defendants filed this notice of preliminary  objection which is a further delaying tactics and an attempt to delay the determination of the Plaintiffs claim on the merits of the suit. She said that the Defendants have not either on the face of application or in argument referred to this application. She submitted that in an application of this nature where the Defendants seek to strike out heads of claim of  the Plaintiffs this is akin to a demurrer where the Defendant is taken to have admitted the truth of the Plaintiffs allegations but contending that notwithstanding the truth of those allegations legal or equitable issues deny the Plaintiffs the reliefs they seek. She said that it is basically saying that the Plaintiffs suit does not possess any legal validity or any reasonable cause of action. She said that it has been held that where a person challenges the legal validity of a case or  the reasonableness of a cause of action then this court is only allowed to look at the particulars of claim and statement of claim. She said that no statement of claim has been filed in this suit as the Court has not made an order for pleadings. She referred to Sodipo v. Lenminkainem  O. Y. (1992) 8 N.W.L.R. (Pt. 258) 229 at 242 paragraphs E – F, 244 paragraph C and 243 paragraphs G – H; Ibrahim v. Osim (1988) 3 N.W.L.R (Pt. 67) 257 at 267. He also referred to the unreported decision of my learned brother, Sanyaolu, J in Trinity Mills Insurance Brokers v. Professor Irukwu & Ors (1996) F.H.C.L.R. 844. On the submission and reliance placed on Patkum case, supra, learned counsel submitted that the submissions have no basis in law in that by virtue of the provisions of Section 3 of the Trade Marks Act the common law tort of passing off has been enacted into the statute. He referred to ratios 8 and 11 of Patkum case, supra. He submitted that under Decree No. 107 of 1993 all action relating to Trade Marks Act, Merchandise Act, Copyright Act are in the exclusive jurisdiction supra. He then submitted that the complaint of the Defendant is a matter that affects only certain heads of the Plaintiff’s claim and that this Court cannot attend to those head of claim complained about without touching on the substance of the other claims which is different from what the law envisages. He submitted further that in determining the complaint of the Defendants the Court will be obliged to go into evidence both oral and documentary. He therefore urged the Court to dismiss this application and order accelerated hearing. In reply on point of law Mr. Akwarandu submitted that this application is not in the form of a demurrer.

I agree with the Defendants/Applicants that a person cannot sue for the infringement of an unregistered trade mark. But the law allows only suing for the passing of an unregistered trade mark – See Section 3 of the Trade Marks Act, Cap. 436 Laws of the Federation 1990 which provides:

“3 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”.

I also agree that only a Nigerian Citizen or Nigerian incorporated companies can sue in this Court for infringement of copyright – see Section 2(1) of the Copyright Act Cap. 68 of Laws of the Federation, 1990 which provides:-

“2(1) Copyright shall be conferred by this section on every work eligible for copyright of which the author or, in the case of a work of joint authorship, any of the authors is at the time when the work is made, a qualified person, that is to say:-

(a) an individual who is a citizen of, or is domiciled in Nigeria; or

(b) a body corporate incorporated by or under the Laws of Nigeria”.

I have read all the submissions of both learned counsel and I hold that Claim Nos. 1, 2(a), (c) and (d) are not subject to the jurisdiction of this court while the remaining reliefs, that is claim Nos. 2(b), (e), (f) and (g) are justiciable in this Court.

There are three categories of claims herein, that is, infringement of registered trade marks for which this application is not concerned in claim 2(b). The second is the infringement of copyright in the artistic work of the Trade Marks in claim 2(d) and the third is passing off of the Defendant’s goods as the goods of the Plaintiff in unregistered mark.  This is in claim 2(e), (f) and (g).  In respect of Claim 2(c) I agree that the Plaintiff cannot claim for an infringement of Plaintiff’s equitable rights in the Trade Mark comprised in the “BIC (Logo) and CRISTAL (Packaging) applied for and accepted to be registered in  class 16 under TP17713.  The Plaintiff in order to succeed must wait until the trade mark is registered because as provided by Section 3 of the Trade Marks Act no person shall be entitled to institute any proceedings to prevent or to recover damages for the infringement of an unregistered trade mark therefore  claim 2(c) cannot be sustained and it is hereby struck out. However, I hold the view that the remainder of Section 3 of the Act authorised the plaintiff to institute an action for the infringement of passing off goods of the Defendants as the goods of the Plaintiff. In other  words the common law tort of passing off has been given statutory recognition in Section 3 and Section 210(1)(f) of Decree No. 107 of 1993 therefore the Plaintiff is entitled to institute any proceedings in respect of claim 2(e), (f) and (g). In respect of claims that Plaintiff’s being foreigners cannot claim to be entitled to copyright in Nigeria in view of the provisions of Section 2(1) of the Copyright Act, Cap. 68 Laws of Nigeria, 1990 which provides thus:

2. (1) Copyright shall be conferred by this section on every work eligible for copyright  of which the author or, in the case of a work of joint authorship, any of the authors is at the time when the work is made, a qualified person, that is to say-

(a) an individual who is a citizen of, or is domiciled in Nigeria; or

(b) a body corporate incorporated by or under the Laws of Nigeria”.

It is true to say that the Plaintiff has stated in its pleadings that it is a foreign company in paragraphs 3 and 4 of the affidavit in support of the application for injunction. I therefore hold that the Plaintiff has a cause of action against the Defendants in reliefs 2(b), (e), (f) and (g) of the claim but the Plaintiff has no cause of action in reliefs 1, 2(a), (c) and (d). Accordingly reliefs 1, 2(a), (c) and (d) are hereby struck out.

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