MORISON INDUSTRIES PLC v. CPL INDUSTRIES LTD (2021)

MORISON INDUSTRIES PLC v. CPL INDUSTRIES LTD

(2021)LCN/14929(CA)

In The Court Of Appeal

(LAGOS JUDICIAL DIVISION)

On Friday, January 29, 2021

CA/L/873/2008

RATIO

TRADE MARK: PURPORT OF TRADE MARK

To start with, it is Section 5 of the Trade Marks Act, CAP. T3, Laws of the Federation of Nigeria, 2004 that provides protection to a registered proprietor of a trade mare, whose registration is valid and subsisting, with exclusive right to use the trademark in marketing and selling of his goods. What amounts to a ‘trade mark’ is the mark that the plaintiff registered as his artistic design or get up logo that distinguishes or gives character to the product. Such a registered trademark prohibits any other person from using the same mark or a mark so similar to it as to likely deceive or cause confusion to the user/consumer of the goods of the proprietor. The objective of this protective provisions is to ensure that no one other than the registered proprietor of a trade mark uses a mark either identical or so nearly resembling it as to likely deceive or cause confusion in the course of trade relating to the goods of the proprietor.

See VIRGIN ENTERPRISES LTD VS. RICHDAY BEVERAGES (NIG.) LTD (2009) LPELR-8187 (CA), DYKTRADE LTD VS. OMNIA (NIG.) LTD (2000) 12 NWLR (PT. 680) 1(SC), UZOKWE VS. DENSY IND. (NIG.) LTD (2002) 2 NWLR (PT. 752) 528 (SC) and FERODO LTD & ANOR. VS. IBETO INDUSTRY LTD (SUPRA).
In the case FERODO LTD VS. IBETO IND. LTD (supra), referred to by the Appellant, the Apex Court, per Musdapher, J.S.C. (as he then was, and later CJN and of blessed memory) held inter alia that:
…. A trade mark on the other hand is 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 a registered user to use the mark…. A trade mark can also be defined as a distinctive picture which would indicate to a purchaser of an article with the same mark on it. A trade mark if registered will give 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 mark so nearly resembling it as to be likely to deceive or cause confusion, will entitle the proprietor to sue for infringement of the trade mark, or to sue for passing off or both. PER BALKISU BELLO ALIYU, J.C.A.
TRADE MARK: BURDEN OF PROOF IN AN ACTION FOR TRADEMARKS INFRINGEMENT

The Plaintiff in an action for trademarks infringement such as this case, has the burden of proving its entitlement to the exclusive use of a registered trade mark or design that has a distinctive character and that the defendant infringed on that right by copying same on the infringing product This is the tenets of Sections 4 to 7 of the Trade Marks Act, which means that the plaintiff must plead facts and lead evidence to establish that the defendant used identical or similar mark in relation to his (plaintiff’s) goods registered under the trade mark in issue in such a manner that there is likelihood of deceit or confusion. See Section 5(2) of the Trade Marks Act which provides that:
Without prejudice to 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, uses a mark identical with it or so nearly resembling is 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 so 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 use upon the goods or in physical relation thereto or in advertising circular or other advertisement issued to the public, as importing a reference user to use the trade mark or to goods with which such a person as aforesaid is connected in course of trade. (Underlining provided)
Note that the legislature uses the phrase “likelihood to deceive or cause confusion in the course of trade”, in Section 5(2) supra, thus, providing the yardstick for the judge in determining the question of infringement to examine the marks and decide whether one is likely to be confused for the other in the course of trade. In other words, the plaintiff must prove that defendant used identical or similar signs on his goods in such a way that he took unfair advantage of the plaintiff’s acquired and established market reputation to the detriment of the distinctive character of its trade mark. PER BALKISU BELLO ALIYU, J.C.A.

WORDS AND PHRASES: MEANING OF THE WORD “DISTINCTIVE”

The ordinary dictionary meaning of the word “distinctive” is ‘characteristic’, ‘unique’, ‘individual’ or ‘typical’. But with regards to law of trade marks, Black’s Law Dictionary, Ninth Edition at page 1631 defines “distinctive trade mark” as:
A very strong trade mark, one that consumers immediately and consistently associated with specific goods or services….
The plaintiff must put in evidence his product’s registered artistic mark/design and the infringing mark before the Court for it examine to determine whether the alleged infringing design is likely to deceive or cause confusion to the user/consumer in the course of trade, especially if one product is seen in the absence of the other, and not necessarily side by side. The resemblance that will give rise to infringement of trade mark will lie on the basic idea of the mark that distinguishes it with other products. PER BALKISU BELLO ALIYU, J.C.A.

INTELLECTUAL PROPERTY: DEFINITION OF “PASSING-OFF”

The Black’s Law Dictionary, Ninth Edition at page 1233, defines “Passing-off” in relation to intellectual property law as:
The act or instance of falsely representing one’s own product as that of another in an attempt to deceive potential buyers…. PER BALKISU BELLO ALIYU, J.C.A.

DAMAGES: WHEN WILL GENERAL DAMAGES ARISE

The law is firmly settled that general damages arise from an inference and a presumption of the law to flow directly as the consequences of the wrongful act complained of and proved. In that regard, it comprises of the sum of money that the Court decides the person wronged is entitled to receive as compensation from the wrong doer. See Ya’u Vs. Dikwa (supra), Cameroon Airlines Vs. Otutuizu (2011) LPELR- 827 (SC) and Usman & Anor. Vs. Emene Oil Nig. Ltd (2014) LPELR-23131 (CA) among others. PER BALKISU BELLO ALIYU, J.C.A.

Before Our Lordships:

Ugochukwu Anthony Ogakwu Justice of the Court of Appeal

Balkisu Bello Aliyu Justice of the Court of Appeal

Ebiowei Tobi Justice of the Court of Appeal

Between

MORISON INDUSTRIES PLC APPELANT(S)

And

CPL INDUSTRIES LIMITED RESPONDENT(S)

BALKISU BELLO ALIYU, J.C.A. (Delivering the Leading Judgment): This appeal is against the judgment of the Federal High Court, Lagos Division (trial Court) delivered on the 20th December, 2006 by Hon. Justice Abdullahi Mustapha, in respect of Suit No: FHC/L//CS/163/96. The Respondent was the Plaintiff in the suit it filed against the Appellant being the Defendant vide a writ of summons dated and filed on the 16th February, 1996 supported by a further amended statement of claim filed on the 9th November, 1999. The claims of the Respondent in the said amended particulars of claims (page 131 to 133, volume 1 of the record of appeal) are:
1. A declaration that the Plaintiff’s Registered Trade Mark, RTM 40551 is valid and subsisting and has been infringed by the Defendant.
2. A declaration that the Plaintiff is the original author, inventor, designer and creator of the Artistic work of the Registered Trade Mark, RTM 40551, its packaging, logo, get up, colour scheme, and all physical/visual attributes and characteristics and therefore entitled to be adjudged the owner of the copyright thereof.
3. A perpetual injunction restraining the Defendant

whether by itself, its Agents or privies or otherwise, howsoever, from doing the following acts or any of them, that is to say:
a. Infringing the Plaintiff’s Registered Trade Mark No. RTM 40551 in Class 5, comprised in Certificates of Registration and of Renewal of Registration dated 13th March, 1986 and 20th March, 1992 respectively
b. Infringing the copyright in the Artistic work of the Plaintiff’s Registered Trade Mark No. RTM 40551, its Get-Up Logo and Package design.
c. Passing-Off or attempting to pass-off or causing, enabling or assisting others to pass-off an analgesic, containing the active ingredient known as “paracetamol”, not of the Plaintiff’s manufacture or merchandise, as and for goods of the Plaintiff by the use, or in connection therewith in course of trade of a get-up consisting the word “PARACETAMOL” written in white within an orange circle superimposed/eclipsed on a white oval with thin vertical edges and thicker horizontal edges in a BLACK packaging, or adopting the distinctive get-up, package design and logo identical in all essential details to that of the Plaintiff’s

Registered Trade Mark, RTM 40551, for “CONPHAMOL and Device” in Class 5; or any colourable imitation thereof without duly distinguishing such package from that of the Plaintiff; or by any other means.
d. Importing, manufacturing, selling or offering for sale or supplying any analgesic preparation containing the active ingredient known as “paracetamol” bearing the name “PARACETAMOL” in a container or any packaging, with a logo and get-up so closely resembling the Plaintiff’s Registered Trade Mark, RTM 40551 for “CONPHAMOL and Device” in Class 5, as to be calculated to lead to the belief that the analgesic preparation not the Plaintiff’s manufacture and/or production are products of the Plaintiff.
4. A declaration that the name “PARACETAMOL” is a generic name, which cannot be used as a Trade Mark by the Defendant.
5. Obliteration upon oath of all goods bearing the Marks complained of and in the custody, control, possession of the Defendant, the use of which would be a breach of the orders of injunction in the terms prayed for above, and verification upon oath that the

Defendant no longer has any such articles so marked in its control, possession and custody.
6. An order that the Defendant, whether acting by itself, its agents, servants assigns or privies or any of them, do make and serve upon the Plaintiff, an affidavit discharging when, to whom and in what quantity they have produced, sold, sent or supplied “PARACETAMOL” or any goods bearing a Trade Mark resembling the said Registered Trade Mark RTM 40551, relating to such facts and matters disclosed and payment of all sums found due upon making such an affidavit.
7. The sum of N50, 000, 000. 00 (Fifty Million Naira) as damages against the Defendant for infringement of the Plaintiff’s registered Trade Mark, RTM 40551 for “CONPHAMOL and Device” in Class 5.
8. The sum of N30, 000, 000. 00 (Thirty Million Naira) as special damages against the Defendant for infringement of the copyright in the Artistic work of the Registered Trade Mark, RTM 40551 for “CONPHAMOL and Device” in Class 5, assessed at N1,000.00 (One Thousand Naira) per infringement packet (copy) under Section 18 of the Copyright Act, CAP. 68 Laws of the Federation of Nigeria 1990.

In the alternative to relief 8 above, an inquiry as to damages (including additional statutory Damages) or at the Plaintiff’s option, an account of profits and payment of all sums found due upon taking such inquiry or account, with interest.
9. Substantial Cost
10. Further and other reliefs.

The Appellant/Defendant denied the claims of the Respondent in terms of its statement of defence filed on the 16th November, 1999. It asserted, inter alia, that its use of the word “PARACETAMOL” has not in any way infringed the Respondent’s registered Trade Mark “CONPHAMOL” registered as RTM 40551 as alleged or at all.

During the trial, the Respondent called one witness and tendered several documents including the packaging of the respective products trade marks in dispute, admitted as Exhibits ‘A’ to ‘J’. The Appellant also called one witness in defence of the claims and equally tendered documents admitted and marked Exhibits ‘K’, ‘L’ and ‘L1’ respectively.

The Respondent’s case is that it was incorporated in

1979 in the name of Continental Pharmaceutical Ltd but the name was changed to CPL Industries Ltd in 1993. The company is the manufacturer of pharmaceuticals, toiletries, cosmetics and plastics. Among the pharmaceutical products of the company is ‘Conphamol’, an analgesic that contains paracetamol, which was registered by the Trade Marks Registry under its Trade Mark and Device RTM 40551 in 1981 and renewed in 1992. The Respondent used this trade mark to market its conphamol tablets an analgesic preparation for headaches, pains, rheumatic pains, feverish conditions etc.

The company designed the packaging of the Conphamol tablets with the salient features of its registered trade mark RTM 40551, were described by PW1 as white font with vertical thin edges and brand horizontal edges with an eclipse shape superimposed on a blue package with the name “Conphamol” in the middle with the words “96 TABLETS” in front top of the package and the words “for relief of pain” at the bottom of front package. At the back of the package is the dosage information with the heading that says “Contains paracetamol”.

The Respondent claimed that the packaging logo/design features of its conphamol tablets are distinctive and the product has been in the market since 1980 in Nigeria and throughout West African Sub-Region. It claimed that the conphamol tablets are popular amongst pharmaceutical distributors and consumers with a sale average of N70Million per annum. That, it widely promoted and advertised its registered RTM 40551 for “CONPHAMOL and Device” in Nigeria and abroad, on television and various medical journals, publications, newspapers and magazines at great costs to it over the years and has continued to do so to date.

However, sometimes in 1995, the Respondent discovered a pharmaceutical product labeled “Paracetamol” in the Nigerian markets with identical packaging with that of its Conphamol that it later found belonged to the Appellant. The Respondent’s solicitors wrote a letter of ‘Cease and Desist’ to the Appellant and to some other offending pharmaceutical companies. While some of the companies replied the Respondent promising to desist from further adopting the Respondent’s registered trademark RTM 40551, the

Appellant continued the infringement, which was the reason for instituting this suit against it. It was the Respondent’s claim before the trial Court that as a result of the entry of the Appellant’s products to the market, carrying identical packaging to its Conphamol, there was confusion among consumers who mistook the Appellant’s product for that of the Respondent, and that the sale of the Respondent’s Conphamol dropped since the entry of the Appellant’s product in the market.

In its defence to the Respondent’s claim, the Appellant stated that it was incorporated as a pharmaceutical company and has a registered trademarks “MSJ” and “MORISON” registered in Class 5 of the Trade Mark Register as RTM 30507 and 30511 for classes of goods including pharmaceutical, veterinary and others within Class 5. It asserted that its use of “PARACETAMOL” on its product did not infringe on the Respondent’s Conphamol because “PARACETAMOL” is a generic name for drug substance used for relief of pains and so can be used by any company that is registered to manufacture and sell the

product. It contended that the name “PARACETAMOL” cannot confuse customers who go to pharmacies to buy the Respondent’s Conpharmol because its packaging contains the eclipse shape of the trade mark “MSJ” and its orange colour with surrounding of white and black which colours are for identification and distinction in Nigeria, West Africa and the United Kingdom. That, the three colours of orange, white and black are peculiar to the Defendant’s trademarks. Therefore, the name of “PARACETAMOL” is not a pass-off of the Respondent’s Conphamol.

At the conclusion of the trial, the learned trial Judge found and held that the Appellant infringed the Respondent’s trademark registered as RTM 40551 and failed to cease and desist the said infringement even after receiving the letter from the Respondent. He therefore entered judgment in favour of the Respondent and awarded it N10Million as general damages against the Appellant for infringement of the Respondent’s trademark and passing off its “PARACETAMOL” as that of the Respondent.

Aggrieved with the judgment of the trial Court, the

Appellant filed notice of appeal against it on the 23rd February, 2007 relying on seven (7) grounds of appeal to pray that the said judgment be set aside and the Respondent’s action be dismissed. See pages 470 to 476, vol. 2 of the record of appeal.

The Appellant’s brief of argument settled by S. B. Joseph (JNR) Esq., was filed on the 26th June, 2009 wherein he raised three issues for determination from the seven grounds of appeal thus:
1. Whether in the circumstances of this case, the Plaintiff (Respondent) can:
(i) Successfully institute any proceeding against the defendant (Appellant) to prevent or recover damages for infringement of PARACETAMOL.
(ii) Successfully institute any proceeding to prevent or recover damages against the defendant, who manufacture and or market in its trade Marks ‘MSJ’ and or “MORISON” PARACETAMOL because the Plaintiff (Respondent) also manufacture and or market it in its trade mark “Conphamol”.
2. Whether the Plaintiff can institute or have right of action against the Defendant for passing off of PARACETAMOL as goods of the Plaintiff or the remedies in respect thereof.

Having regard that the claim of the Plaintiff against the Defendant is for Declaration and consequential reliefs, can paragraphs 8, 12 and 19 of the statement of defence amount to admission in Law to make the defendant liable for PASSING OFF PARACETAMOL as the Plaintiff’s product and the award of N10, 000, 000. 00 (Ten Million Naira) general damages in favour of the Plaintiff against the Defendant in respect thereof as well as for infringement of the Plaintiff’s Registered Trade Mark RTM 40551 CONPHAMOL and DEVICE.The Respondent was also dissatisfied with the part of judgment of the trial Court where it refused to grant its reliefs 2 and 3(b) in which it sought declaration that being the author, inventor and designer of the artistic work of its trade mark RTM 40551, its packaging and logo, etc. it is entitled to be adjudged the owner of the copyright thereof. It filed a cross-appeal against that part of the judgment vide its notice of cross-appeal dated 19th March, 2007. See pages 529 to 532 of Volume 2 of the record. The Respondent/Cross Appellant’s brief of argument was settled by Sylvia Shinaba, SAN and

filed on the 10th May, 2010 but deemed properly filed and served on the 20th March, 2018. The learned senior counsel identified the following four issues as arising for the determination of the main appeal and the cross-appeal:
I. Whether the trial Court was right in holding that the Respondent’s registered trade mark, RTM 40551 for “CONPHAMOL AND DEVICE” has been infringed by the Appellant.
II. Whether the trial Court was right in holding that the Appellant has passed-off its product, “PARACETAMOL”, as product of the Respondent by its adoption of the Respondent’s Registered Trade Mark, RTM 40551 for “CONPHAMOL AND DEVICE”.
III. Whether the trial Court was right in awarding the sum of N10, 000, 000. 00 (Ten Million Naira) as general damages for infringement of the Respondent’s registered trade mark RTM 40551 for “CONPHAMOL AND DEVICE”.
IV. Whether the trial Court was right in refusing reliefs 2 and 3(b) of the cross-appellant’s further amended statement of claim on the infringement of copyright in the cross-appellant’s registered trade mark, RTM 40551, for “CONPHAOL AND DEVICE”.

There is an Appellant’s reply brief filed on the 3rd October, 2018 but deemed properly filed on the 16th November, 2020; the date the appeal was called for hearing and each counsel adopted the parties’ respective briefs of argument. The Appellant’s learned counsel urged the Court to allow the appeal and set aside the judgment of the trial Court but the Respondent prayed the Court to dismiss the appeal.

APPELLANT’S SUBMISSIONS
On the Appellant’s proposed issue one distilled from its grounds 1, 2, 3 and 4 of appeal, learned counsel submitted that the parties are in agreement that the word “PARACETAMOL” used by the Appellant is generic name for drug/chemical substance used for pains relief and by the provisions of Section 12(1) of the Trade Marks Act, CAP. T3, Laws of Federation of Nigeria 2004, names of chemical substance cannot be registered as a trademark. He referred to the finding of the learned trial Judge in pages 407 to 408 of the record, that the Appellant only used the generic name “Paracetamol” but refused to distinguish its packaging (Exhibit H)

from that of the Respondent’s Exhibit C. On this finding, learned counsel argued that the learned trial Judge did not consider that the package of its product, Exhibit ‘H’ has on it “manufactured by Aurochem Laboratories Palghar for MORISON Industries Plc 28/30, Morison Crescent, Ikeja Lagos, Nigeria” and “MORISON” Trade Mark clearly and legibly written on the packaging. He relied on Halsbury’s Laws of England, 4th Ed. Vol. 48, paragraph 134 and the case of FERODO LTD VS. IBETO INDUSTRIES LTD (2004) 2 S. C. (PT. I), to submit that the Respondent has the burden of proof to establish that deception or confusion was caused by the matter complained of, which is operative in leading the consumers to receive the wrong goods. That in deciding whether the two trademarks are confusingly similar, the marks alone must be considered, divorced from associated features or get-up and the like. He argued that in this case, the registered trademark of the Respondent is “CONPHAMOL” and the Appellant’s “MORISON” and “MSJ” is incapable of infringing “CONPHAMOL”. He submitted that

in the face of the evidence adduced by the parties, the exhibits tendered and the state of the law on infringement of Trade Marks, the learned trial Judge’s findings cannot be right. We were urged to so hold and to set it aside.

On the Appellant’s proposed issue two, premised on ground 5 of appeal, learned counsel relied on the definition of “passing-off” in the book “Atkins Court Forms” 2nd Ed. Vol. 38 1975 Edition, page 128 paragraph 8, wherein the learned author opined that to establish an action in passing off, the plaintiff must prove; (1) that he has some reputation connecting him with the name, mark or “get up” of the goods, (2) that the defendant has made misrepresentation and (3) that the result is likelihood of confusion. He then referred to the conclusion drawn by the learned trial Judge in pages 409 to 411 of Volume 2 of the record and submitted that the learned trial Judge did not advert his mind to Exhibit ‘H’ sufficiently enough to realize and or appreciate all what were printed and contained in the said exhibit. Had he done so, the learned trial Judge’s finding on Exhibit

‘H’ would have been different and he would have realized that the Appellant did not pass off the Respondent’s PARACETAMOL for its own, especially as “paracetamol” is a generic name. The learned counsel further submitted that the elements necessary for the Respondent to succeed as stated above were overlooked or ignored resulting in the aforesaid finding and wrongful conclusion and the eventual undeserved judgment in favour of the Respondent, and should therefore be set aside.

In arguing the Appellant’s issue three distilled from ground 6 of appeal, the learned counsel referred us to the English case of METSGER VS. DEPT. OF HEALTH AND SOCIAL SECURITY (1977) 3 ALL E.R. 444 to the effect that Court does not make declaration just because the parties to the litigation have chosen to admit something, but it only declares what it has found to be the Law after proper argument, not merely on admission of parties. He submitted that the learned trial Judge having found that parties conceded that “paracetamol” is a generic name and not registrable as a trade mark, but he still reverted to paragraphs 8, 12 and 19 of the

statement of claim to hold that the Appellant admitted infringing the Respondent’s trade mark. That the learned trial Judge failed to realize that there are two main causes of complaint in an action in respect of trade mark namely; that the defendant infringed the plaintiff’s trade mark in its entirety, or by taking a substantial part of it or by colourably imitating it, and secondly that the defendant has passed off or caused to be passed off the plaintiff’s goods. That in the first class of case, the Plaintiff relies on his right to the exclusive use of the mark in question for goods of the kind in question, derived from the fact that the mark is on the register and that he is the registered proprietor. In the second class of case, the plaintiff’s case is more difficult to prove for he must establish his reputation in the mark by evidence and must also prove that the defendant’s acts are likely to cause confusion. The Appellant submitted that in this case, the Respondent did not establish the two main causes of complaint to be entitled to the judgment of the trial Court. Its learned counsel relied on Exhibits B2, the extract of

Trade Mark particulars from the Trade Mark Register and Exhibits ‘C’ and ‘H’ showing the difference in the packaging of the two drugs of the parties to support his argument.

He further submitted that the award of the N10Million as damages to the Respondent, was in error because the Respondent failed to establish that the Appellant infringed its trade mark as stated supra. That the admission referred to and relied upon by the learned trial Judge, drawn from the Appellant’s DW1 evidence where he stated that it withdrew its product from the market upon receiving the Court’s interim order since March 1976, cannot amount to an admission in law to make the Appellant liable for infringement and passing off of the Respondent’s trade mark. Learned counsel relied and quoted extensively from the Apex Court’s decision in the case of SEISMOGRAPH SERVICES NIG. LTD VS. CHIEF KEKE OGBENEGWEKE EYUAFE (1976) 9 & 10 SC 135 AT 148, to submit that the reference of the trial Judge to some paragraphs of the Appellant’s statement of defence as being an admission of infringing the Respondent’s trade mark and

passing-off its goods was manifestly absurd and a Court of justice ought not to adjudicate merely upon such an admission when the Respondent’s claims was for declarations.

RESPONDENT’S SUBMISSIONS
The Respondent’s submissions in respect of this appeal will be reviewed only on its proposed issues 1 to 3 because issue 4 is in respect of the cross-appeal which will be determined after the determination of the main appeal. On its issue one, the learned senior counsel referred to Sections 67(1), 5(2) of the Trade Marks Act, which defined “Trade Mark”, and which entitles a registered user/proprietor to its exclusive use and a right of action against any person who uses a mark identical to it for damages. He argued that the question of infringement of a trade mark and whether a mark is likely to cause confusion is a matter upon which a judge must make up his mind and he alone can decide.

He further submitted that the fact of the ownership of the Respondent’s trade mark “Conphamol and device” comprising the eclipse design or logo in egg shape is registered without limitation of colour among other

facts was not in contention before the trial Court. The only issue in dispute was whether the Appellant infringed the Respondent’s said registered RTM 40551 in class 5 for “conphamol and device.” He submitted that the Appellant’s packaging of its “PARACETAMOL” product adopted the distinctive get-up, package, design and logo identical in all essential details to that of the Respondent’s RTM 40551, comprising eclipsed egg shape, design, the arrangement of the features and the wordings on the packaging, such that Exhibit “C” (Respondent’s product) and Exhibit “H”-Appellant’s product are not distinguishable from one another. That the only difference between the two packaging for CONPHAMOL and the Appellant’s PARACETAMOL are the words “CONPHAMOL” and “PARACETAMOL” and the colours. That since the parties agreed that the name “PARACETAMOL” is generic name, not registrable and therefore is not capable of any distinctiveness in the packaging of any pharmaceutical product. Therefore, the fact that the Appellant’s identical packaging bore the word

“PARACETAMOL” instead of “CONPHAMOL” is not a distinguishing factor.

The learned senior counsel pointed out that instead of the Appellant to use its registered “MSJ” as shown in Exhibit “H1”or “MORISONS” as shown in Exhibits ‘H2’ in the marketing of its product, it used a generic and non-registrable name of “PARACETAMOL” and adopted or copied the salient features of the Respondent’s RTM 40551 for “Conphamol & Device.” He submitted that this was calculated to deceive the unsuspecting customers into buying the Appellant’s brand of paracetamol product in the belief that it is the Respondent’s brand of paracetamol. He submitted that the trial Court’s findings and conclusion contained in pages 407-409 (vol. II) of the record of appeal is not perverse and this Court will not interfere with it, relying on the case of CHIMA V. NKAMA (2001) 11 NWLR (PT. 724) 449 AT 463 in support.

It was further submitted for the Respondent that in determining whether or not the packaging of the Appellant’s PARACETAMOL (Exhibit ‘H’) is

deceptive; the Court will adopt the point of view of an illiterate incautious purchaser. He relied on the case of PATERSON ZOCHONIS VS. A. B. CEM. & CO. (1997) 2 NCLR 375 at 385, where the Apex Court held that the principle is well established that the Trade Marks which are not likely to deceive literates or educated persons could deceive illiterate Nigerians. He argued that it was the reason why a literate person like PW1, owner of the genuine Trade Mark, may not be confused by the Appellant’s infringing product, PARACETAMOL, whilst an average purchaser would be. He submitted that credible evidence was led before the trial Court showing that consumers were actually mistaking the Appellant’s product for that of the Respondent, as a result, the Respondent’s sale dropped as shown in Exhibit “E” and testimony of PW1 located in pages 172 to 212, Volume 1 of the record of appeal. Learned senior counsel drew our attention to the fact that it was not the phonetic or visual confusion concerning the words “PARACETAMOL” and “CONPHAMOL” or the colours, orange and blue that is in issue, but the Appellant’s

adoption of the Respondent’s eclipse design or logo registered as RTM 40551 in class 5 for “Conphamol and Device” without limitation in colour as such the Respondent can use the Mark in any color. He relied on the case of Paterson Zochonis Vs. A. B. Cem & Co. (supra) for support. Finally on issue one, learned senior counsel submitted that the learned trial Judge was right in holding that the Respondent’s registered trade mark for “Conphamol and Device” has been infringed by the Appellant.

With regards to issue two, we were referred to Section 3 of the Trade Mark Act, which confers right of action against any person for passing-off the goods of another. It was submitted that in this case, the Appellant’s adoption of the salient and essential features of the Respondent’s registered trade mark was done with the deliberate intention to deceive prospective and unsuspecting customers or consumers into buying the Appellant’s product in the belief that it is the Respondent’s product. As a result, the Appellant passed-off its product of PARACETAMOL as the product of the Respondent and the trial Court

rightly found so in page 407 to 409 of Volume II of the record of appeal. That contrary to the contention of the Appellant, the allegation of passing-off was sufficiently proved upon preponderance of evidence before the trial Court.

On the Respondent’s issue three, learned senior counsel argued that since a case of infringement of trade mark of the Respondent and passing-off was made against the Appellant, the Respondent was entitled to general damages which the law presumes to be the natural consequences of the acts complained of. In this case, the Respondent pleaded facts and led credible evidence to the effect that since the introduction of the Appellant’s “PARACETAMOL” product in to the market in identical packaging with its CONPHAMOL product, its sales drastically dropped as shown in the sale analysis in exhibit ‘E’ vide pages 249-250 of the record of appeal. That in awarding the sum of N10Million, the trial Court took into consideration the fact that the Appellant did not stop the sale of its product in spite of the “Cease and Desist” letter written to it by the Respondent until the trial Court issued

a restraining orders on the 4th March, 1996. Accordingly, learned senior counsel submitted that the award of N10Million general damages against the Appellant was judicially and judiciously awarded and it was reasonable in the circumstances of this case. This Court was urged not to interfere with that award.

APPELLANT’S REPLY BRIEF
The learned Appellant’s counsel submitted that the Respondent missed the point and failed to appreciate that this case is purely trade mark issue, that is, Exhibits ‘C’, ‘H1’ and ‘H2’ and not paracetamol. That both the parties and the trial Court realized the differences in that both the Appellant’s PARACETAMOL and the Respondent’s CONPHAMOL are each duly registered in class 5 of the International Trade Mark classes consisting of pharmaceutical, veterinary and sanitary substances.

RESOLUTION
A calm perusal of the issues identified for determination by the parties in their respective briefs shows that they are identical save for difference in language style adopted. It means that the parties are in agreement on the issues in controversy for

determination from the grounds of appeal. However, for brevity, I adopt the Respondent’s issues 1 to 3 as my guide in the determination of this appeal. As stated supra, the Respondent’s issue 4 is concerned with its cross-appeal.

ISSUE ONE
This issue is – whether the trial Court was right in holding that the Respondent’s registered trade mark, RTM 40551 for “CONPHAMOL AND DEVICE” has been infringed by the Appellant. The grouse of the Appellant under this issue is that the learned trial Judge in holding that it infringed the trade mark of the Respondent did not consider the fact that the Respondent failed to prove its case to entitle it to that relief. This is so especially as the learned trial Judge found and held that “paracetamol” is a generic name and not a registrable trade mark, as such, it can be used by anybody. And that the Respondent’s registered mark “Conphamol” is not capable of being infringed by the Appellant’s “Morison” and “MSJ”. Further that the learned trial Judge ignored the distinguishing features of the Appellant’s

“PARACETAMOL”, i.e. the inscription on its packaging “manufactured by Aurochem Laboratories Palghar for Morison Industries Plc. 28/30 Morison Crescent, Ikeja, Lagos, Nigeria.”

confusion, will entitle the proprietor to sue for infringement of the trade mark, or to sue for passing off or both.
The Plaintiff in an action for trademarks infringement such as this case, has the burden of proving its entitlement to the exclusive use of a registered trade mark or design that has a distinctive character and that the defendant infringed on that right by copying same on the infringing product This is the tenets of Sections 4 to 7 of the Trade Marks Act, which means that the plaintiff must plead facts and lead evidence to establish that the defendant used identical or similar mark in relation to his (plaintiff’s) goods registered under the trade mark in issue in such a manner that there is likelihood of deceit or confusion. See Section 5(2) of the Trade Marks Act which provides that:
Without prejudice to 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, uses a mark identical with it or so nearly resembling is 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 so 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 use upon the goods or in physical relation thereto or in advertising circular or other advertisement issued to the public, as importing a reference user to use the trade mark or to goods with which such a person as aforesaid is connected in course of trade. (Underlining provided)
Note that the legislature uses the phrase “likelihood to deceive or cause confusion in the course of trade”, in Section 5(2) supra, thus, providing the yardstick for the judge in determining the question of infringement to examine the marks and decide whether one is likely to be confused for the other in the course of trade. In other words, the plaintiff must prove that defendant used identical or similar signs on his goods in such a way that he took unfair advantage of the plaintiff’s acquired and established market reputation to the detriment of the distinctive character of its trade mark. The ordinary

dictionary meaning of the word “distinctive” is ‘characteristic’, ‘unique’, ‘individual’ or ‘typical’. But with regards to law of trade marks, Black’s Law Dictionary, Ninth Edition at page 1631 defines “distinctive trade mark” as:
A very strong trade mark, one that consumers immediately and consistently associated with specific goods or services….
The plaintiff must put in evidence his product’s registered artistic mark/design and the infringing mark before the Court for it examine to determine whether the alleged infringing design is likely to deceive or cause confusion to the user/consumer in the course of trade, especially if one product is seen in the absence of the other, and not necessarily side by side. The resemblance that will give rise to infringement of trade mark will lie on the basic idea of the mark that distinguishes it with other products.

In this case, the Respondent’s amended particulars of claim and further amended statement of claim are located in pages 131 to 143 of Volume 1 of the record of appeal. I have reproduced supra the

declaratory and injunctive reliefs sought by the Respondent against the Appellant one of which was relief 4 supported by paragraph 18 of the further amended statement of claim. By the said pleading and relief, the Respondent asserted that the name “paracetamol” is generic name and cannot in law be used exclusively by any one as a name/trade mark of a product as did by the Appellant. In response, the Appellant averred in paragraph 12 of its statement of defence that the name “PARACETAMOL” is a generic name not registrable as a trade mark. Indeed, the Appellant in paragraph 0.2 of its brief of argument submitted that the parties are agreed to the fact that ‘paracetamol’ is generic name for a chemical substance used for relief of pain as correctly found by the learned trial Judge relying on Section 12(1) of the Trade Marks Act.

This means that the dispute between the parties is not the names of the two drug products “PARACETAMOL” and “Conphanol”, as posited by the Appellant, but the distinguishing features/marks of the two products, since ‘paracetamol’ being a generic name cannot be used

as a trade mark by the Appellant’s own admission, it follows that it is not and cannot be a distinguishing factor of its product, as rightly submitted by the learned senior counsel of the Respondent. The question is what then is the distinguishing mark used by the Appellant to identify its products in the markets or in the course of trading same.

I have examined thoroughly the evidence led by the Respondent on record, in attempt to prove its claims against the Appellant and which the learned trial Judge relied upon in reaching the conclusion that the Appellant infringed the trade mark of the Respondent. In his evidence, located in pages 183 to 184, Volume 1 of the record, the Respondent’s only witness (PW1) described the salient features the registered trade mark of the Respondent’s “CONPHAMOL” as follows:
“The salient features of the Registered Trade Mark RTM 40551 for CONPHAMOL AND DEVICE are a white front with vertical thin edges and broad horizontal edges with an eclipse shape super imposed on a blue package with the name CONPHAMOL in the middle with the word 96 Tablets’ in front of the package and the words for

relief of pain at the bottom of front package. The word 96 TABLET and CONPHAMOL on top of the package. At the back of the package is the dosage information with the heading that says contains paracetamol. The salient features were conceived by myself. I am the Chairman/Chief Executive of the Plaintiff Company…. The features I narrated are very distinctive of the Plaintiff’s product CONPHAMOL. The plaintiff product has been in the market since 1980. The products are marketed throughout Nigeria and ECOWAS region…”

The Respondent also tendered in evidence, through PW1 the Appellant’s package of its “PARACETAMOL” Exhibit ‘H’, and the certified true copies of the Appellant’s registered trade Marks and devices Nos. RTM 30507 and 30511 admitted as Exhibits ‘H1’ and ‘H2’ as part of its case against the Appellant. PW1 informed the trial Court that the trade mark used by the Appellant on its “PARACETAMOL” product (Exhibit ‘H’) “is identical to our Registered Trade Mark CONPHAMOL and DEVICE RTM 40551. There is no “MORISON” on Exhibit

‘H’. There is no MSJ on Exhibit H.” He further testified in page 193 of the record that:
The prominent featuring of Exhibit ‘H’ which made me to say it has infringed our Trade Mark are the eclipse logo, the thin horizontal line, the arrangement of features such as the 96 tablets written on top of Eclipse logo and for relief of pain at the bottom. The thick horizontal edges, the 96 Tablets written on the top of the packet, the arrangement of features at the back of the packet, the 96 Tablets written at the bottom of the packet are all identical to Plaintiff’s registered Trade Mark…
The evidence of PW1 under cross-examination is copied in pages 62 to 63 of the record of appeal. He stated as follows:
I know the meaning of the word “IDENTICAL”. It means two objects that look the same. Exhibits C and H shown to the witness. Exhibits C and H are two packages which contain blue in colour with same device. Exhibit C is a blue colour within a device. Exhibit H is an orange colour within a device. Blue and Orange colours as contained in Exhibits C and H are identical. An orange item and blue item as

contained in Exhibits C and H will not confuse me. Exhibit C contains the Word Conphamol Brand of Paracetamol. Exhibit H contains the word ‘Paracetamol’. The two things means the same. The two words are not likely to confuse me. Exhibits C and H are both blue in colour. I enjoy good sight.
Under re-examination, PW1 explained that:
I say they will not confuse me because the two packages contain the same identical device in a way that I would assume they are made by the same company which will lead me to purchase the product.

What can be garnered from the evidence given by the Respondent’s PW1 supra is that the two packages of its product and that of the Appellant have different colours, blue and orange colors, but the same design or mark. His assertion is that the Appellant copied the salient features of the Respondent’s packaging, which is likely to deceive or cause confusion in the two products.

On the other hand, the Appellant’s only witness who testified as DW1 and her evidence is contained in pages 206 to 212 in volume 1 of the record of appeal. She testified inter alia that:

The word paracetamol being used by the Defendant has not in any way infringed on the Plaintiff’s Conphamol. This is because paracetamol is a generic name for a drug substance used for relief of pains; as a result it can be used by any company that is registered to manufacture and or be involved in the sale of the product. A generic name for a product in pharmaceutical business is used generally, it is not owned by any company. That is why you can see May and Baker paracetamol, EMZOR paracetamol. Conphamol is a branded name and paracetamol is a generic name e.g. panadol is the brand name of the owner of the paracetamol…. The Defendant’s pack of paracetamol is in a pack of 96 or 100 Tablets. The design on the pack taken eclipse shape of MSJ which is the Trade Mark registered by the Defendant Comapany and is orange in colour with surrounding white and black back ground, white and black have been the colours of the Company for identification and distinctiveness in Nigeria, West Africa and the UK…. There is a difference in the colours between Conphamol pack and Paracetamol pack….

Under cross-examination, DW1 stated inter alia there is no separate

certificate of registration for exhibit ‘H’ or the features on it. However that the Appellant was “no more in the business of paracetamol tablet.”

The evidence led before the trial Court supra shows that while the Respondent’s witness stated elaborately the distinctive trade mark/design of the Respondent’s conphamol drug, the Appellant’s DW1 relied solely on the coloring difference of the packaging and the name ‘paracetamol’ as the distinguishing factor of its own brand of paracetamol. Noted also is the admission of DW1 that neither ‘MSJ’ nor ‘MORISON’ registered by the Appellant as RTM 30507 and 30511 appear on its packaging as a distinguishing feature of her company’s paracetamol drug.

I have also closely examined both Exhibit ‘C’, the trade mark of the Respondent’s ‘Conphamol’, copied in page 248 of volume 1 of the record of appeal, and the Appellant’s Exhibit ‘H’ (trade marks for its ‘MSJ’ and ‘MORISON’ contained in pages 338 to 339 of volume II of the record of appeal. It is to be noted that

the copies on the record has no coloring since the original exhibits tendered before the trial Court is not before this Court. I have to rely strictly on my observation of the copies on the record. I observe that the description of the trademarks given by PW1 of its Conphamol is correct representation of its registered trade mark RTM 40551 for conphamol copied on record. The features and indeed the basic ideas of the Respondent’s design an oval shape, and the writing of 96 tablets, as well as the inscription “for relief of pain” are exactly the same with the Appellant’s paracetamol packaging (Exhibit H) copied in page 338-339 of the record. Indeed the similarity of the two marks/get up of the products is more pronounced and striking in the black and white copies on the record. In fact, the main complaint of the Respondent by this suit was the copying of the distinguishing and basic idea of its package design of its Conphamol drug that was created by the PW1 as distinguishing features.

I found it baffling to say the least, why the Appellant whose witness admitted that the name ‘paracetamol’ is generic and cannot be used

by any one as trade mark and she actually enumerated other paracetamol brands’ names in her evidence, yet her company failed to distinguish its own brand of paracetamol in the same manner as others have done. Rather, the Appellant chose to adopt the features of the Respondent’s registered brand trademarks to market its product. A clear intention to deceive and cause confusion can be inferred against the Appellant in the circumstance.

The Appellant had referred us to the case Ferodo Ltd Vs. Ibeto Ind. Ltd (supra), to supports its case. In that case, only the trade name ‘FEREDO’ was registered as a trade mark for a brake lining. The argument of the Appellant before all the Courts was that Respondent’s “UNION” break lining package design infringed its ‘FEREDO’ trade mark. The Courts including the Apex Court rejected that argument because the package design was not registered as trade mark of the Appellant and there was evidence that the colouring of the package is common to all break lining products and the registered trade names are the only distinguishing factor. But in this case, the Respondent was

the originator of the packet design of its Conphamol drug and evidence was led before the trial Court showing that product has acquired distinctiveness by its trade mark in marketing its product. Therefore, Ferodo’s case does not help the Appellant’s case, rather it supports the case of the Respondent.

The Appellant’s learned counsel also argued that the learned trial Judge failed to consider the small prints by the side of the packaging (Exhibit H) stating that it was “manufactured by Aurochem Laboratories Palghar for MORISON Industries Plc. 28/30, Morison Crescent, Ikeja Lagos, Nigeria” as a distinguishing mark with the Respondent’s Conphamol. Again I examined the Appellant’s packaging, this inscription is located at the back of the Exhibit ‘H’, written in very small letters at the bottom. It is not a striking distinguishing mark that attracts a buyer’s attention to the mark of the product. It cannot be a distinguishing factor. In fact the Respondent’s conphamol also carried an inscription by the side of the packet which is also in small prints stating it was produced by CPL industries

etc. Unless one makes effort to read these small prints they cannot be distinguished between the two products.

In the light of the evidence before the trial Court, the submission of the Appellant’s counsel to the effect that the Respondent did not prove that its trade mark was infringed by the Appellant is incorrect and discountenanced. On the contrary, the learned trial Judge correctly evaluated the evidence before him with regards to the claim of the infringement of the Respondent’s trade mark and found the balance of probability tilts heavily in favour of the Respondent. Having also perused the evidence, I totally agree with the trial Judge’s findings and holding in page 458 of the record that the marks in Exhibits ‘C‘ and ‘H’ are identical, in such a way that they will cause confusion especially if the Appellant’s paracetamol product is seen in the absence of the Respondent’s Conphamol. I am of the firm view that the learned trial Judge was right to hold that the Appellant infringed the Respondent’s registered trade mark RTM 40551 for ‘Conphamol and Device’. Issue one is resolved against the Appellant.

ISSUE TWO
This issue is – whether the trial Court was right in holding that Appellant has passed-off its product, “PARACETAMOL”, as product of the Respondent by its adoption of the Respondent’s registered Trade Mark RTM 40551 for “CONPHAMOL AND DEVICE”.

In this case, the learned trial Judge found and held (pages 409 to 411 of the record of appeal) that the Appellant has passed off its paracetamol tablets as and for the product (Conphamol) of the Respondent and has used the generic name ‘paracetamol’ and design/logo in a way calculated to pass off its product as that of the Respondent.

The Appellant argued under this issue that the learned trial Judge did not advert his mind to Exhibit ‘H’ sufficiently enough to realize and appreciate all what was printed and contained in the

Appellant’s paracetamol product, otherwise, his finding would have been different. Further that the learned trial Judge’s holding that paragraphs 8, 12 and 19 of the statement of defence amounted to an admission by the Appellant of passing off its paracetamol as that of the Respondent was wrong because the claims of the Respondent were declaratory, which cannot be granted even on admission of the opponent.

In my resolution of issue one supra, I examined and reproduced the salient part of the evidence led by each party before the trial Court. It was clear to me and I held that the Respondent proved, by preponderance of evidence that the Appellant infringed its registered trade mark RTM 40551. It is therefore incorrect to say that the learned trial Judge solely relied on the admission of the Appellant in the statement of defence to hold the Appellant liable for infringement and passing off of the Respondent’s trade mark. That argument is discountenanced. I agree with the Respondent’s learned counsel that the allegation of passing off was sufficiently proved by preponderance of evidence before the trial Court.

Consequent upon my finding supra, I agree with the learned trial judge and hold that he was rightly guided by the evidence led before him to find that the Appellant infringed the trade mark of the Respondent by copying the salient and basic idea of the mark created by PW1 to distinguish its brand of paracetamol called ‘Conphamol’. On the other hand the Appellant used only the generic name “paracetamol” in its packaging design containing the basic and salient registered trademarks that are likely to deceive purchasers into believing its paracetamol tablets was the product of the Respondent; especially when seen in the absence of the Respondent’s product. I adopt all I have stated in my resolution of issue one supra in affirming the finding of the learned trial judge to the effect that the Appellant passed off its product as that of the Respondent. Issue two is resolved against the Appellant.

ISSUE THREE
This issue is whether the trial Court was right in awarding the sum of N10 Million as damages for infringement of the Respondent’s registered trade mark, RTM 40551 for “Conphamol and Device”.

The learned Appellant’s counsel submitted in paragraph 1.07 of the Appellant’s brief that the general damages awarded to the Respondent against the Appellant was in error because on the totality of the evidence the Respondent failed to establish that the Appellant infringed the Respondent’s trade mark by taking the mark in its entirety or by taking a substantial part of it or by colourably imitating it; and that the Appellant has passed off or caused to be passed off the defendant’s goods as and for the Respondent’s goods.

My resolution of issues one and two supra is to the effect that indeed the Respondent established by evidence led

before the trial Court that the Appellant infringed Respondent’s trade mark and passed off its paracetamol drug as that of the Respondent. The nature of this suit is commercial and evidence was led showing that the sale of the Respondent’s conphamol drug plunged after the entry of the Appellant’s infringing paracetamol tablet in to the market passed off as the product of the Respondent. The learned trial Judge took into consideration the circumstances of this case and assessed the general damages at N10million, because of the failure of the Appellant to cease and desist from infringing the Respondent’s trade mark even after it received the letter to that effect.

The Appellant in this appeal did not place any argument before this Court to convince me that the award is excessive in the circumstances of this case. I therefore have no basis to interfere with the trial Judge’s assessment and award of the said sum and I therefore decline to interfere. Rather I affirm a stamp of approval to the same and I resolve issue three against the Appellant.

Having resolved all the issues against the Appellant, it means that the appeal

lacks merit and it is dismissed by me. The Judgment of the trial Court delivered on the 20th November, 2007 in suit No. FHC/L/CS/163/96 is hereby affirmed by me. Cost of N100,000 awarded to the Respondent against the Appellant.

CROSS APPEAL
The notice of cross appeal was filed on the 28th January, 2007 and contained in pages 529 to 532 of Volume II of the record of appeal. It is against the part of the decision of the trial Court refusing Reliefs 2 and 3(b) of the Plaintiff/Cross Appellant’s Further amended statement of claim and it relied on three grounds to pray that this Court allow the cross-appeal and declare that the Plaintiff/Cross Appellant is the original author, inventor, designer and owner of the artistic work and the owner of the copyright in the Registered trade Mark RTM 40551.

The Cross-Appellant’s brief of argument jointly filed with its Respondent’s brief against the main appeal has been stated in the main appeal. The cross-appellant sole issue for determination in respect of the cross-appeal and the argument thereof are contained in paragraphs 4.4 to 5.0, pages 12 to 16 of the said brief. For guidance, the

issue distilled from the three grounds of cross appeal is whether the trial Court was right in refusing reliefs 2 and 3(b) of the cross-appellant’s further amended statement of claim on the infringement of the copyright in the cross-appellant’s registered trade mark, RTM 40551 for “Conphamol and Device”. In arguing the sole issue, learned counsel for the cross appellant relied on Section 1 of the Copy Right Act 1988 to submit that the Respondent’s registered trade mark RTM 40551 constitutes an artistic work within the meaning of Section 3 of the Act and therefore entitled to protection and ownership of the Respondent as the proprietor. That the pleadings of the cross appellant in paragraphs 4 and 5 of its further amended statement of claim and the evidence of PW1 which showed that the concept and salient features of the artistic work of the said trade mark for Conphamol and Device were conceived by the PW1 and translated in to film (Exhibit D and D1) by a commissioned paid artist for the Cross Appellant.

Further submitted that the reason given by the learned trial Judge for declaring Exhibits ‘D’ and

‘D1’, (the film of the design and receipt issued by the printer to PW1) of no evidential value was wrong in law. Learned counsel relied on the case of A. D. Vs. Fayose (2005) 10 NWLR (pt. 932) 151 to submit that what matters in a trial is the credibility of the evidence rather than the number of the witnesses called to testify.

The Cross Respondent’s brief of argument, confusingly tagged/titled “CROSS APPEAL RESPONDENT’S BRIEF OF ARGUMENT” was filed on the 3rd October, 2018 and deemed properly filed on the 16th April, 2019. The cross Respondent adopted the sole issue identified by the Cross Appellant for the determination of the cross-appeal. The learned cross respondent’s counsel referred to the pleadings of both parties before the trial Court and submitted that the pleadings and evidence of the cross Appellant regarding the ownership of the copy right could not help its case and that was why the trial Court rightly refused the Cross Appellant’s relief.

Learned counsel also submitted that the entire evidence adduced by the plaintiff/cross appellant before the trial Court in support of his claim of

copyright infringement to the artistic design it commissioned Abiodun Akinbobola & CO. to produce, cannot sustain its reliefs 2 and 3(b). Hence the learned trial Judge correctly found the documents were of no evidential value. He relied on the provisions of Sections 16 and 51 of the Copyright Act and the book “Atkins Court Forms” 2nd Edition vol. 12 pages 204 and 212 in support of his submissions.

He further argued that the author of the design not called to testify to establish the Cross Appellant’s title to the copyright in the artistic work of its registered trade mark RTM 40551, its logo or get up and package design, the entitlement of the cross appellant has not been established. It therefore cannot benefit from the Copyright Act.

In its Cross Appellant Reply brief filed on the 15th April, 2019, learned counsel relied on the provisions of Section 43 (a) and (b) of the Copyright Act to submit that it is presumed by operation of the said Section that copyright subsists in the artistic work comprising the Cross-Appellant’s registered trade mark RTM 40551 ‘Conphamol and Device’ including the design, colour

combination, salient features, get up and packaging. It is further presumed that the plaintiff/Cross Appellant is the copyright owner of the said artistic work. Therefore, the cross respondent had the burden to rebut the presumption created in favour of the cross Appellant by the section, by adducing credible evidence to the contrary. It was contended that the cross Respondent failed to do so. It was submitted that the learned trial Judge was wrong to ignore the presumption created in favour of the cross appellant and in consequent refused to grant reliefs 2 and 3(b) in its favour.

On the reasoning of the trial Court that the maker of Exhibits ‘D’ and ‘D1’ was not called to testify, it was submitted that it is not mandatory in all circumstance that only a maker of a document and no other can exclusively tender such document. That Section 83 of the Evidence Act 2011, contemplates variable number of exceptional circumstances under which the testimony of a maker of a document is dispensed with in tendering the document. That in so far as the document in issue is tendered by the intended recipient as PW1 is in this case, they are

admissible evidence and ought not to be discountenanced. He relied on the case of JOHN ALARIBE VS. CHIEF JERRY OKWUONU (2015) LPELR-24297 (CA) for support. The Court is urged to hold, inter alia, that based on the trial Court’s findings that the cross respondent infringed the Cross Appellant’s trade mark, it’s get up logo and design, it was wrong to refuse to grant reliefs 2 and 3(b) in favour of the cross Appellant.

RESOLUTION
My first consideration is Section 1(2)(a) and (b) of the Copyright Act referred to by the learned Cross-Appellant’s counsel, which provides:
1. (2) A literary, musical or artistic work shall not be eligible for copyright unless-
a. sufficient effort has been expended on making the work to give it an original character;
b. the work has been fixed in any definite medium of expression now known or later to be developed from which it can be perceived, reproduced or otherwise communicated either directly or with the aid of any machine or device.

The learned trial Judge rightly referred to the above section in in the Court’s judgment (see pages 461 to 462 of the record) to raise

the question whether Exhibits ‘B’ and ‘B1’ (‘B2’) qualify for copyright protection. These exhibits are copied in pages 241 to 244 of the record of appeal showing the trade mark/logo/packet design of the cross-appellant’s RTM 40511 of “Conphamol and Device”. While Exhibits ‘D’ and ‘D1’ copied in pages 247 and 248 is an invoice dated 14th April, 1980 issued by Abiodun Akinbobola & Co., being the cost of the art work for the design of conphamol pack and the positive film of the design, issued to the cross appellant. The learned trial Judge held on Exhibits ‘D’ and ‘D1’:
These documents are all of no evidential value since the designer of the artistic work was not called to testify before the Court.

However, I found on the record that the Cross-Appellant’s PW1 testified in page 183, vol. 1 of the record that:
The salient features were conceived by myself. I am the Chairman/Chief Executive of the Plaintiff Company. Upon conceiving the salient features of the trade mark, I commissioned a printer to translate it in to a film for me and produce

it into a film for the purpose of printing the package. The printer commissioned by me to produce the film is AKINBOBOLA and he produced the film for me. The printer gave me the film and the receipt.

PW1 then proceeded to describe the salient features of the design. See his evidence supra reproduced in the main appeal, from which I am of the view that PW1 qualifies as the maker of the design for his company’s conphamol drug. By his evidence, PW1 is in a position to answer all questions concerning the ownership of the trade mark design, which was the fact in issue rather than how the design was produced. I take note particularly of his evidence that he conceived the salient features of the trade mark as the chief executive of the cross appellant. It must be pointed out that the PW1 testified on the 9th April, 2003 when the Evidence Act 1990 was in operation and the amendment as regards computer generated documents in the 2011 Evidence Act was not in force.

The Court has to take into consideration the entire circumstances of the case in deciding the evidential value of a document. In this case, the evidence before the trial Court showed that the

PW1 commissioned the production of his conceived design into a film paid for by his company and a receipt issued to it. These are facts within the knowledge of PW1 upon which he can competently testify. Indeed, the trial Court found that the cross-appellant was the owner of the trade mark RTM 40511 “Conphamol and Design”, thus believing the evidence of PW1. He qualifies as the maker of Exhibits ‘D’ and ‘D1’ and I so hold. Consequently, I disagree with the learned trial Judge in that part of his decision with regards to the evidential value of Exhibits ‘D’ and ‘D1’. The lone issue in this cross appeal is resolved in favour of the Cross-Appellant.

In effect, the cross-appeal succeeds and it is allowed by me. The part of the trial Court’s decision refusing reliefs 2 and 3(b) sought by the cross-appellant is set aside by me. The said reliefs 2 and 3(b) are hereby granted by me. Parties shall bear their cost in this cross appeal.

UGOCHUKWU ANTHONY OGAKWU, J.C.A.: I read in draft the judgment just delivered by my Lord, BALKISU BELLO ALIYU, J.C.A. His Lordship has perspicaciously and most

admirably dealt with all the issues raised in the main appeal, with an eximious exhortation on the accidence of infringement of a registered trademark and passing off.

The leading judgment has further resolved the cross appeal in a manner that accords with my views. I have nothing further to add, beyond stating my concurrence with the leading judgment that the ineluctable conclusion is that the main appeal is devoid of merit while the cross appeal is immensely meritorious. According, I join in dismissing the main appeal and equally allow the cross appeal on the same terms as set out in the leading judgment. I abide by the order as to costs contained in the leading judgment.

EBIOWEI TOBI, J.C.A.: My learned brother BALKISU BELLO ALIYU, J.C.A. has afforded me the opportunity of reading in draft the lead judgment just delivered. I agree with the reasoning and conclusions reached therein. In the circumstance, I also dismiss the appeal as lacking in merit and allow the cross appeal within the context as contained in the lead judgment of my lord BALKISU BELLO ALIYU, J.C.A.

Appearances:

B. JOSEPH (JNR), ESQ. For Appellant(s)

EKPE ASUQUO, ESQ. For Respondent(s)