Law Cases and Principles

Beecham Group Plc. v. General Nutrition Ltd.

Federal High Court
Ruling delivered on: Tuesday, April 25, 1997
Citation: 39 NIPJD [FHC. 1997] L/1A/1990
Suit No.: FHC/L/1A/90
Jurisdiction: Nigeria

Ruling delivered by: Odunowo J.

Appearances:

  • Mr. A. F. Nwokedi — for the Appellant
  • Mrs. A. Akpofure-Idris — for the Respondent

BETWEEN:

Beecham Group Plc. …………………………….. Appellant
v.
General Nutrition Ltd …………………………….. Respondent

Trademark Registration in Nigeria, Registration and User of Trademarks, Long and Extensive User, Notice of Opposition, Duty of the Registrar of Trademarks to consider – Section 23(4)(b), Trade Marks Act, 1965—The court considered whether the Registrar’s dismissal of the Appellant’s notice of opposition to the registration of the Respondent’s trademark “Extravite” Application No. 40028 in class 5 be set aside; Whether the Registrar erred in law in holding that trademark “Extravite” No. 8638 had lapsed and as such was removed from the register of trademarks for non-payment of renewal fees. Whether the Registrar erred in law when he declined to consider and give effect to the evidence of extensive use of the trade mark EXTRAVITE tendered by the Appellant despite the provisions of section 23(4)(b) of the Trade Marks Act 1965.

Background:

  • Beecham Group Plc. (UK) claimed rights to the trademark “Extravite” (No. 8638) in Nigeria, alleging long-standing registration and extensive use for medicinal and pharmaceutical goods.
  • General Nutrition Ltd. applied to register the same mark “Extravite” (Application No. 40028) in Class 5 for pharmaceutical products.
  • Beecham opposed the application, arguing:
    1. Their own trademark was still valid and on the Register.
    2. They had extensive prior use in Nigeria.
    3. Registration of the Respondent’s mark would cause confusion.
    4. The Registrar wrongly allowed General Nutrition an extension of time to file a counter-statement, contrary to the Trade Marks Act.

Key Issues Before the Court:

  1. Whether the Registrar had jurisdiction to hear the opposition after improperly granting the Respondent an extension of time to file its counter-statement.
  2. Whether Beecham’s trademark No. 8638 had actually lapsed or was still valid.
  3. Whether the Registrar failed to consider Beecham’s evidence of extensive use.
  4. Whether the Registrar was correct to allow registration despite similarities between the marks and goods.
  5. Whether registration would likely cause deception or confusion under Section 11 of the Trade Marks Act 1965.

Court’s Findings:

  • The extension of time for General Nutrition to file its counter-statement breached Section 20(3) of the Trade Marks Act and natural justice, making their application deemed abandoned.
  • There was no proof that Beecham’s trademark had been formally removed from the Register; the Registrar had approved its assignment in 1974 and accepted renewal fees in 1984.
  • Registration and use are independent grounds for opposition; the Registrar erred in ignoring Beecham’s evidence of extensive use.
  • The marks and goods were confusingly similar, and the Registrar should have considered the likelihood of deception under Section 11.
  • All five issues were resolved in favour of Beecham.

Outcome:

The Federal High Court allowed Beecham’s appeal, set aside the Registrar’s ruling, and ordered that General Nutrition’s application No. 40028 for “Extravite” in Class 5 should not proceed to registration.

Ruling

ODUNOWO, J.: This is a notice of originating motion brought pursuant to Sections 21 and 55 of the Trade Marks Act 1965 and Order 100 Rules of the Supreme Court of England whereby the above-named Appellant, Beecham Group Plc., a corporation established under the laws of the United Kingdom with offices at Beecham House, Brentford, Middlesex TW8 9BD, England, is seeking an order:-

(a) That the ruling of the Registrar of Trade Marks delivered on 23 October, 1990 whereby he dismissed the Appellant’s notice of opposition to the registration of the Respondent’s trade mark “Extravite” Application No. 40028 in class 5 be set aside.

(b) That the Registrar of Trade Marks be directed not to proceed with the registration of the Respondent’s said trade mark Application No. 40028 in class 5 and

(c) For such further or other order (s) as this court may deem fit to make in the circumstances. The application is based on four main grounds:-

(1) That the learned Registrar of Trade Marks erred in law in holding that trade mark “Extravite” No. 8638 lapsed and the purported assignment from Multi Packs Chemical Ltd to the Appellant was therefore null and void.

The Appellant then proceeded to enumerate particulars of such errors, namely.

(i) The Registrar of Trade Marks held as follows:- “In my humble opinion, the opponent has not denied the Applicant’s allegation that the trade mark No. 8638 had lapsed at the time of the purported assignment of it to the opponent and the purported assignment was therefore null and void …… I am therefore of the view that the trade mark “EXTRAVITE No, 8638 lapsed on 13th March, 1970 and was removed from the register of trade marks for non-payment of renewal fees…………”.

(ii) There is no provision in the Trade Marks Act, 1965 whereby a registered trade mark lapses for non-payment of renewal fees.

(iii) Section 23(3) of the Trade Marks Act, 1965 provides for and deals with the discretionary powers of the Registrar of Trade Marks to remove a trade mark from the Register for failure to pay renewal fees subject to such conditions, if any, as to its restoration to the Register.

(iv) The Registrar of Trade Marks has not so removed trade mark “Extravite” No. 8638 from the Register.

(v) On 6th November, 1974 the Registrar registered an assignment of the trade mark EXTRAVITE NO. 8638 in favour of the Appellant and he is therefore presumed to have exercised his discretion under Section 23(3) of the Trade Marks Act 1965 not to remove the mark from the Register and is now estopped from saying that the said trade mark lapsed before he registered the said agreement.

(2) The learned Registrar of Trade Marks erred in law when he held that the validity of the Appellant’s claim to user depends on the validity of registration of the trade mark. The particulars of errors under this head are set out as follows:-

(i) The Registrar of Trade Marks held as follows:- “……….. The second issue is that of extensive use of the trade mark in Nigeria as claimed by both parties. It seems to me that, in the circumstances, the first issue is far more crucial than the second one. The consideration of the second issue depends on the success or failure of the first one”.

(ii) Registration and user of a trade mark are two separate grounds recognised under the Trade Marks Act 1965 and on either of which a trade mark may be opposed.

(iii) Neither is dependent on the other, thus opposition of a trade mark can be based on user alone even if opponent is not yet registered or has not made any application for registration.

(3) The learned Registrar of Trade Marks erred in law when he declined to consider and give effect to the evidence of extensive use of the trade mark EXTRAVITE tendered by the appellant despite the provisions of section 23(4)(b) of the Trade Marks Act 1965.

(4) The learned Registrar of Trade Marks erred in law by failing to consider the effect on the general public of the registration of Trade Mark EXTRAVITE Application No. 40028 in class 5 for the Respondent and the extensive and continuous use of the mark EXTRAVITE by the Appellant for the same goods or goods of the same description despite the provisions of Section 11 of the Trade Marks Act 1965.

With the leave of this court on 15 March, 1993, the Appellant was allowed to file a fifth ground of appeal in the interest of justice and also because it is desirable that the Appellant should be accorded every opportunity to ventilate any perceived grievances which he might have concerning the ruling of the learned Registrar. Otherwise the impression might be created that justice was not manifestly allowed to pursue its unimpeded course without undue regard to technicalities. Accordingly the new additional ground was crafted in this way:

(5) That the learned Registrar of Trade Marks erred in law by proceeding to hear the opposition against the registration of Trade Mark application No. 40028 in class 5. The particulars of errors were formulated thus:

(i) The Registrar of Trade Marks did not as at the time of entertaining the opposition against Trade Mark Application No. 40028 in class 5 have the jurisdiction to proceed with the opposition as the counter-statement was filed out of time.

(ii) By letters dated 11 January, 1989 and 3 April, 1989, reference AGB/ 1F/EHT/C/S and AVB/01F/EHT/C – S respectively, the Applicant/ Respondent did apply for an extension of time within which to file their counter-statement and were subsequently granted the said extension by the Registrar.

(iii) Section 20(3) provides for and deals with the Registrar’s duty to ensure that opposition documents get to both parties involved and also specifically provides for the time frame within which a counter-statement should be filed, otherwise the Applicant shall be treated as having abandoned the application.

(iv) By virtue of Regulation 104 of the Trade Marks Regulation 1967, the Registrar of Trade Marks exceeded his scope of competence by granting the Respondent the said extension and therefore breached Section 20(3) of the Trade Marks Act 1965.

In support of the originating motion are a 12 paragraph affidavit, together with six exhibits, deposed to by Nat Ofoegbu Esq., a Legal practitioner and a further affidavit of nine paragraphs, with two exhibits attached, which was sworn by Mr. Afam Nwokedi, also a Legal practitioner, in support of the additional ground of appeal. Reliance is placed on all the averments contained in these affidavits and all the exhibits attached thereto. In his arguments before this court, learned counsel for the Appellant, Mr. A. F. Nwokedi, identified the issues which call for determination in this appeal as these:-

(1) Whether the Registrar of Trade Marks as at the time he entertained the opposition to the registration of the said trade mark had the competence and jurisdiction to entertain the opposition in view of the fundamental breach occasioned by the Respondent who was then the Applicant.

(2) Whether the Registrar of Trade Marks was right to hold that the Appellant’s trade mark “EXTRAVITE” No. 8638 had lapsed as at 1970 and was removed from the Register of Trade Marks when in fact the Registrar had recorded an assignment of the said trade mark in favour of the Appellant in 1974 and had also accepted renewal fee in 1984.

(3) Whether the Registrar of Trade Marks was right to have considered only one ground of the Appellant’s grounds of opposition when in fact the Appellant’s opposition was based on two grounds, i.e. (i) registration and (ii) extensive and continuous use of the trade mark “EXTRAVITE” No. 8638 in Nigeria.

(4) Whether in view of the abundant evidence of extensive and continuous use adduced by the Appellant before the Registrar of Trade Marks it was right for the Registrar to hold that the Respondents were still entitled to register their trade mark “Extravite” in class 5 and

(5) Whether it was right for the Registrar of Trade Marks to hold that the Respondent were entitled to registration when the Registrar could have refused the Respondent’s application under Section 11 of the Trade Marks Act 1965.

Mr. Nwokedi then proceeded to argue the five issues in turn, beginning with the first which he regarded as of primary and fundamental importance. He submitted that if this first issue is determined in favour of the Appellant, all other issues will be rendered irrelevant in this appeal. He pointed out that the letters exchanged between the Respondent and the Registrar on the question of extension of time, Exhibits AN3 and AN4 respectively, reveal the extent to which the Registrar had gone beyond his authority to entertain the opposition; I was referred to Section 20(3) of the Trade Marks Act 1965 and regulation 104 of the Trade Marks Regulations 1967 which does not permit the Registrar the discretion to grant an extension of time to file either a notice of opposition or a counter-statement, “not being a time expressly provided in the Act or prescribed by regulation 78 or 81 of these regulations”.

He submitted that Section 20(3) of the Trade Marks Act has expressly provided a period of one month upon receipt of notice of opposition within which the Appellant can file his counter-statement. Reliance is placed on the unreported decision of this Court in the case of Coca-cola v. The Registrar of Trade Marks (Suit No. FHC/IL/22/88) which was delivered on 26 October, 1989. He submitted that the Respondent had no authority and could not be permitted by the Registrar to file their counter-statement one month after the receipt of the Appellant’s notice of opposition. Exhibits AN3 and AN4 attest to the fact that the Respondent had requested for an extension of time within which to file their counter-statement and had been so granted the said extension by the Registrar. He reminded the court that this issue could not be raised at the opposition proceedings before the Registrar because the Appellant were not aware of this fact as Exhibits AN3 and AN4 were not communicated to them. These exhibits were private documents between the Registrar and the Respondent; these documents were only made public after this Honourable Court, presided over by the Honourable the Chief Judge of the Federal High Court, had compelled the Registrar to produce the record of proceedings before the court. That was when the Appellant became aware of these facts. Which necessitated their filing of an additional ground of appeal upon which this argument is predicated.

On issue (2) he submitted that, as stated in paragraphs 3 and 4 of their affidavit, Exhibit AN4, the Appellant’s case is that their trade mark – “Extravite” 8638 – is registered and is also being used; they have in fact enjoyed long and widespread user of the mark in Nigeria for many years. He submitted that Section 13(1) of the Trade Marks Act 1965 prohibits registration by the Registrar of marks identical with one already on the register, the language of which section is clear and unambiguous. The question of whether a mark was validly on the Register does not arise under that section. Provided the mark is on the Register the Registrar shall not register another mark similar to that trade mark.

He submitted that the Respondent’s allegation that the Appellant’s trade mark had lapsed is based on the assumption that the Appellant did not for some time pay the renewal fee for its trade mark “Extravite” No. 8638 in class 3. He contended that the Trade Marks Act 1965 has no provision for the lapsing of trade mark for non-payment of renewal fees; I was referred to Section 23(3) of the Act which only gives the Registrar a discretion to remove a trade mark from the Register if the proprietor of the mark fails to pay the renewal fee inspite of the notices of the Registrar pursuant to regulations 67 and 68. He submitted that there must be an actual physical exercise of the discretion and regulations 67 to 71 provide the mode of exercise of such discretion. The Registrar did not follow the manner prescribed by the Trade Marks Act in this particular case because at the hearing before the Registrar no evidence was adduced as to the endorsement on the Register of Trade Marks that the mark “Extravite” 8638 had been removed from the Register as provided by regulation 71.

The proprietor who fails to renew only risks the removal of his trade mark. He pointed out that the removal was not even published in any of the Trade Mark Journals as is the normal practice e.g. Trade Mark Journal No. 16, Volume 3 No. 5 of 31 December 1970 at pages 97 to 98; Trade Mark Notice No. 5 in Trade Mark Journal No. 7, Volume 15 of 27 March 1972; Trade Mark Notice No. 15 in Trade Mark Journal, Volume 2 No. 2 of 27 December 1969 at pages 191 to 195. He submitted that failure to adduce evidence points to one irresistible conclusion, namely, that the mark is still on the Register. He submitted that the certificate of assignment issued to the Appellant in respect of trade mark “Extravite” No. 8638 in 1974 attests to the fact that the Registrar considered the mark as still subsisting on the Register of Trade Marks; I was referred to Section 59 of the Trade Marks Act 1965 in this connection. The Registrar having issued a certificate of assignment is estopped from stating that the mark is not subsisting on the Register. The fact that he has done this raises the presumption that he has restored the mark on the Register, assuming without necessarily conceding that the removal was proper: Habib Bank Ltd. v. Hibib Bank AIG Zurich (1982) R.P.C. 1 at pages 18, 37 and 38.

He further submitted that as proof of the subsistence and validity of the Trade Mark No. 8638 on the Register of Trade Marks, the Registrar has as far back as 1984 accepted the renewal fee for that trade mark. A close look at page 8 of the Registrar’s ruling, Exhibit AN8, reveals that one of the reasons given by him in his decision in favour of the Respondent in this matter was necessitated by the fact that the present Appellant had failed to deny an averment made by the present Respondent in Exhibit AN6 to the effect that the trade mark 8638 had lapsed for non-renewal. Mr. Nwokedi submitted that it was not mandatory for the Appellant to deny this averment as it was a question of law which could be canvassed in oral submission, and which was so canvassed. There is absolutely nowhere in the ruling of the Registrar where he reverted his mind to the renewal of 1984; neither could he explain why his office had issued a certificate of assignment of the same trade mark in 1970.

The Respondent averred that the Registrar in his bid to remove the trade mark in question from the Register had issued two notices informing the Appellant that their mark was due for renewal. They contend that since the Appellant did not take any direct action regarding the two notices issued by the Registrar the trade mark is to be deemed as having been abandoned. He submitted that the subsequent registration of assignment and acceptance of renewal fee by the Registrar point to one irresistible fact that the Appellant were still interested in the mark and were engaged in business in the mark and that the Registrar had exercised his discretion in their favour, having regard to Section 23(3) of the Trade Marks Act 1965 and Regulations 69 to 72 of the Trade Marks Regulations 1967. The Practice and Procedure under which renewal and assignment certificates are issued by the Trade Marks Registry are very well known to the Registrar. An assignment certificate cannot be issued even inadvertently to a mark that is not on the Register. Under Section 23 of the Trade Marks Act and Regulations 66 to 70 of the Trade Marks Regulations 1967, quite a number of discretions are granted to the Registrar of Trade Marks with regard to the removal of a trade mark from the Register. He submitted that these discretions cannot be exercised once the provisions of regulations 71 and 72 have been fulfilled, when a different rule applies for the removal of trade mark from the Register.

In practice, as earlier averred in Exhibit AN5, the Registrar is known to grant extensive opportunities to proprietors to renew their mark. If and when they fail to utilise this opportunity, these facts are within his knowledge because he has in his custody a Register in which he registers all trade marks that had been removed from the Register. He submitted that the issuance of assignment certificate and the recording of the renewal of Trade Mark No. 8638 were significant highlights of the manner in which the Registrar’s discretion had been exercised regarding the validity of that trade mark on the Register.

Mr. Nwokedi then went on to argue issues 3, 4 and 5 together. He submitted that the registration of a trade mark is territorial in character; this is trite law. A registration in one country does not give right in another. Secondly, Section 20 of the Trade Marks Act 1965 allows any person to oppose registration. He pointed out that the three major grounds on which “any person” may oppose registration are: (1) Prior registration (2) Use and (3) Interest in the trade mark sought to be registered. The issue of prior subsisting registration, which in effect is a statutory right, has been adequately covered by the provisions of Sections 5, 11, 13 and 18 of the Trade Marks Act which he had already covered in his earlier submissions on issues (1) and (2).

On the basis of use, in Exhibits AN3, AN5 and AN7 one of the Appellant’s ground of objection to the registration of Trade Mark No. 40028 was that the Appellant had been in use of the trade mark “Extravite” under registration No. 8638. On this issue the Appellant contended and exhibited extensively, in Exhibits AN5 and AN7, evidence of use dating back to 1970. He submitted that the three major grounds of objection are absolutely independent of one another. I was referred to page 47 paragraph 4 – 39 of Kerly‘s Law of Trade Marks and Trade Names (12th Edition). In all the documents filed by the Respondent, both before the Registrar and this Court, there is no dispute about the fact that the Appellant had been in use of “Extravite” trade mark notwithstanding any threatened action by the Registrar as can be seen in Exhibits AN5 and AN7 as well as page 310 of the record of proceedings before this Court. The Respondent’s defence before the Registrar was that they had also been using the same trade mark, and in attempting to prove this they had exhibited An Order Instruction dated 17 November 1970 from one Major & Co. Nig. Ltd. as shown in Exhibit ANG at page 317 of the record of proceedings before the court. He submitted that the contradictions between the Order Instruction and the averments contained in the Respondent’s Statutory Declaration and the affidavit before this Court are numerous.

The Order Instruction is for a variety of pharmaceutical products of which “Extravite” forms only an infinitesimal proportion of the whole bulk. The products were ordered by a company known as Major & Co. Nig. Ltd. from another company by the name of Rodale & Co. Ltd. which the Respondent claimed were the assignees of the trade mark as contained on page 314 of the record of proceedings. There is no proven linkage between J. I. Rodale & Co. and “Extravite” or J. I. Rodale & Co and the Respondent; not even a copy of an assignment was exhibited before the Registrar. Neither has one been exhibited before this court to prove the relationship between these three companies. The date on the Order Instruction is 17 November 1970 which is of fundamental importance as both the Respondent and the Registrar of Trade Marks accepted the fact that in 1970 the Appellant’s Trade Mark No. 8638 was validly on the Register as borne out by Exhibit AN8 at page 9 on page 206 of the record of proceedings. He submitted that having regard to the fact that the Appellant had opposed the registration of the Respondent’s trade mark on two grounds it was wrong for the Registrar to have considered only one ground without due regard to the other. What the Registrar ought to have done is that, assuming without conceding that he came to the right conclusion, he should have proceeded to consider the extensive evidence of use as made out in Exhibits AN5 and AN7 by the Appellant before him. It was also incumbent on the Registrar under Sections 11, 13 and 18 of the Trade Marks Act to refuse the Respondent’s application. As no evidence of concurrent use had been shown by the Respondent before the Registrar in satisfaction of Section 13(3) of the Trade Marks Act the Registrar had no basis in law and in equity in proceeding to register the Respondent’s application. He urged this court to hold that the Registrar had exceeded his authority (1) in granting an extension of time to the Respondent within which they had to file their counter-statement and (2) in holding that the Appellant’s trade mark registration No. 8638 had been removed from the Register of Trade Marks when in fact he had not compiled with the provisions of the Trade Marks Act and Regulations stipulating procedures for the removal of a trade mark from the Register.

Mr. Nwokedi therefore concluded his address by inviting this Court to hold that the Registrar erred in law in refusing to entertain the Appellant’s ground of objection which was long and extensive use. Finally, he urged the court to set aside the ruling of the Registrar as contained in Exhibit AN8 which was delivered on 23 October 1990 and reject the Respondent’s application No. 40028.

In her own address on behalf of the Respondent, Mrs. A. Akpofure-Idris followed the same approach adopted by Mr. Nwokedi on the five issues which call for resolution in this judgment. On the first issue, she submitted that the combination of Section 20(3) of the Trade Marks Act and regulation 104 permits the Registrar “where he is satisfied that the circumstances …. justify an extension of time” to extend the time for filing the counter-statement in this matter. The record of appeal contains the letter of request for the extension and that letter, Exhibit AN3, provides the reasons for granting the extension by the Registrar. She contended that the Appellant would have been aware that the counter-statement was filed outside the one month period as stipulated under Section 20(3) of the Act. The Appellant did not raise an objection to this extension at the hearing before the Registrar. Hence they are estopped from objecting at this point. She submitted that it has been the established practice of the Trade Marks Registrar to grant extension of time in opposition hearing particularly because most of the parties were resident outside Nigeria. As such there were always difficulties experienced by their counsel in filing the documentation where extensions were not granted. Even if, which is not conceded, the Registrar had misinterpreted the latitude of his powers to grant extension of time in the circumstances, it would be unfair and harsh to visit the mistake on parties who had for years relied on that interpretation of his powers. She urged this court to hold that the Registrar acted properly by granting an extension to the Respondent in this appeal.

On the second issue, she submitted that there is clear evidence on the record of appeal that the trade mark No. 8638 was due for renewal by the 13th of March 1970, over 11 years before the Respondent filed its own application. There is no dispute about that between the parties. There is similarly no dispute that notices were sent out by the Registrar informing the Appellant that unless the trade mark was renewed, it would lapse and be removed from the Register. Under Section 14 of the Trade Marks Act 1965 an original registration of a trade mark lasts for 7 years from the date of such original registration. Under Section 23(1) and (2) of the said Act the registration of a trade mark after the first 7 years can be subsequently renewed for a period of 14 years thereafter. She pointed out that there is no evidence on the record of appeal to show whether or not the Appellant’s trade mark 8638 was ever actually removed from the Register by the Registrar. Even if the Registrar actually failed to formally remove trade mark No. 8638 from the Register, this should not prejudice the Respondent, firstly, because under Section 23(4) of the Act any trade mark removed from the Register is only deemed to remain on the Register for one year after its removal for the purpose of a new application such as that of the Respondent. She submitted, therefore, that in any event since the Registrar’s notices were issued in 1970 the trade mark even with the one year period after removal would not have been on the Register in 1972 at the latest.

In paragraph 10 of the Respondent’s reply to the Statutory Declaration dated 22 November 1989 the Respondent states that it had conducted extensive searches in the Trade Marks Registry in 1979 before it filed its own application for trade mark No. 40028 in 1981. In paragraph 11 of the same reply the Respondent states that the searches revealed that the Appellant’s trade mark 8638 had lapsed and was no longer on the Register. The Appellant had endeavoured to say it filed an application for renewal in 1984. Which would have been 12 years after it would have been due for renewal. She urged this court to hold that the Appellant had waived whatever right it may have had to the trade mark “Extravite” by this long period of default. So that even if the trade mark had not been formally removed from the Register due to oversight or administrative lapse, the Appellant had lost all its right by the long default. She therefore urged this court to accept the statement of the Registrar in his ruling of 26 September 1990 at page 8 thereof.

The Appellant had sought to exhibit what it had called a schedule of trade marks for renewal – its office schedule – but it is significant that it has not exhibited any certificate of renewal of trade mark 8638 in its record of appeal. She urged this court to accept that the burden which lies on the Appellant to prove the renewal of its trade mark 8638 has not been discharged. Reliance is placed on Section 149 of the Evidence Act to the effect that where a person does not produce evidence which it ought to produce, this non-production would not be favourable to him. The Appellant also purports to show that it derives its own titles from an assignment from Multipax Chemical Laboratories; it is significant that the Respondent claims that its own title to the new trade mark 40028 which it seeks to register is also derived through Multipax, through an assignment to the Respondent – all abroad. She submitted that it was not necessary for the Respondent to seek to register an assignment in Nigeria because it was applying for an original registration of its trade mark as an assignee. It was, however, necessary for the Appellant to register its own alleged assignment with the Registrar because the original owner of trade mark 8638 on the Register in Nigeria is not the Appellant. She submitted that the Appellant has not proved its title to trade mark 8638 for these reasons, firstly, because in the record of appeal the purported assignment is sought to be registered on 6 November 1974 by the Appellant. As at that date the trade mark 8638 had lapsed because it had not been renewed. Furthermore, the Appellant by its own admission in the record of appeal only sought a renewal in 1984. Lastly, the Appellant had not exhibited any valid certificate of assignment duly typed up with a picture of the mark thereon and duly signed by the Registrar in accordance with the usual practice. She submitted that the attached certificate of assignment is only a draft and there is no basis for its validity. The court should therefore hold that the Appellant has no mark on the Register to support its opposition of the Respondent’s application of a fresh trade mark “Extravite” 40028 in 1981.

Mrs. Akpofure-Idris submitted that the persistent failure by the Appellant to renew the mark leads one to the strong inference that the mark was not in use during the 1970s. The Trade Marks Registry would have issued an official receipt for any renewal fees allegedly paid by the Appellant who has, however, not exhibited such receipt. She submitted that the Registrar of Trade Marks is the best authority on the records in his Registry. She urged this court to attach significant weight to the categorical statement at pages 8 and 9 of the Registrar’s ruling, which is to be found on pages 104 and 105 of the record of proceedings, that the trade mark 8638 was removed from the Register of Trade Marks; she further goes on to state that where a trade mark is not renewed the proprietor losses the statutory protection for a registered trade mark under Section 13(1) of the Trade Marks Act 1965. From that date, i.e. 13 March 1971, Multipax Chemicals Ltd – the original proprietor of trade mark 8638 — lost its title to the mark as the registered proprietor under the Trade Marks Act 1965 since the renewal fee remained unpaid. Also from that date (13 March 1971) any person could apply to have the trade mark “Extravite” registered in his favour.

Even if the trade mark was not actually removed from the Register in 1971, which is not conceded, since it was not renewed it was no longer of any effect. Therefore any purported assignment in 1974 to the Appellant was invalid. Hence the Appellant has no right under Section 3 or Section 20 of the Trade Marks Act 1965 to prevent the registration by the Respondent of the trade mark “Extravite”. She submitted that contrary to the assertion by counsel for the Appellant that the Appellant can also oppose registration on the ground of long and extensive use of the trade mark “Extravite”, neither Section 3 nor Section 20 of the said Act permits opposition where the opponent does not have a valid registered mark. Furthermore, even if the court looks at the evidence of use provided by the Appellant, she submitted that the weight to be attached to it is not great. The Appellant had exhibited certain affidavits by his alleged distributors; these affidavits are attached to the Statutory Declaration sworn by one Olateju Lawrence on 31 July 1990. Careful perusal of these affidavits will show that they are proforma affidavits. None of the distributors actually say they distribute the “Extravite” product. The Appellant has only supplied one list of its distributors which is for the Ibadan zone. She pointed out that the affidavit from Palm Chemist, Ibadan, which provides an affidavit on the sale of “Extravite” is not on the typed list of the Ibadan distributors; the name Palm Chemist was written in by hand as an after thought. Unlike the other typed names on the list there is no record of its address, its discount rates, its method of payment or average target as provided for other typed names on the list.

It is also significant that the other affidavits from Aba, Lagos, Onitsha, Enugu and Lafia sworn by alleged distributors of the Appellant do not have names of such distributors reflected on the list of distributors. She submitted that they are no distributors of the Appellant; as such no weight should be attached to their affidavits. Secondly, even if both the Appellant’s and the Respondent’s “Extravite” products were simultaneously in the market, she submitted that there would be no confusion arising in the mind of the general public from this because they are pharmaceutical substances, and medical personnel prescribing them would be able to make the distinction between the two products in their prescriptions. In the circumstances, Mrs. Akpofure-Idris urged this court to dismiss the appeal and permit the Registrar of Trade Marks to register trade mark No. 40028 “Extravite” in the name of the Respondent or, in the alternative, with the powers granted this court under Section 13(2) of the Trade Marks Act 1965, to permit the Respondent’s to register the said trade mark “Extravite” 40028 as a special circumstance even if the court finds that the Appellant had established long use.

After Mrs. Akpofure-Idris concluded her own address, the case was postponed to 5 February 1997 for Mr. Nwokedi’s final reply on points of law. When the Court reassembled on that date, i.e. 5 February 1997, a different counsel from Mrs Akpofure’s chambers appeared for the Respondent – Mr. Olusola Agbaje, with whom was Mrs. F. U. Agbasi. As a prelude to his final address, Mr. Nwokedi objected to the submissions made by Mrs Akpofure which he described as tantamount to giving evidence. He submitted that the rules relating to and governing the conduct of opposition proceedings before the Registrar of Trade Marks are contained more particularly in Section 20 of the Trade Marks Act 1965 and Regulations 48 to 60,104 and 105 of the Trade Marks Regulations of 1967. He pointed out that the time stated in Section 20(3) is quite specific. On the issue of estoppel, he submitted that this issue was raised for the first time in this court in the course of the Respondent’s address. It was neither pleaded in their counter affidavit nor in the various further and better counter affidavits filed by the Respondent. It is trite law that the issue of estoppel must be pleaded. I was referred to the case of Egbe v. Adefarasin (1987) 1 N.W.L.R. (Part 47) 1 at page 21, a decision of the Supreme Court.

Assuming that the court is disposed to accepting the Respondent’s submission on estoppel, he contended that estoppel does not operate in the face of obvious illegality. The existence and authentication of the schedule of payment has been established by virtue of Sections 95(e), 97(e), 112 and 109 of the Evidence Act. Under the ambit of these sections the Appellant have proved the contents of the schedule of payment by way of affidavit. Finally, contrary to the Respondent’s argument, the right of use in a trade mark is not derived from Sections 3 and 20 of the Trade Marks Act as expounded by the learned counsel for the Respondent. It is a common law right and Section 3 of the Act relates to actions of infringement. It does not have any bearing whatsoever in opposition/proceedings. Mr. Nwokedi therefore urged this court to disregard the Respondent’s submission on these issues and hold in favour of the Appellant as per their motion of appeal.

At the conclusion of Mr. Nwokedi’s reply on point of law, Mr. Agbaje who stepped into the shoes of Mrs. Akpofure-Idris for the first time since the commencement of this case made an unusual request for an adjournment because he was anxious to make some comments on Mr. Nwokedi’s reply. Not unexpectedly, Mr. Nwokedi opposed the application on the grounds that it was made out of context to any rule of law or practice, especially as no new issue was raised in his reply. After listening to both sides, I rejected this belated application because I was satisfied that it was not only inappropriate but also would constitute an injudicious exercise of my discretion to do otherwise. I have no doubt in my own mind that both sides will readily agree that the foregoing summary constitutes an accurate account of the issues submitted for adjudication together with the well-articulated addresses of both learned counsel in that regard. The burden of the next few pages is to evaluate the merit of the two competing viewpoints. In doing so I propose to follow the scheme postulated by Mr. Nwokedi, for clarity and consistency of exposition. We must now focus our attention on the five issues which call for determination in this case.

Before doing so, however, it is perhaps appropriate for me at this stage to offer some explanations for the delay that ensued in the final determination of this case, which was due to a combination of factors, bearing in mind that the appeal was lodged in the Registry of this court on 22 November 1990. Since then the case suffered several adjournments both before and after it was eventually transferred to this court on 5 May 1992. Meanwhile no fewer than eight trial dates were aborted either because learned counsel was indisposed or otherwise engaged or because the record of proceedings before the learned Registrar was not readily available until actual hearing commenced before me on 16 June 1993, and final address was not concluded until 5 February 1997 when the case was postponed till today for judgment. Those were the reasons that necessitated the inevitable delay. We are now in a position to consider the five issues as formulated above.

The first issue relates to the extension of time granted by the Registrar to enable the Respondent file their counter-statement out of time. The contention of the Appellant is that by the time he proceeded to entertain the opposition to the registration of the trade mark “EXTRAVITE” 40028 in class 5 the learned Registrar of Trade Marks had deprived himself of competence and jurisdiction to entertain the opposition in view of the fundamental breach occasioned by the Respondent who was the Applicant. In other words, the provision of Section 20(3) of the Trade Marks Act 1965 had been violated; that subsection provides as follows, and I quote:

“3. The Registrar shall send a copy of every notice to the Applicant; and within one month after the date on which the copy is received by the Applicant the Applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application and, if he does not do so, shall be treated as having abandoned his application”.

It is common cause that the Applicant’s counter-statement was filed outside the permitted period of one month as borne out by Exhibits AN3 and AN4. This is not all. Copy of the notice for extension of time was not sent to the Appellant. This is obviously contrary to the provisions of Section 20(3) as reflected above because the two letters, Exhibits AN3 and AN4 which were exchanged between the Registrar and the Respondent as Applicant took place behind the back of the Respondent. It is not enough to say that the Appellant did not raise objection to this procedure as was contended by Mrs. Akpofure-Idris during the course of her arguments. One can only raise objection to what is known. The case for the Appellant is that they were not given any notice at all. So the question of estoppel does not arise in this instance. Since the Respondent did not file their counter-statement within the mandatory period of one month their application for the trade mark “Extravite” 40028 ought to have been regarded as abandoned as provided under Section 20(3) of the Trade Marks Act 1965 and I so hold. This is so because the extension of time granted by the Registrar was not only contrary to this statutory provision but also breached the rules of natural justice in its implementation.

On the second issue, it was contended by the Respondent that the Appellant’s trade mark 8638 had lapsed at the time of the purported assignment to them, i.e. 13 March, 1970, and it is therefore null and void and that the Appellant did not deny this allegation. The Respondent’s argument was that the said trade mark had been removed from the Register of Trade Marks. Nonetheless I have looked into the record of proceedings in vain to find any evidence in support of this assertion. The only relevant provision is Section 23(3) which gives the Registrar a discretionary power of removal of a trade mark from the Register for failure to pay renewal fees, subject to such conditions, if any, as to its restoration to the Register as may be prescribed. Such removal from the Register must be published in the Trade Marks Journal as provided by Regulations 69 and 72 of the Trade Marks Regulations, 1967. Consequently if that power is not exercised, as happened in this case, it will be assumed that the original registration is still subsisting. More so as there is no time limit on the Registrar’s power to restore a trade mark to the Register. As far as I am able to ascertain from the record of proceedings, there is no evidence of such removal in this case quite apart from the ipse dixit of the Registrar of Trade Marks as contained on page 9 of the Registrar’s ruling. This conclusion is fortified by the fact that the Registrar proceeded to approve an assignment of the same trade mark on 6 November 1974. It is therefore not unreasonable to assume that he had exercised his discretion in favour of the Appellant by effectively restoring the trade mark to the Register, especially as he had also accepted renewal fee for the trade mark in 1984 – three years after the Respondent’s first application. Curiously enough, the learned Registrar did not even address his mind to this aspect of the evidence in the course of his ruling. As a matter of fact the learned counsel for the Respondent, Mrs. Akpofure-Idris, candidly admitted that there is no evidence on record to show whether or not trade mark 8638 was actually removed from the Register. As regard the third issue, the complaint of the Appellant is that the Registrar completely failed to address his mind to the second ground of opposition to the Respondent’s application, namely, the extensive use of the trade mark 8638 throughout Nigeria. I am convinced that there is substance in this complaint particularly in view of the conclusion, even though erroneous, reached by the Registrar that the Appellant’s trade mark has been removed from the Register.

The learned Registrar was in error to have peremptorily brushed aside the second issue in view of the proviso contained in Section 23(4)(b) of the Trade Marks Act 1965, and I quote:

“(b) that no deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application for registration by reason of any previous use of the trade mark that has been removed”.

In view of the statutory provision quoted above, it is obligatory on the part of the learned Registrar to take cognisance of the second issue having regard to the abundant evidence of long and extensive user made available to the Registrar. This approach is underscored by the fact that whereas the Appellant’s trade mark “Extravite” 8638 in class 3 is in respect of “chemical substances prepared for use in medicine and pharmacy” while the Respondent’s application is for the trade mark “Extravite” 40028 in class 5 in respect of “pharmaceutical preparations and substances”. What is more, both trade marks are phonetically and visually confusingly similar and they are goods or products of the same description. As a matter of fact one could justifiably say that the difference between the two products is one between six and half a dozen. That is why it is incumbent on the Registrar to explore their potential for confusion or deception as provided under Section 23(4)(b). Furthermore, registration and user of a trade mark are quite independent of one another. This must be so because opposition to the application for registration of a trade mark can be put forward by anybody, and not only by the owner of a registered trade mark. Moreover, validity of the Appellant’s claim to user does not depend on the validity of registration. All that registration implies is that the trade mark is protected whereas non-registration leaves the proprietor of the trade mark to his remedy at common law. The difference essentially between the two relates to the burden and standard of proof.

On the fourth issue, it cannot be right for the Registrar to ignore the evidence of continuous and extensive use placed before him by the Appellant which, having regard to the record of proceedings, appears to be more credible than the evidence put forward by the Respondent in this regard.

On the fifth and final issue as indicated above, it is undesirable for the Registrar not to have considered the negative element which precludes the registration of any trade mark which is calculated to deceive or cause confusion or otherwise objectionable or contrary to law or morality or so nearly resembles an already registered trade mark as to be likely to deceive or engender confusion. All these features which I have characterised as negative elements ought to engage the attention of the Registrar in dealing with an application for the registration of a trade mark, whether opposed or unopposed. That is why it cannot be right for the Registrar to have proceeded to register the Respondent’s application without considering these militating factors, as such registration would be certain to cause confusion or lead to deception, a situation which is prohibited under Section 11 of the Trade Marks Act 1965.

It is for the foregoing reasons that I am satisfied that all the five issues ought to be resolved in favour of the Appellant. In the result the appeal succeeds. That being so the following orders are deemed appropriate:

(1) The appeal is allowed.

(2) The ruling of the Registrar of Trade Marks delivered on 23 October 1990 whereby he dismissed the Appellant’s notice of opposition to the registration of the Respondent’s trade mark “Extravite” Application No. 40028 in class 5 be and is hereby set aside.

(3) The Registrar of Trade Marks shall not proceed with the registration of the Respondent’s said trade mark Application No. 40028 in class 5.

Pronounced in open court at Lagos this 25th day of April, 1997.

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