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D & S TRADING COMPANY LIMITED v. REMIA C. V. & ANOR (2019)

D & S TRADING COMPANY LIMITED v. REMIA C. V. & ANOR

(2019)LCN/13888(CA)

In The Court of Appeal of Nigeria

On Friday, the 12th day of April, 2019

CA/L/925/2016

 

 

Before Their Lordships

JOSEPH SHAGBAOR IKYEGHJustice of The Court of Appeal of Nigeria

UGOCHUKWU ANTHONY OGAKWUJustice of The Court of Appeal of Nigeria

TOBI EBIOWEIJustice of The Court of Appeal of Nigeria

Between

D & S TRADING COMPANY LIMITEDAppellant(s)

AND

1. REMIA C. V.
2. TRIXIBELLE LIMITEDRespondent(s)

RATIO

THE GENERAL PRACTICE OF TRADEMARK REGISTRATION IN NIGERIA

It is common knowledge and practice in Nigeria and across the world that issuance of an ACCEPTANCE LETTER by a Trade Marks Registry is preceded by a search of the records of the Registry to determine whether the proposed trade mark application is AVAILABLE and Registrable. PER EBIOWEI, J.C.A.

WHETHER OR NOT AN ORIGINAL REGISTRATION OF A TRADEMARK SHALL AFTER THE EXPIRATION OF SEVEN YEARS FROM THE DATE OF REGISTRATION BE TAKEN TO BE VALID UNLESS THE REGISTRATION WAS OBTAINED BY FRAUD

It is settled law that the original registration of a trade mark shall after the expiration of seven years from the date of registration be taken to be valid in all respects unless the registration was obtained by fraud or the trade mark offends against the provisions of Section 11 of the Act. See Section 14 of the Trade Marks Act Cap T13 Laws of the Federation of Nigeria 2004.
Section 11 of the Trade Marks Act Cap T13 Laws of the Federation of Nigeria 2004 provides as follows:-
It shall be lawful to register a trade mark or part of a trade mark
(a) Any matter the use of which would by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of justice or be contrary to law or morality or
(b) Any scandalous design. PER EBIOWEI, J.C.A.

TOBI EBIOWEI, J.C.A. (Delivering the Leading Judgment): On 20/5/14, the Appellant as Plaintiff in the lower Court (Federal High Court, Lagos Division) instituted an action against the Respondents for the infringement of its Trade Mark which it has registered since 1997 in class 29. The registered Trade Mark is ROSA. The Appellant also brought a claim for the passing off of its product. The action was predicated on the grounds that the Respondents in registering or bringing up products manufactured and produced by it, named Rosa Margarine, Rosa Mayonnaise and Rosa Elan Margarine in classes 29 and 30 is an infringement of the Trade Mark and the passing off of the products the Plaintiff had registered. The Respondent on the other hand denied the allegation in stating before the lower Court that the products are not meant for the Nigerian market and more so the Appellant does not have exclusive usage of the word Rosa. The Respondent as Defendants in the lower Court also brought a counter claim for the rectification of the certificate issued to the Appellant so as to conform with the Nice Classification of Goods.

After hearing the witnesses of the parties and the submissions of counsels, the lower Court presided over by M.B. Idris J. (as he then was) delivered his judgment dismissing the case of the Appellant (Plaintiff in the lower Court) and granted the Counter-Claim of the Respondent (Defendant in the lower Court). The judgment of the lower Court of 44 pages is found in pages 402-446 of the records. The lower Court took an excursion into the relevant statute and case law on the subject of trademark and passing off. Having done that, the lower Court held in page 28 of the judgment which is found in page 430 of the record thus:
“By Section 5 of the Trade Mark Act, Cap T13 Laws of the Federation of Nigeria 2014, an owner of a trade mark is entitled to the exclusive right to the use of that trade mark in relation to those goods. The Plaintiff right to use its own trade mark Rosa in relation to the goods in class 29 does not rank above the right of the Defendants. I hold the view that the Defendants are entitled to all the rights and privileges arising from ownership of the trademark ROSA MAYONNAISE, ROSA ELAN MARGARINE and ROSA MARGARINE.”

The lower Court earlier in pages 2427 of the judgment found in pages 426-429 of the record as held thus:
From the evidence, it is clear that the defendants own the trade marks ROSA ELAN MARGARINE, ROSA MARGARINE and ROSA MAYONNAISE which are registered in Classes 29 and 30 by the Trade Marks Registry. See Exhibits D1-D5. These trade marks were duly registered with the trade marks registry by the Defendants and the Plaintiff was afforded every procedural and statutory opportunity to voice its objections if any, to the registration of these trademarks, but the Plaintiff chose to do nothing. On 3rd September 2004, prior to the intervention by NAFDAC, the Defendants registration of ROSA MARGARINE in class 29 has been accepted by the trademarks registry, more than ten years ago and in fact, two years before the NAFDAC intervention. See Exhibit E.
In the same vein, the Defendants registration of ROSA MAYONNAISE in class 29 was accepted by the trade marks Registry on 31st March 2004. See Exhibit E, again the Defendants application for the registration of ROSA ELAN MARGARINE in class 30 was accepted on 27th October 2005. It is common knowledge and practice in Nigeria and across the world that issuance of an ACCEPTANCE LETTER by a Trade Marks Registry is preceded by a search of the records of the Registry to determine whether the proposed trade mark application is AVAILABLE and Registrable. On 21st May, 2009 in volume 2 number 2 of the Trade Marks Journal, the acceptance of the word mar ROSA ELAN MARGARINE in class 30 was published at page 292 of the Trade Mark Journal. The applications for ROSA MAYONNAISE in Class 29 and ROSA MARGARINE in Class 30 respectively, were also published by the Trade Marks Registry in the Journals between the years 2009 and 2010, See Exhibits D1 & D4.
The statutory period of two months within which interested parties may oppose the trademark application elapsed several years ago without any whimper of complaint or opposition from the Plaintiff. The Plaintiff chose to do nothing about the applications leading to the grant of the trade marks in issue.
At the expiration of the statutory period, the Defendants paid the appropriate fees and applied to the Registrar of Trademarks for the issuance of the certificates of registration of the marks in question. The trade marks registry issued the certificate for ROSA ELAN MARGARINE in class 30 in August 2013, see Exhibits D5.
It is settled law that the original registration of a trade mark shall after the expiration of seven years from the date of registration be taken to be valid in all respects unless the registration was obtained by fraud or the trade mark offends against the provisions of Section 11 of the Act. See Section 14 of the Trade Marks Act Cap T13 Laws of the Federation of Nigeria 2004.
Section 11 of the Trade Marks Act Cap T13 Laws of the Federation of Nigeria 2004 provides as follows:-
It shall be lawful to register a trade mark or part of a trade mark
(a) Any matter the use of which would by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of justice or be contrary to law or morality or
(b) Any scandalous design
Between 2004 and 2005 when the Defendants trademarks ROSA MAYONNAISE, ROSA ELAN MARGARINE and ROSA MARGARINE were registered in Classes 29 and 30 in 2014 when the Plaintiff instituted this suit, it is more than seven years. The Plaintiff has also failed to prove that the registrations were obtained by fraud or offend the provisions of Section 11 of the Act in that the marks are likely to deceive or cause confusion or the design scandalous. I hold that the registrations are valid in all respects.

His lordship was emphatic in the judgment that the mere registration of ROSA a generic word does not entitle the Appellant to the exclusive use of the word ROSA particularly when the specific product was not registered. The lower Court also was emboldened by the exceptions in Sections 7 & 8 of the Trade Mark Act. At page 33 of the judgment (page 435 of the records) his lordship held:
Although registration entitles a registered owner or proprietor to exclusive use of the mark in the class registered, I hold that the Plaintiff is not entitled to the exclusive use of ROSA in all classes and in respect of all ROSA products. The Plaintiffs exclusive use of the trade mark does not extend to the Defendants products like Rosa Mayonnaise, Rosa Margarine and Rosa Elan Margarine. Since the word ROSA is not an invented word, the Plaintiff is not entitled to an exclusive use of everything bearing ROSA either as a prefix or suffix. Furthermore, the exceptions provided in Sections 7 and 8 of the Trade Mark also restrict the Plaintiffs alleged entitlement to exclusivity in respect of ROSA products.

The Appellant dissatisfied with the judgment of the lower Court filed this appeal against the judgment. The notice of appeal of 5 grounds is contained in pages 447-452 of the records. The Appellants brief was settled by Peter Shobiye Esq., its counsel. This was filed on 18/10/16 but was deemed to be properly filed and served on 6/6/17. Appellants reply brief was filed on 22/6/17 but deemed on 16/1/19. Learned Counsel adopted both Appellants brief on 16/01/19. He raised 5 issues for determination distilled from the notice of appeal. The issues for determination are:
i. Whether the Appellants registered trademark ROSA is generic within the geographical territory of Nigeria as not to be worthy of exclusive protection within the geographical territorial confines of Nigeria with regards to food products,

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particularly of goods in Class 29.
ii. Whether trademark application ROSA MARGARINE and the registered ROSA ELAN MARGARINE both in Class 30 are in tandem with the nice classification of goods in Class 30.
iii. Whether an Acceptance Letter of a Trade Mark Application is a conclusive evidence of Trademark Registration within the provision of the Trade Marks Act CAP. T13 Laws of Federation of Nigeria 2004 and whether the Appellant had any prior knowledge of the Respondents applications at the Trade Marks Registry.
iv. Whether the Respondents trademark applications ROSA MAYONNAISE in Class 29, ROSA MARGARINE in Class 30 and registered ROSA ELAN MARGARINE in Class 30 are not confusingly similar or identical with the Appellants registered trademark ROSA in Class 29 in relation to the provisions of Sections 5 and 13 of the Trade Marks Act CAP. T13 Laws of Federation of Nigeria 2004.
v. Whether the decision of the lower Court is not against the weight of evidence and does not amount to a miscarriage of justice and whether from the circumstances of this case the lower Court was right to have granted the reliefs sought by the Respondents in their counter claim.

Addressing issue 1, counsel submitted relying on Sections 5(1) & 9(1) (2) of the Trade Mark Act that the word ROSA is registrable and that it is not a generic word within the territorial recognition of Nigeria as the word has no meaning in Nigeria. It is therefore not common and descriptive in Nigeria. Counsel referred to Ferodo Limited & Anor vs. Ibeto Industries Limited (2003-2007) 5 IPLR 136; The Procter and Gamble Company vs. Global Soap and Detergent Industries Ltd & Anor (2013) 2 NWLR 455.

The Respondents registered ROSA MARGARINE and ROSA ELAN MARGARINE in class 30 which is a wrong place to register the product. Both products should have been registered under class 29. It is the submission of counsel on issue 2, that the Respondent deliberately avoided class 29 because of the earlier registration of the Appellant in that class. This is confusingly a similar mark for food products contrary to Section 13 (1) of Trade Mark Act and the cases of Ferris George vs. John Walkden (1917-1976) 1 IPLR 17. The registration in class 30 of the ROSA MAGARINE and ROSA ELAN MARGARINE is not in tandem with the Nice Classification of goods in class 30. He submitted that this issue be resolved in favour of the Appellant.

On issue 3, it is the submission of counsel that letter of acceptance as in Exhibit E is not conclusive evidence of registration of a trade mark. This is his submission in relation to the registration of ROSA MAYONNAISE in class 29. Apart from this, there is no other evidence of registration. This works against the case of Respondents, counsel referred to Re Williams Crawford & Sons Application NO 1 (1917) 34 RPC 97; Kolex Merchantile Import Company vs. Alliance International Nig. Ltd (1977-1989) 2 IPLR 129; Dyktrade Limited vs. Omnia Nigeria Limited (1997-2003) 4 IPLR 267, Halsburys Laws of England (Fourth Edition) 167 and Sections 22, 58 & 59 of the Trade Mark Act. It is counsel submission on this point that there is no evidence that the trade mark of the Respondents was registered. This issue, counsel submitted should be resolve in favour of the Appellant.

The trade mark application of the Respondent for ROSA MAYONNAISE for class 29 and ROSA MARGARINE and ROSA ELAN MARGARINE in class 30 is confusingly similar in identity with the Appellants registered trade mark. There is nothing to show honestly by the Respondent that he seeks to distinguish its goods from that of the Appellant to avoid public deception. There is a likelihood of confusion in the course of trade as in Section 5 (2) of the Trade Mark Act and therefore the fourth issue should be resolved in favour of the Appellant. Counsel submitted refering to Ferodo Ltd vs. Ibeto Industries Ltd (supra); The Procter and Gamble Company vs. Global Soap and Detergent Industries Ltd (supra). On the authority of the above cases the key word is ROSA and the suffix of Margarine, Elan Margarine and Mayonnaise added to the name of ROSA definitely deceive the public. The get up registered by the Appellant is similar to that of the Respondent. It is his submission that like the others, this issue should be resolved in favour of the Appellant.

The decision of the lower Court counsel submitted, is against the weight of evidence and that the lower Court should not have granted the Respondents counter-claim. The Appellant from the evidence before the lower Court, counsel submitted, shows that the Appellant has registered the ROSA trade mark earlier, before the Respondents ROSA MARGARINE, ROSA ELAN MARGARINE and ROSA MAYONNAISE. The Respondents having not registered the trade mark has no locus to institute the counter claim. He referred to Zeneca Ltd & Ors vs. Jagal Pharma Ltd (2007) 3 CLRN 42. It is counsel’s final submission that this appeal be allowed and the decision of the lower Court be set aside.

The Respondents brief is settled by his counsel Okere Omotayo Esq. The brief was filed on 30/5/17 but deemed on 6/6/17. The brief was adopted on 16/01/19. Two issues were raised for determination:
1. Whether having regards to the tot