Ayman Enterprises Ltd. v. Akuma Industries Ltd.

Law Cases and Principles

Ayman Enterprises Ltd. v. Akuma Industries Ltd.

Court: Supreme Court of Nigeria
Judgment Delivered: June 20, 2003
Citation: 46 NIPJD [SC. 2003] 116/1999
Suit No.: SC.116/1999
Jurisdiction: Nigeria

Coram:

  • Muhammadu Lawal Uwais, C.J.N.
  • Anthony I. Iguh, J.S.C.
  • Michael E. Ogundare, J.S.C.
  • Uthman Mohammed, J.S.C.
  • Umaru Atu Kalgo, J.S.C. (Delivered the Lead Judgment)

Appearances

  • For the Appellant: Sylvia Shinaba (with M. Jones)
  • For the Respondent: Tayo Oyetibo

Case Summary

Main Issue:
Whether the Federal High Court has jurisdiction to entertain a claim for passing-off involving an unregistered trademark under Nigerian law.

I. Facts

In 1996, Ayman Enterprises Ltd. filed a lawsuit at the Federal High Court, Lagos, against Akuma Industries Ltd., alleging that the defendants were selling wigs and hair attachments under the name “Original Queens” in packaging similar to the plaintiff’s “New Queen.” Neither party had registered their trademark. The Appellant had filed an application for trademark registration (TP24575/95), but it was still pending.

The Federal High Court initially granted injunctive relief and Anton Piller orders in favor of the Appellant. However, the Court of Appeal reversed the trial court’s decision, holding that the Federal High Court lacked jurisdiction over a passing-off claim involving an unregistered trademark. The Supreme Court upheld the Court of Appeal’s judgment.

II. Full Facts

The appellant, who was the plaintiff, instituted this action against the respondents as defendants in the Federal High Court, Lagos. In the writ of summons issued on June 26, 1996, the plaintiff/appellant claimed for:

  1. A perpetual injunction restraining the defendants and each of those upon whose behalf the defendants are sued, whether acting by themselves, their servants, assigns or privies or otherwise howsoever, from:
    • (i) Passing off or attempting to pass off wigs and hair attachments not of the plaintiff’s manufacture or merchandise as and for the goods of the plaintiff, using the trademark “Original Queens” or adopting a get-up identical to the plaintiff’s “New Queen.”
    • (ii) Manufacturing, importing, or selling wigs and hair attachments using any label or packaging bearing “Original Queens” or any words so similar as to cause confusion with “New Queen.”
    • (iii) Infringing the copyright in the artistic work, logo, and packaging of the “New Queen” brand.
  2. Delivery up for destruction under oath of all infringing wigs, attachments, packaging, printing blocks, and related materials in the defendants’ possession.
  3. An order for disclosure and accounting, requiring the defendants to produce an affidavit listing all transactions involving the infringing goods.
  4. ₦30,000.00 in damages, for the passing-off and copyright infringement of the plaintiff’s product.

The plaintiff also obtained Anton Piller and interlocutory injunction orders. The Court of Appeal later discharged these orders and held that the Federal High Court lacked jurisdiction. The Supreme Court affirmed that decision.

III. Supreme Court Holding

  • The Supreme Court held that passing-off related to unregistered trademarks is a common law action, not a statutory one under the Trade Marks Act.
  • The Federal High Court’s jurisdiction is limited to matters arising from Federal enactments, such as the Trade Marks Act, and does not cover common law torts unless a registered trademark is involved.
  • Therefore, jurisdiction in this case lies with a State High Court, not the Federal High Court.

IV. Final Judgment

  • Appeal Dismissed
  • Court of Appeal Judgment Affirmed
  • Federal High Court lacked jurisdiction

V. Legal Principles Affirmed

  • An action for passing-off based on an unregistered trademark is a common law tort.
  • Section 3 of the Trade Marks Act precludes infringement actions for unregistered marks, but preserves common law rights.
  • Such passing-off claims should be filed in the State High Court, not in the Federal High Court.
  • The decision in Patkun Industries Ltd. v. Niger Shoes Manufacturing Co. Ltd. only applies to registered trademarks.

VI. Cases Cited

  1. Patkun Industries Ltd. v. Niger Shoes Manufacturing Co. Ltd. (1988) 5 NWLR (Pt. 93) 138
  2. Gafai v. U.A.C. Ltd. (1961) 4 All NLR 785
  3. Bendir v. Anson (1936) 3 All ER 326
  4. Okafor v. Attorney-General, Anambra State (1991) 6 NWLR (Pt. 200) 659
  5. Oredoyin v. Arowolo (1989) 4 NWLR (Pt. 114) 172
  6. Fadunke Engineering v. McArthur (1995) 4 NWLR (Pt. 392) 640
  7. Ifezue v. Mbadugha (1984) 1 SCNLR 427
  8. Nwanezie v. Idris (1993) 3 NWLR (Pt. 279) 1
  9. State v. Onagoruwa (1992) 2 NWLR (Pt. 221) 33
  10. Alao v. Commissioner of Police (1987) 4 NWLR (Pt. 64) 199