Aktiebolaget Jonkoping Vulcan v. Star Match Co. Ltd.

Law Cases and Principles

Aktiebolaget Jonkoping Vulcan v. Star Match Co. Ltd.

Federal Revenue Court, Nigeria
Judgement delivered on: 1 March, 1974
Citation: 17 NIPJD [FRC. 1974] 51/1973
Suit No.: FRC/L/51/73
Judge: Honourable Justice Anyaegbunam

BETWEEN:

AKTIEBOLAGET JONKOPING VULCAN …Plaintiff

AND

STAR MATCH CO. LTD …Defendant

Appearances: A. Anozie holding brief for Mr. Makanju, for the Plaintiff; B.O. Oyebolu for the Defendant

I. BACKGROUND

Parties

  • Plaintiff: Aktiebolaget Jonkoping Vulcan, which claimed to be the registered proprietor in Nigeria of Trade Mark No. 73A, consisting of the “Palm Tree” word and device in Class 47 for matches.
  • Defendant: Star Match Co. Ltd., which was accused of selling “Papa” brand matches bearing a label similar to the plaintiff’s mark.

The plaintiff alleged that Trade Mark No. 73A had been registered in Nigeria on 5 March 1907 and subsequently renewed. It also alleged that the mark had been registered in the United Kingdom and Sweden and had been used extensively in connection with its matches.

The plaintiff claimed that the defendant’s “Papa” brand label included a palm-tree device and used colours and an arrangement similar to its “Palm Tree” label, making deception or confusion likely.

The plaintiff sought:

  • An injunction restraining trademark infringement and passing off.
  • An account of the profits made from the allegedly infringing sales.
  • Delivery up or destruction of the allegedly infringing matches, labels, documents and advertising materials.
  • ₦10,000 in damages.

The defendant denied infringement and maintained that the words, labels, designs and devices used on its “Papa” brand matches were sufficiently different from the plaintiff’s mark to prevent deception or confusion.

Trademarks in Dispute

Trademark / LabelPartyRegistration DetailsFeatures Described in the Judgment
PALM TREE word and device (Exhibit D)Aktiebolaget Jonkoping Vulcan — PlaintiffClaimed Nigerian Trade Mark No. 73A, Class 47, for matches, registered on 5 March 1907, with subsequent renewals.The words “Palm Tree” or “Palmtree” with a palm tree device, used on the plaintiff’s matches.
PAPA brand label (Exhibit E)Star Match Co. Ltd. — DefendantRegistration number and class not stated in the judgment.Described in the plaintiff’s pleadings as featuring palm trees and a man, a blue sky, yellow ground, green bushes and the words “Safety Matches.” The plaintiff alleged similarities in colour and arrangement to its label.

Issue for Determination

  1. Whether the plaintiff had adduced sufficient evidence to entitle it to the reliefs sought.

Court’s Findings

  1. Plaintiff’s legal status: The statement of claim and the evidence of the plaintiff’s only witness did not establish whether the plaintiff was a juristic person or a partnership.
  2. Registration and ownership: The plaintiff failed to prove its allegation that it was the registered proprietor in Nigeria of Trade Mark No. 73A. This allegation had been denied, placing the plaintiff under an obligation to prove it.
  3. Witness credibility: The plaintiff’s only witness gave contradictory evidence concerning the registration documents. The court found him unreliable and treated important parts of his evidence as worthless.
  4. Evidence of deception: There was no evidence showing when the defendant began using the allegedly infringing mark, and no evidence that anyone had actually been misled. The court recognized that the absence of evidence of actual deception was relevant but not necessarily conclusive.
  5. Comparison of the marks: The court considered the labels tendered as Exhibits D and E and referred to the principle that trademark disputes in Nigeria must be assessed with regard to local conditions, including consumers who may identify goods through pictures and symbols.
  6. Insufficient evidence: The evidence presented by the plaintiff was insufficient to justify judgment in its favour. The defendant also called no evidence and rested its case on the deficiencies in the plaintiff’s evidence. The court therefore considered a non-suit the appropriate order.

Outcome

The plaintiff was non-suited. The court did not enter judgment for either party and did not finally determine the infringement and passing-off claims. A non-suit left the plaintiff free to commence a fresh action supported by proper evidence.

No damages or other substantive relief were awarded.

Key Legal Principles Applied

  • A plaintiff relying on a registered trademark must prove its ownership and registration when those facts are denied.
  • The likelihood of confusion must be considered with regard to Nigerian market conditions, including consumers who identify goods through pictures, symbols and other visual features.
  • The absence of evidence that someone was actually deceived does not automatically defeat an infringement or passing-off claim. Its importance may depend on how long the defendant has traded in the manner complained of.
  • A court may order a non-suit where the evidence does not entitle either party to judgment.

II. FULL FACTS

The plaintiff alleged that it was entered on the Register of Trade Marks in Nigeria as the proprietor of Trade Mark No. 73A, consisting of the “Palm Tree” word and device in Class 47 for matches, and that the registration had subsequently been renewed for periods of 14 years.

Recently, the Plaintiff discovered that the Defendant are selling matches not of the Plaintiffs’ manufacture bearing a Mark consisting of the device showing palmtree and a man standing beside them showing a blue heaven and yellow ground with green and overgrown bushes on the bottom portion of which is the word safety matches and the top portion of which bearing the words “Papa”, and Palmtree” with the same initials “PA”, which label and device are so arranged and coloured similarly as the labels used by the Plaintiff.

The Plaintiff’s claim inter alia is for an injunction to restrain the Defendants, their servants and agents, from infringing the Plaintiff’s Trade Mark No. 73A and from passing off goods not of the Plaintiffs’ manufacture as or for the goods of the Plaintiffs.

The Defendant on the other hand contended that the labels, designs, devices and words which appear on its Papa Brand matches are sufficiently different and distinct from the Plaintiff’s Trade Mark to avoid any possibility of deception or of confusion with the said Trade Mark even if used for the same goods.

ISSUE

Whether the Plaintiff has adduced enough evidence to entitle it to the reliefs sought.

HELD

1. On the test to be applied in determining infringement of a Trade Mark.
In the case of W.B. MacIver & Co. Ltd v. C.F.A.O. 3 NLR 18 at page 19 the test to be applied is clearly stated thus: –

“To the trained eye of a civilized community there is undoubtedly a considerable difference in the two designs set aside and one would hardly be likely to be mistaken for the other, but while the broad principles laid down in English cases should not be applied, the Trade Mark laws of this country should be administered with due regard to local condition and as stated by

Osborne, Chief Justice, in the Houtman case, “With a view to protecting not only vast illiterate population little acquainted with pictorial representations, but the pioneers of trade who have earned reputation among illiterate folk by quality of goods associated with some recognized Marks such as a particular bird, animal, tree or other objects”.

2. On the need to prove time of commencement of infringement
There is no evidence as to the time the Defendants started to infringe the Plaintiff’s Mark and no evidence that anyone has been misled. At page 644 of the case of Reddaway v. Bentham Hemp Spinning & Coy supra, Lindley L. J. said

“The fact that no proof can be given that anyone has been misled will be some evidence to show that no one is likely to be misled. But the absence of such proof is by no means conclusive; much must depend on the time the Defendants have been carrying on their business in the way complained of.”

III. JUDGMENT

(Delivered by ANYAEGBUNAM, J.)
From whatever way one looks at the Plaintiff’s case, it is very unsatisfactory.

In a Statement of Claim of 11 paragraphs, there is not a line suggesting whether the Plaintiff is a juristic person or not, or whether it is a partnership. The evidence adduced by the Plaintiff’s first and only witness did not shed any light on the matter either.

The Plaintiffs’ claim against the Defendant as per Statement of Claim is as follows:

  1. “An Injunction to restrain the Defendants, their Servants, and Agents, from infringing the Plaintiff’s Trade Mark No. 73A and from passing off goods not of the Plaintiff’s manufacture as or for the goods of the Plaintiff. And in particular, to restrain them from selling, offering for sale, or disposing of any matches, not of the Plaintiff’s manufacture bearing the device of the Plaintiffs’ Trade Mark No. 73A or any other device colourably resembling the Plaintiff’s said Trade Mark or under the name “Palmtree” matches, or having fixed upon devices or any other labels in imitation of the get-up of the Plaintiff’s goods in paragraph 5 hereof mentioned.
  2. An account of the profits made by the Defendants in selling or disposing of any matches not of the Plaintiff’s manufacture, sold
  3. Delivering up to the Plaintiff by the Defendants upon oath of all matches not of the Plaintiff’s manufacture in the Defendants’ possession or under their control marked with the device or bearing the said labels and of all price lists, copies of invoices and other documents, and of all advertisements in the Defendants’ possession or under their control bearing the word “Palmtree” for erasure or cancellation of the devices, labels and words, or for destruction.
  4. For damages N10,000.”

In paragraph 2 of the Statement of Claim, the Plaintiff averred that:

“The Plaintiffs were entered on the Register of Trade Marks in Nigeria as Proprietors of the Trade Mark No. 73A (Palmtree word and device) in Class 47 in respect of matches on the 5th day of March, 1907 and the registration was renewed thereafter for periods of 14 years on day dated 5th March.”

No attempt was made to prove the allegations contained in paragraph 2 of the Statement of Claim even though the Defendant denied them and put the Plaintiffs to a strict proof of the allegation. All the Plaintiff did in this regard was to call as sole witness a mendacious young man called Elieza Paul Rarry, who described himself as a law clerk in the office of Messrs. Udochi and Makanju.

In evidence-in-chief, this witness tried to make me believe that in course of his duty as a law clerk, he knew the Plaintiff as the proprietors of Trade Mark No. 73A “Palm Tree” label in respect of matches. The principal office of the Plaintiff is in Sweden he said. The witness also testified that the Plaintiff has an office in Nigeria. He did not tell me the address of the office either here in Nigeria or in Sweden. One of the curious aspects of this witness’ testimony is when he said that his employers (Messrs. Udochi and Makanju Solicitors) are the agents of these unidentified manufacturers of “Palm Tree” brand matches. I find it difficult to believe that a reputable firm of Solicitors like Messrs. Udochi and Makanju would be the agents of this matches manufacturers, the address of whose office either in Sweden or Nigeria, the witness did not tell the Court. I do not believe that Messrs. Udochi and Makanju are the agents of this matches manufacturers.

In course of his evidence, the witness said that he received the original of the Renewal Certificate of Registration. He put it thus “the original was collected by me from the Registrar of Trade Marks. I posted it to the Plaintiffs by registered post. Under cross-examination, the witness admitted that the Certificate of Registration was issued on 14/7/49 that is 19 years before he was employed by his employers. He turned round to say that he did not collect the original certificate but that it was posted to their office with a letter. He did not stop there, he went further to testify that he never posted any certificate to the Plaintiffs. At this stage, Mr. Makanju, quite rightly, in my view asked me to regard this aspect of this witness evidence as worthless. He asked the Court not to punish this rascal for the deliberate untruth. Mr. Oyebolu also joined in the appeal. In consequence of the pleas, I cautioned the witness. The witness however tendered Exhibits “D” and “E”.

When Mr. Makanju closed the Plaintiff’s case with sole witness, Mr. Oyebolu rested the Defendant’s case on the evidence adduced by the Plaintiff’s single witness.

In his address, Mr. Makanju said that the important thing was not an analytical comparison of the two Marks but what would strike the ordinary man. In support of this contention Mr. Makanju relied on the authority of Reddaway v. Bentham Hemp Spinning & Co. (1882) 2 Q. B. 639. As I remarked earlier on, the evidence adduced by the Plaintiffs’ witness in this case is very unsatisfactory. There is no evidence as to the time the Defendants started to infringe the Plaintiffs’ Mark and no evidence that anyone has been misled. At page 644 of the case of Reddaway v. Bentham Hemp Spinning & Coy supra. Lindley L. J. said:

“The fact that no proof can be given that anyone has been misled will be some evidence to show that no one is likely to be misled. But the absence of such proof is by no means conclusive; much must depend on the time the Defendants have been carrying on their business in the way complained of.”

I do not believe that the Plaintiff’s witness received all the copies of documents which he said he received. As there is no proof of the averment in the Statement of Claim and Mr. Makanju realising the hopelessness of the case prayed the Court not to dismiss his case but to make an order for a non suit.

Before deciding on what order to make, I like to draw attention to paragraphs 2 to 7 of the Statement of Claim which reads: –

  1. The Plaintiffs were entered on the Register of Trade Marks in Nigeria as Proprietors of the Trade Mark No. 73A (Palm Tree word and device) in Class 47 in respect of matches on the 5th day of March, 1907 and the registration was renewed thereafter for periods of 14 years on day dated 5th March.”

3. The Trade Mark registered in the United Kingdom on the 23rd day of September, 1884 under No. 39,796 and in Sweden on the 17th day of October, 1898 under No. 6,504.

4. The Plaintiffs have extensively used and continue to use the said Trade Mark and also the said word “Palmtree” as a Trade Mark upon matches manufactured by them since the year 1898 or thereabout.

5. By reason of the user alleged in paragraph four supra, the Plaintiff matches marked with the said Trade Mark word have become known to purchasers or intending purchasers as “Palmtree” word and device matches in the Match Industry meaning the matches made and sold by the Plaintiff.

6. The Plaintiff is accustomed to paste upon the matches manufactured and sold by them the “Palmtree” label and device as registered and renewed under Trade Mark No. 73A in class 47.

7. The Plaintiff has recently discovered, as the fact is, that the Defendants are selling matches not of the Plaintiff’s manufacture bearing a Mark consisting of the device showing palmtree and a man standing beside them showing a blue heaven and yellow ground with green and overgrown bushes on the bottom portion of which is the word safety matches and the top portion of which bearing the words “Papa”, and Palmtree” with the same initials “PA”, which label and device are so arranged and coloured similarly as the labels used by the Plaintiff, and be referred to in paragraph 5 hereof.

In paragraphs 3 and 6 of the Statement of Defence, the Defendants averred: –

  1. “The Defendant is not in a position to admit or deny the facts alleged in paragraphs 2, 3, 4, 5 and 6 of the Statement of Claim and will accordingly leave the Plaintiff to the strictest proof thereof.”
  2. “Furthermore, the Defendant avers that the labels, designs, devices and words which appear on the Defendants’ Papa Brand matches are sufficiently different and distinct from the Plaintiff’s Trade Mark to avoid any possibility of deception or of confusion with the said Trade Mark even if used for the same goods.”

The Plaintiff made no effort to prove the allegation in paragraph 2 of the Statement of Claim. In an attempt to prove the averments in paragraphs 4, 5 and 6 of the Statement of Claim, the Plaintiff’s witness tendered Exhibit “D”. The witness also tendered Exhibit “E” as the offending Mark. In an effort to substantiate the averment in paragraph 6 of the Statement of Defence learned Counsel for the defence went into a great length in cross-examination to spotlight the difference between Exhibits “D” and “E”.

In the case of W.B. MacIver & Co. Ltd v. C.F.A.O. 3 NLR 18 at page 19 the test to be applied is clearly stated thus: –

“To the trained eye of a civilized community, there is undoubtedly a considerable difference in the two designs set side by side and one would hardly be likely to be mistaken for the other, but while the broad principles laid down in English cases should not be applied, the Trade Mark Laws of this Country should be administered with due regard to local conditions and as stated by Osborne, Chief Justice, in the Houtman case, “with a view to protecting not only vast illiterate population little acquainted with pictorial representations, but the pioneers of trade who have earned reputation among of illiterate folk by quality of goods associated with some recognised Marks such as a particular bird, animal, tree or other objects”.

In deciding on what order to make, I shall bear in mind the justice of the case for both the Plaintiff and the Defendant. I may non-suit the Plaintiff where satisfactory evidence has not been given entitling either the Plaintiff or the Defendant to judgment. Lopes L.J. at page 645 in Reddaway v. Bentham Hemp Spinning & Co. (1892) 2 Q.B. 639 Supra, has this to say:

“The learned Judge thought there was no evidence adduced by the Plaintiff upon which the jury could reasonably act, withdrew the case from them and non-suited the Plaintiffs. The question which we have to consider is whether there was any evidence which ought to have been left to the Jury. The Court in determining this question will not be bound by any statement or admission of Counsel at the trial at Nisi Prius, but will look for themselves, at the whole evidence adduced by the Plaintiffs, and then decide upon a right holding that there was any evidence which ought to have been submitted to the jury.”

Having considered the evidence of the Plaintiff’s witness with regards to Exhibits “D” and “E” and the fact that the Defendants did not adduce any evidence to prove if their own Mark was registered, I am of the opinion that the justice of the case demands that the Plaintiff should be non-suited. See H.M. Darko v. Agyakwa 9 WACA 163 at page 167.

Plaintiff non-suited

Cases Cited:

Nigerian Cases

  1. H.M. Darko v. Agyakwa 9 W.A.C.A. 163 at 167
  2. MacIver & Co. Ltd. W.B. v. C.F.A.O. 3 N.L.R. 18

Foreign Cases

  1. Reddaway v. Bentham Hemp Spinning & Co. (1882) 2 Q.B. 639
  2. The Houtman case (cited by Osborne, Chief Justice – specific citation not provided)