International Tobacco (Nig.) Ltd. & Ors. v. British American Tobacco (Nig.) Ltd. & Anor.
Supreme Court Case Record
| Case Information | Details |
| NIPJD Citation | NIPJD/SC/2023/181-09 |
| Court | Supreme Court of Nigeria |
| Suit/Appeal No. | SC/181/2009 |
| Appellants | International Tobacco (Nig.) Ltd.; Ololade Ogunniyi; Ronke Ogunniyi; Johann Wilhelm von Eicken GmbH (Interested Party) |
| Respondents | British American Tobacco (Nig.) Ltd.; Benson & Hedges (Overseas) Ltd. |
| Date of Judgment | 3 March 2023 |
| Coram | Kudirat Motonmori Kekere-Ekun, JSC; Mohammed Lawal Garba, JSC; Helen Moronkeji Ogunwumiju, JSC; Ibrahim Mohammed Musa Saulawa, JSC; Adamu Jauro, JSC |
| Lead Judgment | Mohammed Lawal Garba, JSC |
| Area of Law | Intellectual Property; Trademark Law |
| Subject | Trademark Infringement; Colour Marks; Distinctiveness; Cigarette Packaging |
| Applicable Law | Trade Marks Act, Cap. T13, Laws of the Federation of Nigeria 2004, particularly sections 5, 16 and 67 |
| Originating Court | Federal High Court, Ilorin Judicial Division |
| Court Below | Court of Appeal, Ilorin Judicial Division |
| Court of Appeal Judgment | 11 December 2008 |
| Decision | Appeal dismissed; Court of Appeal judgment affirmed |
| Costs | ₦5,000,000 awarded in favour of the respondents against the interested party/appellant |
The judgment identifies SC/181/2009 and the parties, as well as the five-member Supreme Court panel and Garba JSC as the Justice who delivered the judgment.
Trademark(s) in Dispute
| Trademark Information | Details |
| Registered Trademark | Benson & Hedges Gold Specification Pack |
| Trademark No. | 60722 |
| Additional Trademark | Benson & Hedges – “Turn to Gold” |
| Trademark No. | 56629 |
| Competing Brand | Tradition cigarettes |
| Feature in Dispute | Gold-coloured cigarette packaging / get-up |
| Nature of Dispute | Whether the gold-coloured packaging of Tradition cigarettes infringed the registered trademarks associated with the Benson & Hedges gold pack |
I. Facts
British American Tobacco (Nigeria) Ltd. and Benson & Hedges (Overseas) Ltd. brought an action at the Federal High Court in Ilorin alleging infringement of their registered trademarks relating to Benson & Hedges cigarettes.
Their registered trademarks included Trademark No. 60722, the “Benson & Hedges” gold-colour label mark, and Trademark No. 56629, the “Benson & Hedges” “Turn to Gold” slogan. The respondents maintained that the colour gold formed part of their registered trademarks and that they were entitled to protection against unauthorized use.
The dispute arose from the sale of “Tradition” cigarettes, which were packaged in a gold-coloured pack. International Tobacco (Nig.) Ltd. and the other original appellants distributed the Tradition cigarettes, which were manufactured by Johann Wilhelm von Eicken GmbH. The Federal High Court found that the Tradition packaging infringed the respondents’ registered trademark in the Gold Specification Pack of Benson & Hedges cigarettes.
The evidence included testimony from cigarette sellers and consumers concerning the similarity between the two products. The courts found that the Tradition cigarette pack was confusingly and deceptively similar to the Benson & Hedges pack and could be mistaken for it by traders and consumers.
The Federal High Court entered judgment for the respondents. The Court of Appeal, Ilorin Division, affirmed that decision on 11 December 2008. Johann Wilhelm von Eicken GmbH, which had subsequently become an interested party/appellant, appealed to the Supreme Court.
II. Issues
The Supreme Court considered the following three issues formulated by the interested party/appellant:
- Whether on the evidence before the court, the colour gold constituted part of the trademark registered under No. 60722 or of any other trademark claimed by the respondents.
- Whether the sale by the appellants of the cigarette brand “Tradition,” packaged in a gold-coloured pack, infringed any of the second respondent’s registered trademarks, particularly Trademark No. 60722.
- If Issue No. 1 was answered in the affirmative, whether the appellants ought to have been restrained from the use of the trademark “Tradition.”
III. What Was Held
The Supreme Court held that the respondents were the owners and proprietors of registered trademarks including Trademark No. 60722, the Benson & Hedges gold-colour label mark, and Trademark No. 56629, the Benson & Hedges “Turn to Gold” slogan.
The Court held that under section 16(1) of the Trade Marks Act, a trademark may be registered with a limitation to one or more specified colours. In this case, the colour gold was not merely decoration or embellishment. It was an essential feature of the registered Benson & Hedges trademark and was entitled to protection.
The Court distinguished the case from Ferodo Ltd. v. Ibeto Industries Ltd. In Ferodo, the additional features of the product packaging had not been registered as part of the trademark. Here, however, the registration of Trademark Nos. 60722 and 56629 elevated the gold colour beyond mere embellishment and made it part of the respondents’ registered trademark.
The Court further held that the Tradition cigarette pack was confusingly and deceptively similar to the Benson & Hedges pack. The respondents had therefore discharged the burden of proving infringement of their registered trademarks.
The Supreme Court found no basis for interfering with the concurrent findings of the Federal High Court and Court of Appeal.
IV. Outcome
Appeal dismissed.
The Supreme Court unanimously affirmed the judgment of the Court of Appeal, Ilorin Judicial Division, delivered on 11 December 2008. It awarded ₦5,000,000 in costs in favour of the respondents, payable by the interested party/appellant.
Key Principle
A colour can constitute a protected component of a registered trademark in Nigeria where the trademark is registered with the relevant colour limitation. Where that colour forms an essential and distinctive feature of the registered mark, another trader’s use of confusingly similar packaging may amount to trademark infringement.
Related Cases
- Federal High Court: British American Tobacco (Nig.) Ltd. & Anor. v. International Tobacco (Nig.) Ltd. & Ors. — Federal High Court, Ilorin Judicial Division. The trial court found that the gold specification of the Tradition cigarette pack infringed the registered Gold Specification Pack trademark of Benson & Hedges.
- Court of Appeal: International Tobacco (Nig.) Ltd. & Ors. v. British American Tobacco (Nig.) Ltd. & Anor. — Court of Appeal, Ilorin Judicial Division. Judgment delivered 11 December 2008, affirming the Federal High Court’s finding of trademark infringement.
- Ferodo Ltd. v. Ibeto Industries Ltd. — Distinguished. The Supreme Court explained that, unlike Ferodo, the gold colour in the present case formed part of the registered trademarks and was therefore more than mere packaging embellishment.