Virgin Enterprises Ltd. v. Richday Beverages Nig. Ltd.
Court of Appeal
Judgement Delivered on Friday, May 22, 2009
Citation: 52 NIPJD [CA. 2009] 550/2005
Suit No. CA/L/550/05 Jurisdiction: Nigeria
ADZIRA GANA MSHELIA, J.C.A.
REGINA OBIAGELI NWODO, J.C.A. (Delivering the Lead Judgement)
ADAMU JAURO, J.C.A.
Appearances: O. Ogunkeye with T. Olubor for the Appellant
F. Bakare for the Respondent
The Plaintiff in the High Court commenced a suit by writ of summons and statement of claim dated 29 October 2003 praying for the following reliefs under paragraph 12 of the statement of claim:
(a) An injunction to restrain the Defendant, whether by its directors, officers, servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say:
i. Infringing the Plaintiffs registered trade mark No. 55476, by using the word VIRGIN in connection with the production, and sale of bottled water not of the Plaintiff manufacture or merchandise.
ii. Passing off or attempting to pass off or causing or enabling others to pass off bottled water branded as VIRGIN, not produced by the Plaintiff as and for a product of the Plaintiff.
(b) Obliteration upon oath of the word VIRGIN or any colourable imitation thereof upon all articles or labels the use of which bearing the word VIRGIN would be a breach of the first injunction prayed for and verification upon oath that the Defendant no longer has in its possession custody or control articles so marked.
(c) An inquiry as to damages.
Briefly the facts as stated in the pleadings are as follows. The Appellant is a company incorporated in the United Kingdom and having its registered office at 120, Campden Hill London, England. He is also a member of a group of companies described as “The Virgin group of Companies” founded by Sir Richard Branson with names starting or incorporating the word “Virgin”. The Appellant is the registered proprietor of the trade mark “VIRGIN” registered under No. 55476 in Class 32 in respect of Beer, ale, porter, mineral, aerated waters and other non alcoholic drinks, syrups and other preparation for making beverages. The Appellant and other companies in the Virgin group of companies have extensively used and advertised the trade mark VIRGIN in many countries including several other trade marks incorporating the word VIRGIN including diverse commercial endeavours such as operation of Virgin Atlantic airline and manufacture and marketing of “Virgin Cola”. The Appellant have also adopted the red colour as their colour with the trade mark “VIRGIN” used in colour red or white colour against a red background. The Defendant/Respondent is a company incorporated in Nigeria, the producer and marketer of bottled water branded as “Virgin Table Water”. The Respondent since the registration of the Appellant’s trade mark has produced and placed in the market table water bearing a label containing the word Virgin. The Respondent had applied in 1999 to the Federal Ministry of Commerce and Tourism for registration of “VIRGIN” table water “bottled” as a trade mark and was issued with acceptance letter. The Respondent registered the Virgin water “Bottled” with NAFDAC and has been selling the product all over the country since 1999.
The Appellant grouse is that the word “VIRGIN” is the most prominent and distinctive word on the label of the Respondents product as it is printed in red, thus positioning prominence of the word “VIRGIN” in the label which indicates that it is used as the trade mark of the product and that the use of the word “VIRGIN” in connection with bottled water not of the Plaintiffs manufacture is an infringement of the Plaintiffs registered trade mark and calculated to lead to deception and to the belief that the Respondents bottled water is the product of the Plaintiff and have caused the bottled water of the Appellants merchandise to be passed off as and for a product of the Appellant and that they have suffered and will suffer damages.
Consequent on which they filed the suit in the lower court.
Pleadings were filed and exchanged. The Plaintiff called one witness that testified as PW1 and the Defendant also called one witness the D.W.J. The two learned counsels addressed the court on 31st January 2005. The trial judge delivered a considered judgment on 15th April 2005 held:
“It is my view that the Plaintiff has failed to established that the Defendant’s bottled table water is calculated to deceive the purchase to believe that they are buying the virgin table water of the Plaintiff and I hold that the Defendant’s virgin bottled table water does not infringe the Plaintiffs registered trade mark. And in the absence of any threat or possibility that infringement will be commenced, continued or repeated, this court will not interfere with the manufacture and sell of the Defendant’s virgin bottled Table Water. Consequently, the Plaintiffs claims are accordingly dismissed”
The Plaintiff (hereinafter referred to as Appellant dissatisfied with the decision of the lower court brought an appeal on the notice of appeal dated 12th July 2005 filed 13th July 2005 containing 6 grounds of Appeal. In accordance with the practice of this court briefs of argument were filed by both parties and settled at Appellant’s Brief, as well as Respondent’s brief of Argument. The Respondent was the Defendant in the lower court. At the hearing of the appeal on 25/2/09 the learned counsel for the Appellant Mr. O. Ogunleye adopted and relied on the Appellant’s Brief dated 10th October 2006 filed on 12th June 2006 prepared by Obatosin and the Appellant’s Reply Brief dated 10th October 2006 filed 11th October 2006. He urged the court to allow the appeal. The Respondent’s counsel adopted Respondent’s Brief prepared by Mrs. Fausat Bakare dated 21st of September 2006 and filed on 22nd September 2006. She urged this court to dismiss the appeal. Appellant formulated two Issues, as arising from six grounds of appeal for consideration and determination. The issues are set down immediately hereunder –
i. Whether the registration by the Plaintiff of the word “Virgin” as a trade mark entitles it to the exclusive use of the word
ii. Whether the use by the Respondent of the word “VIRGIN” on the label of its bottled water constitutes an infringement of the Plaintiffs trade mark registered under No. 554767″
The Appellant related issue (1) to grounds (i) and (ii) while Issue 2 is derived from grounds (iii) to (vi). The Respondent distilled the following issues for determination which reads as follows:
(i) Whether the Appellant has the exclusive preserve to the use of the word “Virgin” by Virtue of its registration as a trade mark under No. 55476
(ii) Whether the use of the word VIRGIN on the label of the Respondents’ table water product constitutes an infringement of the trade mark registered by the Appellant.
The issue formulated by the Respondent has not been tied to any of the grounds of appeal. I will therefore consider the appeal on issues identified and formulated by the Appellant. I propose to deal with the issues in seriatim.
The learned counsel for the Appellant in arguing issue one on whether the registration by the Plaintiff of the word ‘Virgin’ as a trade mark entitles it to the exclusive use of the word “virgin”. It is his contention that the lower court in considering the provisions of section 9(1) of the Trade Mark Act, misdirected himself on factors relevant in determining the fresh registrability of a trade mark. When the issue before the court was whether, regardless of the registration by one person of a word as a trade mark, any other person can use that word as a trade mark. It is his submission that the appropriate section of the Act to consider in relation to the issue of whether the plaintiff can claim monopoly of the word “Virgin” as formulated by the trial court is section 5 of the trade mark Act and not section 9( I) of the Act. He argued that the issue before the court was whether regardless of the registration by one person of a word as a trade mark any other person can use that word as a trade mark. The Learned counsel contention is that section 5 of the Act defines the right vested by registration of a trade mark. It is his further submission that provided the registration by the plaintiff of the trade mark “Virgin” is valid, the plaintiff is entitled to the exclusive use of the word as a trade mark in relation to those goods in respect of which it is registered and any person who uses an identical or a confusingly similar mark in connection with the goods in relation to which the plaintiffs trade mark is registered will be deemed to have infringed the plaintiffs right vested by virtue of the registration. Finally he argued that the validity of the registration of the plaintiffs trade mark has not been challenged in this Suit and there is no basis to dispute the right vested in the plaintiff by virtue of the provision of section 5 of the Trade mark Act. The learned counsel for the Respondents in the Respondents brief submits that for the Appellant to come under the cover of section 5(1) he must establish that the word virgin is an invented word as required under section 9 (1) of the Trade Mark Act. It is his contention that in cases of this nature, the question of whether the name being used as a trade mark is an invented word becomes relevant in view of the facts that no claim can be made to a word which is of generic nature as in the case at hand. He cited Ferodo Ltd. v. Ibeto (2004) 5 NWLR Pt 866 317 and Woodward Ltd. v. Boulton Macro Ltd and The Registered Trademark of Woodward Ltd. 100 (1915) 32 RPC 197. It is his submission that the decision of the learned trial Judge that the word “Virgin” is registrable is justified, the plaintiff having failed to establish that the word Virgin is invented by it.
In reply on point of law Mr. Ogunkeye submits that the provision of 59(c) of the Trade Mark Act is one of the pre-conditions prescribed by the Act for the registration of a word as a trade mark. It is his contention that question as to whether any such pre-condition has been met cannot therefore be raised in consideration of a registered trade mark unless the validity of the registration is being disputed. He stated that the Defendant having not specifically alleged in its statement of defence that the registration of the plaintiffs trade mark “Virgin” is invalid is not entitled to dispute such validity by inference and by extension, is not entitled to dispute the entitlement of the plaintiff to the right granted the proprietor of a registered trade mark under section 5(1) of the Trade Mark Act. It is his further submission that the right of the proprietor of a registered trade mark to the exclusive use of the mark, as provided for by section 5(1) of the Trade Mark Act, takes effect from the registration of the mark and not from a date on which the proprietor started marketing goods marked with the trade mark. That the right under Trade Mark Act is procured by registration not by use. He referred to Section 22(2) of Trade Mark.
Issue one raises two questions, first the nature of right that vest in the proprietor of a registered trade mark and second whether section 9(1) of the Trade Mark Act is the applicable section of the Act or section 5(1) and section 5(2) of the same Act. I will consider the latter question first and for purpose of emphasis I will reproduce the two relevant sections:
I) Subject to the provisions of this section and of sections 7 and 8 of this Act, the registration (whether before or after the commencement of this Act) of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) in respect of any goods, shall, if valid, give or be deemed to have given to that person the exclusive right to the use of that trade mark in relation to those goods.
2) Without prejudice to the generality of the right to the use of a trade mark given by such registration as aforesaid, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof, using it by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either –
a) as being used as a trade mark; or
b) in a case in which the use is used upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the court of trade.
Whilst Section 9(1) reads:
1. In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars –
a) the name of a company, individual, or firm, represented in a special or particular manner;
b) the signature of the applicant for registration or some predecessor in his business;
c) an invented word or invented words;
d) a word or words having no direct reference to the character or quality of the goods, and not being, according to its ordinary signification, a geographical name or a surname;
e) any other distinctive mark.
It is trite that statutes are to be construed according to the intention expressed in this statute themselves if the words are unambiguous, all that is needed is to expound the words in their natural and ordinary sense. See AYENI V. UNIVERSITY OF ILORIN 2000 2 NWLR (PT. 644) 290 AND EKUNOLA V. C.B.N. 2006 14 NWLR (PT.1000) 292.
The courts are enjoined to give adequate consideration to the words used in the statute. See DIM V. A.G. FEDERATION 2004 12 NWLR (PT.888) The court must look at the very words of the provisions in construction. See: ANZAKU V. GOV NASARAWA STATE 2005 5 NWLR (PT. 919) 448. In the instance case it is clear from the subtitle under section 5 and the words used in section 5(2) that the section covers the rights of a registered proprietor and when such rights are deemed to be infringed. Section 5(1) of the Act clearly stipulates that once a trade mark is registered in respect of any good and it is valid the registration is deemed to give the proprietor the exclusive right to the use of that trade mark in relation to those goods specified. Therefore Section 5 of the Trade Mark Act presupposes the existence of a valid trade mark.
Section 9(1) subtitle refers to Distinctiveness needed for registration. The main key word to note therein is “to be registrable”. This section applies to registration of a trade mark. It sets out the particulars and requirement on Registrable trade mark. It is founded on the prerequisites to the Registration of a trade mark and the Registrable mark. On the other hand section 5 of the Acts encompasses the privileges and rights vested on a proprietor of a valid Registered Trade Mark.
The learned trial Judge in his Judgment on page 56 of the Record of Appeal stated as follows:
“The Defendant main contention is not whether the registration of the word virgin is valid or not but notwithstanding its registration, whether same can not be shared with others”
The lower court cited and reproduced section 9 (I) of the Trade Mark Act. He then proceeded to hold that the word virgin is registrable and found issue one in favour of the Defendant. Issue one formulated by the learned counsel is as follows:
“whether or not the plaintiff can claim the monopoly of the word “virgin”. I agree with the learned trial Judge’s finding that the issue in contest is not founded on whether the registration is valid but on whether the plaintiff has monopoly over the word. However I disagree with the lower court when he anchored on section 9 which covers causes on registration. The issue of registrable trade mark is not the cause of action from the pleading and the submissions of the learned counsel.
There is no challenge as to the validity of the trade mark for which appellant approached the court to determine its exclusivity hence the claim of infringement.
The pleading is clear. Therefore section 9 which contains provision on registrable trade mark and validity of Registration will be relevant in circumstances where the registration is challenged on ground of validity or on process of Registration. In such circumstance those grounds ought to be pleaded. The nature of the dispute raised under issue I is whether the Appellant’s registration of the word “virgin” as a trade mark entitles it to the exclusive use of the word? It is my firm view that the relevant section under the Trade Mark Act is section 5 not section 9 of the Act.
Section 49 of the Trade mark Act presupposes that the Registered Trade Mark is valid. Section 49 provides that in all legal proceedings, the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of original trade. What then is a Trade Mark? The Trade Mark Act under section 67 of the interpretation section of the Act defines a Trade Mark:
“trade mark” means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 43 of this Act:
The Supreme Court in Feredo Ltd v. Ibeto Ind. Ltd. 2004 5 NWLR (Pt. 866) SC 317 ascribes the following meaning to a Trade Mark as follows:
“a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods and some person having the right either as a proprietor or a registered user to use the mark”
The purpose of a Trade mark is to give an indication to the intending purchaser as to the manufacture and quality of the goods to be sold, to indicate by their appearance the trade source or trade hands through which they have reached the market. It is a distinctive picture which indicates to a purchaser of a good the means of getting the same article in future. Once a trade mark’s registration is valid it gives the proprietor the exclusive right to use the trade mark in marketing or selling this goods, and without his consent if anyone else uses an identical mark or one so nearly resembling it as to be likely to deceive or cause confusion, this will entitle the proprietor to sue for infringement of trade mark. See FERODO LTD. V. IBETO IND. LTD supra. Therefore the Registration of a trade mark under Part A & B of the Trade Mark Act once valid gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. This exclusive right conferred under section 5(1) is subject to any conditions and limitations to which the registration is subjected.
The appellant’s claims that they are the registered proprietor of the trade mark “VIRGIN” under No 55476 in Class 32 in respect of specific items inclusive of aerated waters. They pleaded that the registration is valid and subsisting this facts were not contradicted during cross examination. The Respondent’s general traverse in paragraph 2 of their statement of Defence is not sufficient to hold that the registration is not valid mere general traverse in such a vital point is not sufficient. The Appellant’s only witness testified and tendered documents and his testimony was not challenged. To challenge the validity of a Registered trade mark, the party must plead facts and grounds to support the challenge. Learned counsel for the Respondent submitted that no claim can be made to a word which is of generic nature as in the present issue at hand. He cited Ferodo Ltd. v. Ibeto Ind. Ltd. 2004 supra. In the case of FERODO LTD. V. IBETO INDS. LTD., the Supreme Court noted the distinct character of the Trade mark, “Ferodo” marked sharply and boldly, as its registered Trade mark and held that when a word is used to denote a product and when the other features contained are not distinctive they are merely decorative of the trade mark and not part of it. Mrs. Bakare submission on Generic nature can only arise when the validity of the Registration is challenged. Generic name as described in the Blacks Law Dictionary Eight division is a term that describes something generally without designating the things source or creator such as the word “car” or “sink” for example Apples can be a trade mark for computers but not for Apples. Equally a name may be generic if used with one product but arbitrary if used with another. For instance “Bicycle” may be registered to identify playing cards but it could not be protected as a mark to identify bicycles. Distinctive marks are arbitrary in nature and are entitled to be protected. The arbitrary trade mark contains common words that do not describe or suggest any characteristic of the product to which the trade mark is assigned.
In the instant case the cause of complaint and the Defence is not on the validity of the registered word and like I earlier stated Mrs. Bakare submission on Generic nature in the absence of pleading same and challenging the mark registered is irrelevant what is important is whether the name is an identity for the product.
Exhibit B and B1 is the original Certificate and Renewal of certificate of Registration of the Trade Mark” Virgin” in respect of several products including aerated waters and non alcoholic drink. The Respondent from Exhibit 01 has applied to register TABLE WATER “BOTTLED” and Acceptance form issued by the Ministry of Commerce and Tourism. In effect the Appellant’s Trade is registered to cover aerated waters. The Appellant’s trade mark is registered and enjoys statutory protection under section 5 of the Trade Mark Act. Whilst the unregistered trade mark are protected under common law except in circumstances where section 7 and 8 of the Trade Marks Act applies. The law protects the registered psychological function of symbols. The Aim of the proprietor is to convey through the mark in the minds of potential customers, the desirability of the commodity upon which it appears once this is achieved the proprietor of a trade mark has something of value. Thus the owner protects same.
The right vested in a registered word on the proprietor has statutory backing. What is paramount is to ask whether the word is registered as the trade mark. The word’s distinctiveness when used means generally an essential element of the trade mark which distinguishes it from other marks. It is a mark that consumers immediately and consistently associate with specific goods and services. It may be a word symbol, shape or colour in the trade mark. The dispute in the present case is not on what is registrable and how to register as provided under section 9 of the Act it is the question of the statutory right vested on a proprietor after registration.
Learned counsel to the Respondent referred to the decision in WOODWARD LTD V. BOULTON MACRO LTD 100 supra. That case was based on a claim for passing off and for an injunction. There is a distinction between passing-off and infringement of Trade mark. An action for infringement of trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the enforcement of his right to use the trade mark in relation to the goods for which the mark has been. An action for passing-off is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which has acquired distinctive reputation in the market as referring to the goods belonging to or produced by that person only. An action for passing-off is common law remedy and the plaintiff need not establish title for the same. What he is required to show is that his goods have distinctive features.
Therefore the case of WOODWARD is not relevant in the present situation looking at the facts on which the defence is founded. The rationale is that section 49 of the Act stipulates that Registration raises presumption of validity to contradict. Same requires pleading and evidence. The Appellant tendered and relied on ‘Exhibit B’ which is a certificate of Registration of the trade mark “virgin” and ‘Exhibit B’, the certificate of Renewal of Registration for 14 years from 22 September 2001. This two -documents supports the contention of the Appellant that they registered the
Trade mark “Virgin” and the colouring outlet and geometric designs are merely decorative and do not form parts of the trade mark. The ornamental way in which virgin was written did not affect or change the basic that the mark is “virgin”. The right enjoyed by the Appellant by virtue of the registration is statutory in nature; the remedy is also statutory. Thus the registration of the word “Virgin” as a trade mark for the goods listed in the certification is exclusive to Appellant throughout the lifespan of the registration. It is pertinent to emphasize that the exclusivity of the right is however subject to the provisions under section 7 and 8 of the Act.
Herein reproduced as follows:
7. Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date previous to-
a) The use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or
b) The registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his,
Whichever first occurred, or (where such use is proved) to object to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under section 13 (2) of this Act.
8. The registration of a trade mark shall not interfere with-
a) Any bona fide use by a person of his own name or the name of his place of business, or of the name, or the name of the place of business, of any of his predecessors in business; or
The use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in section
5(2) (b) or 43 (4) (b) of this Act.”
The statutory right is subject to certain exceptions provided in the Act. This exceptions are raised as a Defence as a proprietor will not be allowed to interfere with use by any person of a trade mark identical with or nearly resembling it in relation to goods to which that person has continuously used that trade mark from a date previous to the use of trade mark in relation to those goods of the proprietor, or where there is a Bona fide use by a person of his own name or name of his place of business or the use by any person of any bona fide description of the character or quality of his goods.
In the instance case the Respondent has not raised his Defence under this section nor made submission on any of the circumstance under section 7 and 8 nor credible evidence lead to challenge exclusive nature of the right conferred after registration.
The statutory provision under section 5 of the Act vesting exclusive right for the use of the trade mark “Virgin” on the Appellant is deemed as conclusive and exclusive to them.
Grounds I and II on the notice of appeal succeeds. I find issue I in favour of the Appellant.
Under issue 2 whether the use by the respondent of the word “VIRGIN” on the label of its bottled water constitutes an infringement of the plaintiff trade mark registered under No 55476. It is the submission of learned counsel to the Appellant that in deciding whether the Appellants registered trade mark has been infringed by the mark used by the Respondent, the items which the court needs to compare with each other, both visually and phonetically, are the representation of the registered trade mark, as registered, on the one hand and the mark being used by the Respondent on the other hand. It is his contention the court does not need to see the goods being sold to make the comparism, so long as there is no dispute as to the nature of the goods in connection with which the Appellants trade mark is being used. He referred to FERODO Ltd v. IBETO (2004) 5 NWLR Pt 866 317 at 350. It is his further submission that this court has to undertake a comparison of the mark used by the Defendant with the plaintiff’s registered trade mark before deciding whether or not the Defendant has by the use on it’s bottled water the product of the label which the plaintiff complains of, infringed the plaintiff’s trademark.
He urged the court to hold that by branding its bottled water product as “VIRGIN TABLE WATER”. The Defendant has infringed the plaintiff trade mark “VIRGIN” registered under No. 55476. It is his contention that the interpretation placed by the learned trial Judge on the clear and unambiguous words used in section 5(2) is totally unjustified. It is his submission that the word “or” used in the sentence, a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion. In section 5(2) of the Trade Marks Act is disjunctive and not conjunctive, otherwise the sentence will mean that it is only use of identical marks, that will constitute infringement which interpretation will exclude the aspect on confusingly similar marks from the definition of infringing marks, and that cannot be the intention of the legislature. He submits that the intention of the clear word of the section is that the use of identical mark without more should constitute an infringement of the registered trade mark. He cited FERODO Ltd v. IBETO INDUSTRIES LTD. supra. He urged the court to hold that under the provisions of section 5(2) of the trade marks Act, the use of an identical trade mark by a person who is neither the proprietor nor the registered user of a registered trade mark, constitutes an infringement of the registered trade mark if such use is in connection with any goods in respect of which the registered trade mark was registered. He cited the following English cases: ASPREY AND LTD V WRA (GUNS) LTD AND AS PREY (2002) FSR 477 AT 434. DECON LABORATORIES LTD. V. FRED BAKER SCIENTIFIC LTD. 2001 R.P.C. IN AT 8. AKTICBOLEGAT VOLVO V. HERITAGE (LEICESTER) LTD. 2002 F.S.R. 253. He urged the court to hold that the use of the word “VIRGIN”, in the label used by the Defendant on its bottled water product, being a non-alcohol drink, which is one of the goods in respect of which the plaintiff’s trade mark is identical with the plaintiffs registered trade mark, therefore constitutes infringement of the trade mark. Learned counsel to the Respondent’s Mrs. Bakare’s submission is that the word ‘Virgin’ having found not to be an invented word of the appellant, the use of the label by the respondent on its product branded virgin table water cannot be an infringement of the trade mark registered by the appellant. She argued the court to hold that the main fulcrum of the provision of section 5(2) is to the effect that the use of a mark by a person other than the proprietor shall be accompanied by the likelihood of intention to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered. It is her contention that the Appellant had not commenced the production and sale of table water branded virgin by which the members of the public could get deceived or confused with the Respondent’s product. She submits that the lower the court was justified in its finding when he held that the Defendant’s bottled water is not used in such a way as to attempt to represent same as manufactured by the plaintiff.
Section 5(2) sets out situations when the right to exclusive trade mark may be said to be infringed. The words therein are clear and unambiguous, two condition must exist first is (sic) there ought to be person who is not a proprietor of the trade mark. That person
a) must use a mark identical with it
b) or so resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered
I agree with the learned counsel to the Appellant that the word “or” is disjunctive and not conjunctive. The word in this context is used to introduce another possibility. In effect once the mark is not identical then you look at the second option if there exists in the mark a near resemblance that is likely to deceive or cause confusion in the course of trade. Therefore in order to maintain an action on infringement of a registered trade mark either of the two scenarios set out under section 5(2) of the Trade Mark Act will be relevant. Therefore the two guiding test to determine whether there is an infringement are
1. whether the registered trade mark is identical with the unregistered mark?
2. whether the Defendant have adopted any essential features of the trade marks of the plaintiff with a view to confuse and deceive the public by making an overall similarity in the respective trade marks.
The Nigerian case law on Trade Mark is still growing. The case of FERODO LTD (supra) appears to be the locus classicus on Trade Mark presently. I have resorted to some persuasive English authorities and I will now look at few of the English cases FACSIMILE LETTER PRINTING CO. LD V. FACSIMILE TYPEWRITING CO. 29 R.P.C. 557 the plaintiffs facsimile letter printing company, Ltd. had been incorporated for some years and had carried on an extensive business in facsimile letters and circulars and other documents painted in facsimile. They brought an action against Facsimile Letter Printing Co. and the Facsimile Typewriting Company to restrain the Defendant from carrying on business under that name. In 1911 Facsimile Letter Printing Co. commenced to carryon business under the name or business of a similar nature to that of the plaintiff company. The plaintiff sought an injunction and the court held that confusion and mistakes had arisen owing to similarity of name and communications intended for the Defendants had been made to the plaintiffs and that the Defendant having taken the leading work in the plaintiffs name the plaintiffs had made out a sufficient case to entitle them to an injunction. In STANDARD BANK OF SOUTH AFRICA LTD, V. STANDARD BANK LD, 26 R.P.C. 310. The plaintiffs the Standard Bank of South Africa Ltd brought an action against a company recently registered as the Standard bank, Ltd to restrain that company from using its name it was proved that the plaintiff company was often spoken of and described as the “Standard Company”. The court held that an interlocutory injunction should be granted to restrain the Defendant company from carrying on business in the name of the Standard Bank or any other name so similar to that of the plaintiff company as to be calculated to lead to confusion.
In OUVAH SEYLON ESTATES LD. V. UVA CEYLON RUBBER ESTATES, LD, 27 R.P.C. 648 753.
The plaintiffs businesses at the date of action was the growing of tea and rubber and were for some years on the Registers of Joint Stock Companies as the OUVAH CEYLON ESTATES LTD. The Defendants in ignorance of the existence of the plaintiffs obtained registration as Uva Ceylon Rubber Estates Ltd. The plaintiffs moved for an interim injunction. It was held that the similarity of names would inevitably lead to confusion and interference with the plaintiffs business. On appeal dismissing the appeal the court held that the names were so nearly identical that the Defendants were calculated to deceive.
In the instant case the Appellants (Plaintiffs) registered Trade Mark written in small letters is “Virgin”. This trade mark covers aerated waters and other non-alcoholic drinks. The Respondents (Defendants) filed an application to register “VIRGIN TABLE WATER” all in capital letters and has been issued with an Acceptance Form dated 1-7-99. Exhibit C tendered in evidence is the label in use by the Respondent with the distinctive feature “VIRGIN” boldly, written in capital letters whilst the Appellant registered Trade mark is one word “virgin” in small letters.
DW1 in evidence told the court that he was sent to buy virgin product and he bought “virgin table water” and that he is a litigation clerk in the law firm of Allen and Ogunkeye. He bought the product at Oke-Arin Market in Lagos.
PW1 in evidence stated that the “virgin table water” has been in the market since July 1999 and has out-lets in about 11 states of the federation of Nigeria and that they are unto production of food beverages including water product. Applying the basic test to determine if there is an infringement of the mark ‘virgin’ I pose the question whether an unwary purchaser with an average intelligence is likely to see any similarity in the trade mark ‘virgin’ or that it is identical with that of “VIRGIN” in the Respondent’s label. In effect are they identical? The PW1 a litigation clerk stated he was told to buy virgin product he ended up buying the Respondent’s “Table Water Virgin”. DW1 in his testimony on page 28 under cross examination stated:
“The bottle of the table water being part of Exhibit A looks like my product but the packaging especially the bottom tray is what caused the confusion. But the bottle is identical with my bottle of table water. The label is also identical with my label. The cap is identical to mine and it is true that I sell table water having identical with my label and the cap. I sell table water branded as virgin………”
The DW1 admitted making table water branded as virgin. In effect, it is sold as virgin water. The mark virgin registered by the Appellant sounds same as that of the Respondent. It is obvious the name brand adopted by the Respondent is identical to the registered trade mark “virgin”. The trial Judge in his Judgment (page 59 of the record) stated as follows:
“The evidence before the court is that Exhibit A the 12 medium size virgin bottled water is identical with the one been manufactured and sold by the Defendant and that the product has been in the market since 1999”
The learned trial Judge found the Trade Mark of the Appellant “virgin” was registered. It is trite the practice of the Appellate court is not to touch findings of the lower court except if it is not in accordance with the law or perverse. I do not intend to interfere with that finding. The lower court however misconstrued the provision of section 5 of the Act when he proceeded to consider the issue of identical nature with question of likely to confuse or deceive as if both should be constructed conjunctively. This is wrong. Once a proprietor of Trade mark raises infringement the two conditions to satisfy are in the alternative. It is either the mark is identical or the resemblance can cause confusion, where both exist it is still infringement. However it is not mandatory that both conditions will exist to constitute infringement.
The issue of other components such as the bottle and cork not registered as mark are not of relevance in determining the question of infringement of the mark ‘virgin’ what is paramount is whether the name “VIRGIN” used distinctively in the label of the Respondent is identical or likely to cause confusion with that of the Appellant mark “virgin”. The answer in the circumstance is that it is identical. An unwary purchaser who sees or has seen the proposed ‘VIRGIN TABLE WATER’ will see same as identical with the existing trade mark “Virgin” and believe that the proposed mark is the same as the existing one. The emphasis is on overall similarity not on similarity in each and every minute detail. See: PARLE PRODUCTS V. J.P. & CO. MYSORE, AIR 1972 SC 1359.
The learned trial Judge made comparism on features on the bottle. This is unnecessary in cases on infringement of trademark except where the feature is registered as a Trade Mark. What is important is whether the person who viewing proposed trade mark as per the label in the absence of the existing Trade mark of the Appellant will by his general recollection of the nature of the other trade mark hold it is identical. I am not in doubt that the mark virgin is so similar to “VIRGIN TABLE WATER” to lead a person with an average recollection of the plaintiffs registered mark to confuse it with the label. The Defence witness acknowledged he had heard of Virgin Atlantic and Virgin Hair Cream. The Plaintiff pleaded extensive use of the trade mark virgin and that the virgin trade mark has become extremely well known in Nigeria as the trade mark of the plaintiff and members of the virgin group of companies. The trade mark “virgin” registered by the Appellant sounds same as that of the Respondent. The spelling of the trade mark “Virgin” is same as that of the unregistered word “VIRGIN”. The products are identical. What is paramount is whether the unregistered mark “VIRGIN TABLE WATER” is identical to Virgin registered mark. One of the products registered under the trade mark by the Appellant is aerated water. The Respondents are marketing virgin Table Water branded as Virgin. The brand name for the water is virgin just like you have Eva water and Ragolis water. The word VIRGIN used distinctively in the label of the Respondent is likely to be seen as same. The sound of the mark is important. Vocalization is one of the elements to be taken into consideration in actions for infringement of Trade Marks. See: OXO LTD. V. KING 34 R.P.C. I65. In THE ELECTROLUX LD V. ELECTRIX, LD R.P.C.23.
In that case it was an action for infringements of the trade mark “Electrux” by use of the mark “Electrix” upon vacuum cleaners. It was shown that the alleged infringing mark had been in use upon such cleaners on a substantial scale, for many years prior to the use of the plaintiffs mark though not to its registration. The trial court held the marks were too close on appeal. The appellate court held though no instance of confusion between the marks Electrix and Electrux had been proved, their similarity rendered the former mark an infringement of the latter. Also in COHEN V. FIDLER & COY. 33 R.P.C. 129. The Plaintiff registered a Trade mark “Regent” in respect of all goods in Class 38 namely articles of clothing with certain exceptions and commenced an action for infringement of the Trade mark against the Defendant for using the word ‘Regent’ for waterproof garments. The Defence set up prior user as defence the court held that when the Defendant, first began to use the word ‘Regent’ it has been associated with the Plaintiffs good and the Plaintiffs were granted an injunction.
In the instance case an average man is likely to be confused into believing the product labeled “virgin table water” is a product of the Appellant. The Appellant has shown that the Respondent infringed on his trade mark “virgin”. The right vested on the proprietor of a trade mark is not by long use of the product but by registration. See: section 22 (2) of Trade Mark Act.
From the totality of the forgoing I am of the firm view that there is merit in this appeal. The learned trial Judge erred in his decisions on the two issues raised in the lower court. The appeal succeeds in part. I hereby reverse the decision of the lower court made on 15 April 2005. In its place I invoke the powers under section 15 of the Court of Appeal Act 2004 and enter judgment for the Appellant by ordering an injunction to restrain the Defendant/Respondent, whether by its directors, officers servants or agents or any of them or otherwise howsoever from infringing the Plaintiff/Appellant’s trade mark registered under No. 55476, by using the word VIRGIN in connection with the production, and sale of bottled water not of the Plaintiff/Appellant’s manufacture or merchandise.
Cost is assessed at N30, 000.00 in favour of the Appellant.
ADZIRA GANA MSHELIA, J.C.A: I had the privilege of reading in draft the judgment of my learned brother Nwodo, JCA just delivered. I entirely agree with the reasoning and conclusion arrived thereat. Once a trade mark’s registration is valid it gives the proprietor the exclusive right to use the trade mark in marketing or selling his goods, and without his consent if anyone else uses an identical mark or one so nearly resembling it as to be likely to deceive or cause confusion, this will entitle the proprietor to sue for infringement of trade mark. In the instant case appellant’s trade mark is registered and therefore enjoys statutory protection under section 5 of the Trade Mark Act. Thus the registration of the word “Virgin” as a trade mark for the goods listed in the certification is exclusive to appellant throughout the lifespan of the registration. The trial Judge was therefore wrong to have refused to enter judgment for the appellant.
For this reason and the fuller reasons contained in the lead judgment, I too allow the appeal in part and set aside the decision of the lower court. I abide by all other consequential orders made in the lead judgment cost inclusive.
ADAMU JAURO, J.C.A: I have read before today the judgment of my learned brother Nwodo .JCA, which has just been delivered. I am in complete agreement with the reasoning and conclusions reached and wish to make a brief contribution, by way of emphasis.
The narrow compass within which this appeal, oscillates, is the disputation as to the use of the word “VIRGIN” by the respondent on its products (VIRGIN Table Water), despite the fact that appellant had registered ‘VIRGIN’ as its trade mark since 1994. Incidentally the product covered by the appellant’s registration includes aerated mineral water. The contention of the respondent is that the word ‘VIRGIN’ not being an invented word is generic hence appellant cannot claim exclusivity of its usage, despite having registered it as its trade mark. The appellant argued per contra, to the effect that it enjoys exclusive usag0 of the word ‘VIRGIN’ as a trade mark and any attempt to use it by anybody amounts to an infringement of its trade mark.
The main objective of the law of trade marks is to ensure that no one, not being the proprietor of a trade mark or a registered user thereof uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered. By Section 3 of the Trade Marks Act (hereinafter called “the Act 1 there is no right of action for the infringement of and unregistered trade mark, but without prejudice to the right of any person to bring an action of passing off for imitation of unregistered trade mark. See G.B. Ollivant & Co. Ltd v. Christian 1925 6 NLH 102. Exhibits B. and B 1 are certified true copies of certificate confirming the registration of ‘virgin’ as the trade mark for the appellant, hence bringing Section 5(1) & (2) of the Act into focus.
The appellant is using ‘virgin as its trade mark and has applied for its registration. A comparison of the two trade marks will reveal that the letter is potentially capable of being mistaken for the former (appellant’s trade mark). See: Bell Sons & Co. v. Aka & Ors (1972) VILR Vol.3 Pt 1 Pg. 43, Alban Pharmacy Ltd v. Sterlin Products (1968) All NLR 112 and the unreported decision of this court in CA/L/378/03 Smithkline Beecham Plc. v. Farmex Limited, delivered on 9th February, 2009.
For the above and fuller reasons contained in the lead judgment, I find the appeal meritorious and allow same. I abide by consequential orders made in the lead judgment, including order as to cost.