NUTRIFOODS GHANA LTD. v. TWELLIUM INDUSTRIES LTD.

NUTRIFOODS GHANA LTD. v. TWELLIUM INDUSTRIES LTD.

Law Cases and Principles

Judgement delivered on:18th December, 2023
Suit No.: GJ/0103/2023
Jurisdiction: Ghana
Judge: Kwasi Adjenim-Boateng J.

Counsel for Plaintiff: Eunas Kofi Eshun with Eric Vidzah holding brief for Isaac Emmil Osei-Bonsu.
Counsel for Defendant: Emmanuel Bright Atokoh with Rene Ashiboye.

Key Issues Discussed

This judgment considers the following principal issues:

  • Whether the Defendant’s Alpha Cracker biscuit packaging (Get-Up) is confusingly similar to the Plaintiff’s Royal King Cracker packaging.
  • Whether the Defendant’s packaging is likely to mislead or confuse consumers as to the origin of the products.
  • Whether the Defendant’s conduct amounts to unfair competition under the Protection Against Unfair Competition Act, 2000 (Act 589).
  • The legal principles governing passing off, product Get-Up, and the likelihood of consumer confusion.
  • The burden and standard of proof applicable in civil proceedings involving unfair competition claims.
  • The significance of similarities and differences in product packaging when determining whether confusion is likely.
  • The evidentiary value of survey reports, advertising materials, trademark registrations, and witness testimony in establishing unfair competition.
  • Whether the Plaintiff established, on a balance of probabilities, that the Defendant’s product infringed its rights or constituted unfair competition.

JUDGMENT

As a preliminary comment, I would like to commend the learned counsel for parties for their industry by their written addresses to the court which significantly and tremdously impacted on the judgment of the Court. The Court is grateful to the learned counsel.

It is respectfully and respectively stated in sections 1 and 2 of the Protection Against Unfair Competition Act, 2000 (Act 589) as follows:

1. Causing confusion with respect to another’s enterprise or its activities

(1) An act or a practice, in the course of industrial or commercial activities, that causes, or is likely to cause, confusion with respect to another person’s enterprise or its activities, in particular, the products or services offered by that enterprise, constitutes an act of unfair competition.

(2) Confusion may, in particular, be caused with respect to

  • (a) a trademark, whether registered or not,
  • (b) a trade name,
  • (c) a business identifier other than a trademark or trade name,
  • (d) the presentation of a product or service, or
  • (e) a celebrity or well-known fictional character.

2. Damaging another person’s goodwill or reputation

(1) An act or a practice in the course of industrial or commercial activities, that damages or is likely to damage the goodwill or reputation of another person’s enterprise or its activities constitutes an act of unfair competition, whether or not the act or practice causes confusion.

(2) Damaging another person’s goodwill or reputation may, in particular, result from the dilution of the goodwill or reputation attached to

  • (a) a trademark, whether registered or not,
  • (b) a trade name,
  • (c) a business identifier other than a trademark or trade name,
  • (d) the appearance of a product,
  • (e) the presentation of a product or service, or
  • (e) a celebrity or well-known fictional character.

Armed with and fortified by the provisions of the said Act 589 mentioned supra, the Plaintiff instituted the present action on the 31st of October, 2022 against the Defendant and subsequently pursuant to Order 16 rule 1(1) of the High Court Rules (Civil Procedure) Rules, 2004 (C.I. 47), filed an Amended Writ of Summons and Amended Statement of Claim on 10th November, 2022, for the reliefs endorsed thereon as follows:

(a) A declaration that the GET-UP of the Defendant’s ALPHA CRACKER Biscuit is a colourable imitation of the GET-UP of Plaintiff’s ROYAL KING CRACKER Biscuit intended to pass off the Defendant’s ALPHA CRACKER Biscuit as Plaintiff’s KING CRACKER Biscuit and therefore constitutes acts of unfair competition contrary to the provisions of the Protection Against Unfair Competition Act, 2000 (Act 589);

(b) An injunction to restrain the Defendant from practicing unfair competition against the Plaintiff by passing off its ALPHA CRACKER Biscuit as Plaintiff’s ROYAL KING CRACKER Biscuit by the use of a GET-UP that bears an uncanny resemblance to Plaintiff’s GET-UP;

(c) An order for the delivery up for destruction of all ALPHA CRACKER Biscuits in the possession of or under the custody of the Defendant or its agents;

(d) General Damages for the practice of unfair competition against the Plaintiff;

(e) Costs on full indemnity basis; and

(f) Any other orders the court deems fit.

  1. Upon service of the Plaintiff’s Writ of Summons and Statement of Claim on the Defendant, the Defendant entered appearance on the 11th of November, 2022 and followed it up with its Statement of Defence filed on 29th November, 2022, wherein the Defendant denied the Plaintiff’s claim and indicated that the Plaintiff is not entitled to its claim and at all.

B THE CASE OF THE PLAINTIFF

The case of the Plaintiff is that it is a company registered under the laws of Ghana and engaged in food manufacturing business in Ghana whilst the Defendant is also a company registered under the laws of Ghana and engaged in business of production of beverages among others. The Plaintiff is a manufacturer and distributor of biscuit under the brand name ROYAL KING CRACKER, a business it has engaged in since 2014, having registered its said ROYAL KING CRACKER as a name mark with the Registrar of Trademark.

According to the Plaintiff, it took pains, at the very inception; to design a unique GET-UP that would set its ROYAL KING CRACKER Biscuit apart from other Crackers on the market thus resulting in the design of the GET-UP it presently uses as packaging for its ROYAL KING CRACKER Biscuit. The Plaintiff stated that its GET-UP is set against red background with the name “King Cracker” written in white, and a bicolored band (blue and white) drawn in an arc shape beneath the name “King Cracker”. Beneath the name “King Cracker” and just by the side of the Bicoloured Band is a yellowish image of the cracker biscuits with a strawberry fruit inserted in the image and two strips of wheat by the biscuits. The Plaintiff contended that the GET-UP gives the Plaintiff’s King Cracker biscuit a distinctive look that distinguishes its brand from other brands on the market. The Plaintiff further contended that it went to great lengths to advertise and market its ROYAL KING CRACKER brand and has by reason of such advertisement and marketing acquired goodwill and reputation as the Crackers of choice among consumers. By reason of the extensive advertisement and goodwill, its unique GET-UP has come to be associated with its ROYAL KING CRACKER Biscuits.

The Plaintiff stated that sometime in October, 2022, its attention was drawn to the launch unto the market of a Biscuit manufactured by the Defendant under the name, ALPHA CRACKER. The Plaintiff further stated that it discovered that the Defendant’s ALPHA CRACKER Biscuit was dressed in a confusingly similar GET-UP as that used by the Plaintiff to sell its ROYAL KING CRACKER Biscuits, and that the Defendant’s GET-UP is nothing but a colourable imitation of the Plaintiff’s King Cracker Get-Up. The particulars of imitation thereof are reproduced hereunder as follows:

a. The Defendant’s GET-UP is set against the same red background as the Plaintiff’s GET-UP;

b. The name “ALPHA CRACKER” is written in the same white font as that of the Plaintiff and has the same font type as the Plaintiff as well;

c. The Defendant’s GET-UP also has a bicoloured arc-shaped band (blue and white) underneath the name ALPHA CRACKER, much the same as that of the Plaintiff and has images of biscuits set against the name ALPHA CRACKER and the bicoloured band is similar fashion to that of the Plaintiff;

d. The Defendant’s GET-UP also has two strips of wheat by the biscuits as it is with the Plaintiff’s GET-UP.

It is the case of the Plaintiff that the Defendant’s colourable imitation means that the unsuspecting customers of the Plaintiff are likely to mistake the Defendant’s ALPHA CRACKER Biscuits for the Plaintiff’s ROYAL KING CRACKER Biscuits (emphasis the court’s). The Plaintiff stated that by using a GET-UP that is eerily similar to that of the Plaintiff, the Defendant is intent on deceiving the public into thinking that the Defendant’s ALPHA CRACKER is the same as the Plaintiff’s ROYAL KING CRACKER.

It is the Plaintiff’s case that the sale by the Defendant of its ALPHA CRACKER branded Biscuit in a GET-UP that bears eerie resemblance to the Plaintiff’s GET-UP, constitutes acts of unfair competition under the Protection Against Unfair Competition Act, 2000 (Act 589). The Plaintiff particularized the acts of unfair competition as follows:

a. Misleading the public into believing the Defendant’s ALPHA CRACKER is the same as Plaintiff’s ROYAL KING CRACKER by the use of a getup that is confusingly similar to that of the Plaintiff.

b. Causing confusion in respect of the Plaintiff’s ROYAL KING CRACKER product by the use of its confusingly similar ALPHA CRACKER GET-UP that fails to distinguish the Defendant’s ALPHA CRACKER Biscuit from that of the Plaintiff’s ROYAL KING CRACKER BISCUIT.

c. Damaging the Plaintiff’s goodwill and reputation by the presentation of the Defendant’s GET-UP in a manner that fails to distinguish same from the Plaintiff’s GET-UP used for the packaging of the Plaintiff’s ROYAL KING CRACKER Biscuit.

d. Entering the same market space as the Plaintiff using a GET-UP that is so confusingly similar to the Plaintiff’s GET-UP as to give the impression that the Defendant’s ALPHA CRACKER is the same as the Plaintiff’s ROYAL KING CRACKER.

The Plaintiff contended that from all indications, the Defendant is intent on nationwide rollout of its ALPHA CRACKER Biscuit sold in a GET-UP that is eerily similar to the Plaintiff’s GET-UP used for its ROYAL KING CRACKER biscuits. The Plaintiff further contended that the Defendant will not halt the acts of unfair competition unless compelled by the coercive powers of this court, hence the Plaintiff’s suit for the said reliefs.

C. THE CASE OF THE DEFENDANT

The Defendant admitted that it is a company registered under the laws of Ghana and engaged in the business of the production of beverages among other things and stated that its line of business includes the manufacturing of biscuits. According to the Defendant, the Plaintiff’s said ROYAL KING CRACKER Biscuits is not of such a distinct design to set it apart from other products on the marked. Save that the name KING CRACKER is written in white on the GET-UP, the Defendant denies the description of the Plaintiff’s product contained in paragraph 6 of its Amended Statement of Claim.

The Defendant, in response to paragraph 7 of the Plaintiff’s Amended Statement of Claim, stated that the strawberry fruit inserted in the yellowish image of the cracker biscuits is one of the many features that clearly distinguish the Plaintiff’s KING CRACKER biscuits from the Defendant’s ALPHA CRACKER biscuits. The Defendant stated that its product under the brand name “Alpha Cracker” is remarkably distinct from the Plaintiff’s product under the name “King Cracker”.

The Defendant further stated in response to paragraph 1 of the Plaintiff’s Amended Statement of Claim that the Defendant, has at great cost, also advertised its said product to the general public and that its “Alpha Cracker” biscuit is remarkably distinct not only in name from the Plaintiff’s said “King Cracker” biscuit but others such as Piccadilly Finest Crackers, Simply Good Cream Cracker, CBL Munchee Any Time Crackers and Jacob’s Cream Cracker. According to the Defendant, the GET-UP of its “ALPHA CRACKER” biscuit is clearly dissimilar from the Plaintiff’s GET-UP of its “KING CRACKER” biscuit and thus presents no confusion whatsoever in the minds of members of the public. It is the case of the Defendant that it applied for the registration of Trademark and the said application has been accepted.

The Defendant averred that it commenced the design of fliers and other forms of advertisement and successfully launched the said “ALPHA CRACKER” biscuit on the market sometime on or about 18th October, 2022.

In response to clauses (a) to (d) of paragraph 12 of the Plaintiff’s Amended Statement of Claim, the Defendant stated that numerous features clearly distinguish its “ALPHA CRACKER” biscuit from the Plaintiff’s “KING CRACKER” biscuit and cannot be said to have been imitated. The Defendant stated the Particulars of Distinction as reproduced below:

i. Whilst Plaintiff’s King Cracker is set against a dark-red background and not a red background as claimed by the Plaintiff, the Defendant’s Alpha Cracker is set against a bright red background as is characterized by other Cracker biscuits on the market such as Dexter Cracker, Cream Cracker etc.

ii. The names “ALPHA CRACKER” and “KING CRACKER” appear in a white colour on their respective wrappings or packaging, however, the Defendant’s name, ALPHA CRACKER appears in a font style and size clearly dissimilar to the Plaintiff’s brand, KING CRACKER.

iii. Defendant’s “Alpha Cracker” is set on a bi-coloured strand in blue and yellow whilst the Plaintiff’s arc-shaped band appears in blue, gold and white, and not just blue and white as claimed by Plaintiff.

iv. Plaintiff’s GET-UP of its “KING CRACKER” biscuit is laced at both ends in a gold coloured strip. Defendant’s GET-UP of its “ALPHA CRACKER” has no such feature.

v. Defendant has the brand name of producers of the “ALPHA CRACKER” biscuit as McBerry printed on the top and bottom left side of the Alpha Cracker biscuit, a feature that clearly distinguishes the Defendant’s said product from the Plaintiff’s as the Plaintiff does not have any such feature on its “King Cracker” biscuit.

vi. The “ALPHA CRACKER” biscuit packaging appears in an unmistaken square shape whilst the Plaintiff’s KING CRACKER biscuit dress-up appears in rectangular shape.

vii. The size of the Defendant’s “Alpha Cracker” is bigger in size as compared with the Plaintiff’s package.

viii. Whilst the Defendant has four biscuits with many perforations on its package to reflect the content of the package, the Plaintiff has none of such save two biscuits with the picture of a half sliced tomatoes and which also appears on the top right corner of the label “King Cracker”.

ix. Immediately on top of the four biscuits on the Defendant’s Alpha Cracker wrapper is a yellow background in a rectangular shape with the inscription “Rich & Light Crispy Cracker”. The Plaintiff has nothing similar to this on its Royal King Cracker biscuit wrapper or packaging.

x. Plaintiff has its supposed bicoloured arc-shaped (which in fact is multi-coloured contrary to bicoloured) strand on all sides of its Royal King Cracker. The Defendant does not have its bi-coloured strands on all the sides of its Alpha Cracker biscuit.

The Defendant asserted that its biscuit causes no confusion in the minds of the public as its product appears in a size completely bigger and different from the Plaintiff’s product and likewise the box packaging. It is the case of the Defendant that members of the public can, at the point of purchase, clearly distinguish Defendant’s “ALPHA CRACKER” biscuit from the Plaintiff’s “ROYAL KING CRACKER” biscuit as the sizes and colour are dissimilar.

The Defendant denied the Plaintiff’s claim that the Defendant has presented its ALPHA CRACKER biscuit in a manner or way that will confuse the consuming public and indicated that the consumers at the point of purchase are presented with a product (“ALPHA CRACKER” biscuit) completely distinctive from the Plaintiff’s product (“ROYAL KING CRACKER” biscuit).

The Defendant asserted that the colourable red design of the Plaintiff’s product (“ROYAL KING CRACKER” biscuit) is neither unique nor special as there exist other cracker biscuits on the market which also appear in a colourable red design.

The Defendant further asserted that by its suit, the Plaintiff is seeking to stifle the production and distribution of any product that in its view competes with its product and thereby stifle fair competition which promotes healthy growth in every economy and ensures consumer protection.

The Defendant contended that since commencing production and successfully launching its Alpha Cracker biscuit onto the market on or about the 18th of October, 2022, its said rollout has not diverted business away from the Plaintiff in any way as both products are clearly dissimilar and have till date caused no confusion or will ever cause any confusion in the minds of the consuming public.

It is the case of the Defendant that it was after a successful launch and distribution of the Defendant’s Alpha Cracker biscuit across the country that the Plaintiff felt threatened, hence the Plaintiff’s instant suit.

The Defendant concluded that if the Plaintiff’s claims are granted, the Defendant would suffer grave injustice in view of the acquisition of production materials running into millions of cedis.

D. ISSUES TO BE TRIED

6. On the 21st of December, 2022, the Honourable Court, differently constituted, set down the issues contained in the Plaintiff’s Application for Directions filed on 15th December, 2022 as issues for determination at trial. By setting down the issues filed on 15th December, 2022, the Application for Directions filed by the Plaintiff on 14th December, 2022, was deemed struck out. The issues set down by the Court are as follows:

(a) Whether or not the Get-Up of the Defendant’s Alpha Cracker biscuit is confusingly similar to the Get-Up of the Plaintiff’s Royal King Cracker;

(b) Whether or not the Defendant’s acts of manufacturing, producing, marketing, and distribution of their Alpha Cracker biscuit in a Get-Up confusingly similar to that of the Plaintiff constitutes acts of unfair competition under the Protection Against Unfair Competition Act, 2000 (Act 589); and

(c) Whether or not the Plaintiff is entitled to its reliefs.

See Armah v. Hydrofoam Estates (Gh) Ltd. [2013–2014] 1 SCGLR 551 @ 560, where it was held that:

“At the summons for direction, the trial judge is required to identify the core issue/s for trial. He does this with the aid of the lawyers but he/she takes sole responsibility for whatever decision he/she takes. The judge is required to examine the pleadings carefully and to determine what issue/s would completely determine the case before him/her…”

E. BURDEN AND STANDARD OF PROOF IN CIVIL CASES

7. In civil cases, the general rule is that the burden of proof rests upon the party, whether Plaintiff or Defendant, who substantially asserts the affirmative of the issue.

7.1

Section 14 of the Evidence Decree succinctly supports the allocation of burden of proof in civil cases. It provides as follows:

“Except as otherwise provided by law, unless and until it is shifted a party has the burden of persuasion as to each fact the existence or non-existence of which is essential to the claim or defence he is asserting.”

7.2

Under section 11(4) of NRCD 323, a party discharges the burden of producing evidence when the party produces:

“…sufficient evidence so that on all the evidence a reasonable mind could conclude that the existence of the fact was more probable than its nonexistence.”

7.3

In explaining the principles relating to the duty to produce evidence, the learned S.A. Brobbey states at page 31 of his book Essentials of the Ghana Law of Evidence thus:

“…This literally means ‘The proof lies upon him who affirms, not on him who denies, since by the nature of things, he who denies a fact cannot produce proof…'”

The learned jurist added:

“…Where the Plaintiff makes a positive assertion at the start of the trial, he bears the legal burden. At the same time, he bears the evidential burden to adduce evidence at the start of the trial…”

In the case of Faibi v. State Hotels Ltd. [1968] GLR 471, it was held thus:

“…Onus in law lay upon the party who would lose if no evidence was led in the case; and where some evidence had been led it lay on the party who would lose if no further evidence was led…”

In the case of Lamptey alias Nkpa v. Fanyie & Others [1989–90] 1 GLR 286 (SC), the Supreme Court in Holding 1 thereof stated that:

“…on general principles it was the duty of a Plaintiff to prove his case. However, when on a particular issue he had led some evidence, then the burden would shift to the Defendant to lead sufficient evidence to tip the scale in his favour. The Defendant would only win if he was able to do that…”

See also Zabrama v. Segbedzi (1991) 2 GLR 221.

In Ackah v. Pergah Transport (2010) SCGLR 728 @ 736, where Adinyira JSC, in speaking for the apex court in its unanimous decision, reiterated the legal position in the following words:

“It is a basic principle of the law of evidence that a party who bears the burden of proof is to produce the required evidence of facts in issue that has the quality of credibility, short of which his claim must fail….”

In a similar fashion, Georgina Wood CJ in Poku v. Poku (2008) 18 MLRG @ 30 stated as follows:

“Generally, the burden of proof is therefore on the party asserting the facts with the evidential burden shifting as the case demands.”

On the issue of who bears the evidential burden, see the dictum in Sagoe v. SSNIT (2011) 30 GMJ 133, where he stated as follows:

“The party who asserts has the incidence of the legal burden.”

On the other hand, the standard of proof in civil cases is on the balance of probabilities. This is supported by the combined effects of sections 12(1) and 12(2) of the Evidence Decree, 1975 (NRCD 323).

(a) Section 12(1) provides that:

“Except as otherwise provided by law, the burden of persuasion requires proof by a preponderance of the probabilities.”

(b) Preponderance of Probabilities is defined in section 12(2) to mean:

“that degree of certainty of belief in the mind of the tribunal of fact or the court by which it is convinced that the existence of a fact is more probable than its non-existence.”

Where the Plaintiff has been able to lead sufficient evidence in support of his case, then it behoves upon the Defendant to lead sufficient evidence in rebuttal; otherwise, the Defendant risks being ruled against on that issue or issues.

It is also trite that in all civil matters, the standard of proof is proof on the balance of probabilities and it is for this reason that in Poku v. Poku (supra), Georgina Wood CJ stated as follows:

“The standard of degree must also be preponderance of the probabilities.”

See also Serwah v. Kesse (1960) GLR 228.

F. SUMMARY OF EVIDENCE

9. The Plaintiff testified through one Mavis Amega, the Compliance Manager of the Plaintiff company. The Plaintiff tendered the following exhibits in evidence:

i. Exhibit “A” – A copy of Trademark Certificate;

ii. Exhibit “B” – A copy of sample of Plaintiff’s Get-Up;

iii. Exhibit “C” series – Copies of series of images showing advertisements made by the Plaintiff, including a pen drive containing adverts run on television by the Plaintiff as part of Exhibit “C” series;

iv. Exhibit “D” series – Copies of series of invoices showing supplies made to various parts of the country since 2014;

v. Exhibit “E” – A copy of the Royal King Cracker Facebook Page;

vi. Exhibit “F” series – Copies of websites with the Plaintiff’s Royal King Cracker biscuits listed for sale;

vii. Exhibit “G” – A copy of Survey Report;

viii. Exhibit “H” – A copy of the Get-Up of the Defendant’s Alpha Cracker biscuit;

ix. Exhibit “J” – A copy of a picture showing both products in a shop;

x. Exhibit “K” series – A copy each of a picture of an advert and a pen drive containing the video published on the Defendant’s Instagram Page.

10. The Defendant also testified through one Luke Paa Mensah Tetteh of Spintex Road, Accra and also called one witness, one Alhaji Mustapha Mohammed of Nima, Accra, a distributor of products of the Defendant Company. The Defendant, through its witness, tendered the following exhibits in evidence:

i. Exhibit “1” series – Copies of registration processes and fliers for advertisements made by the Defendant company to market the new product;

ii. Exhibit “2” series – Copies of samples of wrappers/packaging of some other biscuits on the market including Piccadily Finest Crackers, CBL Munchee Any Time Crackers, Parle Simply Good Cream Cracker, Balona Cream Cracker etc.;

iii. Exhibit “3” series – Copies of wrappers of Piccadily Cracker, Simply Good Parle Cream Cracker Original, CBL Munchee Any Time Crackers and Balona Cream Cracker (tendered through Plaintiff’s witness);

iv. Exhibit “4” – A copy of Trademark Certificate for McBerry Alpha Cracker attached to the supplementary witness statement filed by the said Luke Paa Mensah Tetteh;

v. Exhibit “4A” – A copy of the acceptance letter for registration of trademark to the Defendant by the Registrar of Trademarks.

F. DISCUSSION OF THE ISSUES IN THE LIGHT OF THE PLEADINGS AND THE EVIDENCE ADDUCED AT THE TRIAL

11. In view of the recent decision of the Supreme Court, per Pwamang JSC in Dalex Finance and Leasing Company Ltd. v. Ebenezer Denzel Amanor & 2 Ors. (unreported), Civil Appeal No. J24/02/2021 of 14th April, 2021, I do not intend to discuss issue (3) as set down by the Court on the said 21st December, 2022, which is:

“Whether or not the Plaintiff is entitled to its reliefs.”

In the said Dalex Finance and Leasing Company Ltd., Pwamang JSC delivered himself as follows:

“…We take this opportunity to deprecate the emerging wrong practice where in a civil case ‘whether or not the Plaintiff is entitled to the claim’ is put down as an issue for trial. The whole trial is aimed at determining whether or not the Plaintiff is entitled to the reliefs he seeks, so how can that become a distinct issue?…”

He continued by stating as follows:

“…The practice is a product of lazy work and a stop must be put to it… This is not the first time this reminder is being given by this Court.”

Fortified by the dictum of Pwamang JSC supra, I hereby strike out issue (3) as incompetent.

12. Having read the entire pleadings of the parties and having listened to the evidence adduced in this matter and having thoroughly assessed the record of proceedings, it is my opinion that the only issue in this case is as I have set down hereto, the resolution whereof, it is my respectful view, will help determine this dispute completely:

(a) Whether or not the Get-Up and the acts of manufacturing, producing, marketing, and distribution of the Defendant’s Alpha Cracker biscuit are confusingly similar to the Get-Up of the Plaintiff’s Royal King Cracker and thereby constitute acts of unfair competition under the Protection Against Unfair Competition Act, 2000 (Act 589).

13. My decision not to discuss all the issues as set down by the Court differently constituted is supported by the Supreme Court decision in the case of Mrs. Vicentia Mensah v. Numo Adjei Kwanko II, Civil Appeal No. J4/17/2016 dated 14th June, 2016, where the Supreme Court, speaking through Anin-Yeboah JSC (as he then was), stated at page 7 of the judgment as follows:

“…It must, however, be made clear that a court of law is not bound to consider every conceivable issue arising from the pleadings and the evidence if, in its opinion, few issues could legally dispose of the case in accordance with the law…”

14. Now I proceed to discuss the issue as set down hereto.

In view of the denial by the Defendant of the Plaintiff’s claim, in order for the Plaintiff to succeed in its action against the Defendant, the Plaintiff ought to prove on the balance of probabilities that the Defendant’s Alpha Cracker biscuit, which the Plaintiff claims is confusingly similar to the Plaintiff’s Royal King Cracker, as set out in the Protection Against Unfair Competition Act, 2000 (Act 589), is indeed similar and confusing to the consuming public.

Thus, in Reddaway v. Benham [1896] AC 199, a case referred to the Court by learned Counsel for the Plaintiff in his written address, among other authorities, the House of Lords held that:

“The principle of law may be very plainly stated, and that is nobody has the right to present his goods as the goods of somebody else.”

See also Appenteng Mensah & Co. Ltd. v. Alpro Industrial Products Ltd. [1971] 2 GLR 79; and Prophetess Thane II v. Prophet George [1977] 1 GLR 467 @ 473, where Apaloo J.A., citing Lord Parker in A.G. Spalding v. Gamage Ltd. [1914–15] All ER 147 at 149, stated:

“Nobody has any right to represent his goods as the goods of somebody else.”

However, as stated above, for the Plaintiff to succeed in this suit, the Plaintiff must prove that the Defendant’s Alpha Cracker biscuit is likely to lead the public to believe that the said Alpha Cracker biscuit is that of the Plaintiff’s Royal King Cracker biscuits.

In the South African case of Plascon-Evans Paints (TVL) Ltd. v. Van Riebeck Paints (Pty) Ltd. (53/84) [1984] ZASCA 51; [1984] 2 All SA 366; 1984 (3) SA 623; 1984 (3) SA 620 (21 May 1984), the Supreme Court of South Africa held that:

“In an infringement action the onus is on the Plaintiff to show the probability or likelihood of deception or confusion. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the Defendant’s mark is used are the goods of the proprietor of the registered mark, i.e. the Plaintiff, or that there is a material connection between the Defendant’s goods and the proprietor of the registered mark; it is enough for the Plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such connection.”

See also the authorities referred to by learned Counsel for the Defendant, which, though of persuasive effect, are relevant to the determination of this case: Warnink v. Townend (1980) RPC 31; Consorzio Del Prosciutto Di Parma v. Marks & Spencer Plc [1991] RPC 351 CA @ 417; and Reckitt & Coleman Products Ltd. v. Borden Inc. [1990] 1 All ER 873.

From the reading and review of the Plaintiff’s case, I understand the Plaintiff’s complaint against the Defendant to be a breach of sections 1(1), 1(2)(c) & (d), 2(1), and 2(2)(c), (d) & (e) of the Protection Against Unfair Competition Act, 2000 (Act 589). See the said provisions in the introduction to this judgment.

15. The Plaintiff told the Court that it is primarily engaged in the business of manufacturing, marketing and distribution of a biscuit under the brand name ROYAL KING CRACKER, having by painstaking efforts designed a unique Get-Up that would distinguish its said Royal King Cracker biscuit from other biscuits on the market. The Plaintiff further told the Court that sometime in October 2022, its suppliers and customers drew its attention to a biscuit under the brand name “ALPHA CRACKER” manufactured by the Defendant, and asserted that the said Alpha Cracker biscuit was similar in packaging to that of the Plaintiff’s Royal King Cracker and that it was difficult to distinguish one from the other (emphasis is the Court’s). The Plaintiff told the court that immediately its attention was drawn to the Defendant’s ALPHA CRACKER biscuit, it took steps to procure a sample of the said ALPHA CRACKER biscuit where it discovered that the Defendant’s ALPHA CRACKER biscuit was dressed in a confusingly similar get-up” as that of the Plaintiff’s ROYAL KING CRACKER biscuit. See exhibit “H“. The Plaintiff further told the court that its Royal King Cracker is unique and is set against a predominantly red background. One of the most notable and distinguishable features of the Plaintiff’s Get-Up is that the name ROYAL KING CRACKER is written in white across the packaging. Directly beneath the name KING CRACKER is a band of white, blue and gold. At the extreme right of the band are pieces of biscuits set over two strands of wheat grains, with the biscuit and grains being yellowish in colour. The combination of the name, band, biscuits and wheat grains in the colours and shapes that they appear are repeated in the same fashion on three sides of the packaging, all of which the Plaintiff told the court makes its product unique and different from any get-up designs on the market at the time the Plaintiff introduced its ROYAL KING CRACKER biscuit onto the market.

16. The Defendant, who testified through the said Luke Paa Mensah Tetteh and also called one witness, Alhaji Mustapha Mohammed, vehemently denied the Plaintiff’s claim that its Alpha Cracker biscuit is an imitation of the Plaintiff’s Royal King Cracker biscuit. The Defendant also told the court that it is not true that the Defendant has in any way imitated the Plaintiff’s Royal King Cracker biscuit and that it is selling its Alpha Cracker biscuit as though it were Plaintiff’s Royal King Cracker biscuit. During cross examination of the Plaintiff, representative, the Plaintiff admitted that the Plaintiff does not have monopoly over colours.

Below is what transpired during cross examination of the Plaintiff’s representative by Counsel for the Defendant on 10th May, 2023:

Q. You would admit that before Royal King Cracker came onto the market, there were other cracker biscuits, not so?

A. There may be.

Q. And you have heard of Cream Cracker before, not so?

A. Yes my lord.

Q. And you would agree that Cream Cracker biscuit was in existence before Plaintiff’s King Cracker biscuit?

A. Yes my lord with differentiation.

Q. And you have as well known of Piccadily Finest Cracker biscuit, not so?

A. Yes my lord and also not similar to Royal King Cracker.

Q. And you are equally aware of Munchee Anytime Cracker biscuit, not so?

A. Yes my lord.

Q. You are also aware of Parle Simply God Cream Cracker biscuit?

A. Yes my lord, also not similar to Royal King Cracker.

Q. And it is also true that you know of Balona Cream Cracker Biscuit, not so?

A. My lord I am not aware of Balona.

Q. You mean you have never seen Balona Cream Cracker biscuit on the market before?

A. No my lord.

Q. I am putting it to Balona Cream Cracker biscuit exists on the market?

A. Noted my lord.

Q. You would agree with me that most of the cracker biscuits on the market including those I have earlier mentioned, except with Cream Cracker biscuit, have a red background packaging, not so?

A. Yes my lord and I am aware we do not have monopoly over the colour red.

Q. And even with this red colour, you would admit that there are different shades of the red colour, not so?

A. Yes my lord.

Q. You would also admit that Royal King Cracker biscuit and Mcberry Alpha Cracker biscuit have red colour packaging?

A. Yes my lord, we do not have monopoly over the red colour.

According to the Defendant, to accede to the Plaintiff’s claim would stifle their business and enable the Plaintiff gain monopoly much to the detriment of the consuming public who have the right to choose the products they want to buy. The Defendant told the court that its Alpha Cracker biscuit is remarkably distinct from other cracker biscuits on the market including the Plaintiff’s Royal King Cracker biscuits. The Defendant further stated that there are many cracker biscuits that have a red colour packaging. However, even within the red colour there are different shades with different colour codes. The Defendant tendered in evidence as exhibit 2 series samples of wrappers/packaging of some other cracker biscuits on the market including Piccadilly Finest Crackers, CBL Munchee Any Time Crackers, Parle Simply Good Cream Cracker, Balona Cream Cracker etc. According to the Defendant apart from its name, Alpha Cracker, which is clearly distinct and does not in any way come close to the Plaintiff’s Royal King Cracker, other features on the Alpha Cracker biscuit include the list of ingredients, a logo, portion for production date – there is a batch number on a white background, company address is in white writings, gramage, expiry date, blue and yellow stripe, the dominant colour is pure red whilst King Cracker has a Vodafone or dull red colour. In addition, other features on the Alpha Cracker biscuit, among others, include, a bar code at the side, four perforated biscuits with a yellow background on top with the writing “Rich and Light Crispy” and underneath are al in white with Ghana Flag in a white circle, it has a premium logo on a strand made up of a yellow and blue colours and touching one end of one of the biscuits on the packaging. The fins at both ends of the packaging are all red with brand name “Alpha Cracker” in white on the left side of the fin. It also has McBerry logo at the bottom and all three sides of the fin; the name “Alpha Cracker” has the left part of the “A” in gold and the size of Alpha Cracker biscuit is far bigger than the “Plaintiff’s Royal King Cracker” and the biscuits are in a square form and have more perforations as compared to the Plaintiff’s Royal King Cracker biscuit.

The Defendant’s said witness, Alhaji Mustapha Mohammed, told the court that he is a key distributor of products of Twellium Industrial Company Ltd., the Defendant herein. The witness told the court, he also distributes for other companies such as Ramni Company, who also import candies, Wasaj Company who are also into candies. According to the witness he distributes said companies products beyond Ghana to neighbouring countries. The witness told the court that his key distribution shop is at Okaishie-Makola, Accra and that he has been in the distribution business for about 2 years. The witness told the court that he has seen the Plaintiff’s King Cracker biscuit and that of the Defendant’s Alpha Cracker biscuits and they are diametrically not the same and can never be and do not create any confusion in the market as regards semblance because according to him, the features on the packaging of both products are remarkably revealing to everyone who comes to the market. The witness stated that since the Alpha Cracker biscuit was introduced to the market sometime in or about October, 2022, he has never heard any complaints from any customer that he or she was confused between the Alpha Cracker biscuit and the Royal King Cracker biscuit. The witness further stated that when customers come to the market, they come with specific product name and not colour or design. To him, customers do not buy things with colours. He said the customers buy whatever they need by name. For example, “I need 20 boxes or cartons of Alpha Cracker biscuit or 20 boxes of Royal King Cracker biscuit or any other biscuits”.

The Defendant having denied the Plaintiff’s claim, per the authorities cited supra, the burden is now cast upon the Plaintiff to lead cogent evidence in support of its claim, failing which he risks being ruled against. As stated above, the Plaintiff mounted the box and testified per its representative, one Mavis Amega, the Plaintiff’s Tax and Compliance Manager without calling any other witness, even though the Plaintiff had claimed that its suppliers and customers, drew the Plaintiff’s attention to a biscuit under the brand name ALPHA CRACKER manufactured by the Defendant which the sad suppliers and customers told the Plaintiff was similar in packaging to that of the Plaintiff’s Royal King Cracker and that it was difficult to distinguish one from the other. The Plaintiff ought to have called the said suppliers and customers who claimed that it was difficult to distinguish the Defendant’s Alpha Cracker biscuits from that of the Plaintiff’s Royal King Cracker biscuit, and not having done so, is fatal to the Plaintiff’s case.

The law is that where a party makes a claim and is denied by his adversary, he does not just mount the box and repeat the claim which has been denied. In its Statement of Defence, the Defendant denied the Plaintiff’s claim and therefore put the Plaintiff to proof of the allegations that the Defendant’s Alpha Cracker biscuit is confusingly similar to that of the Plaintiff. However, the Plaintiff per its said representative just mounted the box and tendered her witness statement as her evidence in chief, she only repeated the averments contained in the Plaintiff’s statement of claim which has been denied by the Defendant. This is not acceptable in proof of the averments denied by the Defendant.

In Majolagbe vrs. Larbi (1959) GLR 190-195, it was held that:

“…Proof, in law is establishment of fact by proper legal means; in other words the establishment of an averment by admissible evidence. Where a party makes an averment, and his averment is denied, he is unlikely to be held by the court to have sufficiently proved that averment by his merely going into the witness-box and repeating the averment on oath, if he does not adduce corroborative evidence which (if his averment is true) is certain to exist …”.

His Lordship continued:

“. Proof in law is the establishment of facts by proper legal means. Where a party makes an averment capable of proof in some positive way, e.g. by producing documents, description of things, reference to other facts, instances, or circumstances, and his averment is denied, he does not prove it by merely going into the witness-box and repeating that averment on oath, or having it repeated on oath by his witness. He proves it by producing other evidence of facts and circumstances, from which the Court can be satisfied that what he avers is true…”

See also the dictum of the Supreme Court in the case of Klah v. Phoenix Insurance Co. Ltd. [2012] SCGLR 139. In that case, it was held that;

“Where a party makes as averment at capable of proof in some positive way e.g. by producing documents, description of things, reference to other facts, instances and his averment is denies, eh does not prove it by merely going into the witness box and repeating that averment on oath or having it repeated on oath by his witness. He proves it by producing other evidence of facts and circumstances from which the court can satisfy itself that what he avers is true”.

See also OKUDZETO ABLAKWA (NO.2) v. ATTORNEY-GENERAL & ANOR [2012] 2 SCGLR 845 @ 852 holding (4) regarding what is expected of a person who goes to court and makes an allegation).

See also West African Enterprise Ltd. vrs. Western Hardwood Enterprises Ltd.(1995-1996) 1 GLR 153, CA.

It is the considered opinion of the court that the Plaintiff failed to call any of the suppliers and/or customers because it seriously did not believe that the public (suppliers and customers) are confused between the Plaintiff’s Royal King Cracker biscuits and that of the Defendant’s Alpha Cracker biscuits. In fact the Plaintiff’s allegation of such confusion, with respect, is borne out of fear of competition. And neither was the Plaintiff able to produce any evidence to the effect that the defendant’s Alpha Cracker Biscuit has in any way damaged the Plaintiff’s goodwill and or reputation. In the absence of any contrary evidence from the Plaintiff and or its suppliers and customers, I will accept the Defendant’s defence that the Defendant’s Alpha Cracker biscuit is distinct and different from the Plaintiff’s Royal King Cracker biscuit.

Again, from the images of the Plaintiff’s Royal King Cracker Biscuit and the Defendant’s Alpha Cracker Biscuit as shown in Exhibits H,J, 1series and 2series I find that the two products are distinct and different from each other.

CONCLUSION

In the light of the foregoing analysis of the law and review of the evidence placed before this court, I hold that the Plaintiff’s action fails and is accordingly not entitled to the reliefs endorsed on the writ of summons. In conclusion, the court dismisses the claims of the Plaintiff as unproven.

I award Costs: GHC100,000.00 against the Plaintiff in favour of the Defendant.

H/L KWASI ADJENIM-BOATENG (J)
(JUSTICE OF THE HIGH COURT)