A.B. Chami & Co Ltd. v. W.J. Bush & Company Limited

A.B. Chami & Co Ltd. v. W.J. Bush & Company Limited

Federal High Court, Kano, Nigeria
Judgement delivered on: 4 December 1996
Citation: 38 NIPJD [FHC. 1996] 115/1995
Suit No.: FHC/K/CS/115/95
Judge: Honourable Justice Mustapha

BETWEEN:

A.B. CHAMI & CO. LIMITED …Plaintiff

AND

W.J. BUSH & CO. LIMITED …Defendant

Charge: Trade Mark Infringement and Passing-off

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Facts

The Plaintiff, A.B. Chami & Co. Ltd., is the registered proprietor of the trademark ABARAIDADI & DEVICE, registered in 1958 for perfumery products and renewed in 1988. The mark, well-known in the Nigerian market, features a pyramid, pharaoh, visitor, and servant, with “ABARAIDADI” written in Hausa.

In April 1994, the Plaintiff noticed a sharp drop in sales and discovered that the Defendant, W.J. Bush & Co. Ltd., was marketing a perfume under the trademark EMI NINO & DEVICE. The Defendant’s packaging and device were alleged to be confusingly similar to the Plaintiff’s, causing consumer confusion and loss of sales.

The Plaintiff claimed that the Defendant’s use of EMI NINO & DEVICE amounted to infringement of its registered trademark and passing-off, and sought:

• An injunction restraining the Defendant from passing off or infringing the ABARAIDADI & DEVICE trademark;
• Destruction of infringing materials;
• Damages of ₦10 million or an account of profits;
• Costs and further relief.

The Defendant denied infringement and argued that the Plaintiff had no exclusive rights or ownership of the trademark.

Issues

1. Whether the Plaintiff proved exclusive right or ownership of the ABARAIDADI & DEVICE trademark.
2. Whether the Defendant infringed the Plaintiff’s proprietary rights or was guilty of passing-off.
3. Whether the Defendant was entitled to use the EMI NINO & DEVICE trademark.
4. Whether the Plaintiff was entitled to the remedies, including damages.

Held

1. Right Conferred by Registration – A validly registered trademark under Section 5(1) of the Trade Marks Act gives the proprietor the exclusive right to use the mark in respect of the registered goods and constitutes evidence of title.
2. Infringement – Infringement occurs when a non-proprietor uses an identical or nearly resembling mark likely to deceive or cause confusion in trade.
3. Locus Standi – A company, firm, or individual that is the registered proprietor has standing to sue for infringement.
4. Unregistered Marks – An unregistered mark’s proprietor cannot sue for infringement unless the mark is registered before commencement of the action.
5. Late Renewal – Late renewal does not render subsequent renewals illegal or void, provided renewal and restoration fees are paid.
6. Certificate of Registration – The certificate and extract of particulars are prima facie evidence of ownership and can be used in legal proceedings.
7. Passing-off – Defined as misrepresentation in trade leading consumers to believe one’s goods are those of another, causing actual or probable damage. Elements include:
   • Misrepresentation;
   • Made in the course of trade;
   • To prospective customers;
   • Causing injury to the goodwill of another trader;
   • Resulting in actual or probable damage.
8. Application of Facts – The Defendant’s RAIDADI/EMI NINO label, with similar device features (pyramid, pharaoh, servant, and visitors) and presentation, was likely to cause confusion with the Plaintiff’s mark.

Final Decision

• The Court found that the Plaintiff proved ownership and exclusive rights to the ABARAIDADI & DEVICE trademark.
• The Defendant’s EMI NINO/RAIDADI mark infringed the Plaintiff’s trademark and constituted passing-off.
• The Plaintiff was entitled to injunctive relief restraining the Defendant from using the infringing mark.
• The Plaintiff was awarded damages and granted the other reliefs sought.

JUDGMENT

Delivered by MUSTAPHA, J: The Plaintiff’s Claim as per its Amended Statement of Claim filed on 14th April, 1996 is as follows:

“(i) An injunction to restrain the Defendant, whether by its Directors, Officers, Servants and Agents or any of them or otherwise from doing the following acts that is to say passing-off the Plaintiff’s perfumery “ABARAIDADI” or infringing the Registered Trade Mark No. 9222 “ABARAIDADI” & DEVICE in Class 48 of the Plaintiff either by the use or in connection therewith in the course of trade of a get-up similar to that of the Plaintiff or any Colourable imitation thereof without clearly distinguishing such goods from the goods of the Plaintiff;

(ii) Obliteration and/or destruction or modification upon oath by the Defendant of all sorts and get-up upon all packages, labels, wrappers, signboard, advertisement and all printed or marked articles in the possession, custody or control of the Defendant, the use of which bearing the Mark would be a breach of the injunction prayed for.

(iii) An inquiry as to damages or at the Plaintiff’s option, an account of profits and payment of all sum found upon taking such an inquiry or account or damages of N10 Million.

(iv) Costs

(v) Further or other reliefs.”

After pleadings were filed and exchanged, the case went into trial. The Plaintiff called 3 witnesses in proof of its case and the Defendant called one witness in its Defence.

The first witness called for the Plaintiff is WALID UMAR TABBARA who is the General Manager of the Plaintiff’s Company in Jos and also in charge of its perfume factory. He has been with the Company since 1995. He informed the Court that the Plaintiff manufactures over 25 products of perfume including the brand of ABARAIDADI in Jos. It has been manufacturing the brand of ABARAIDADI since 1953 and that the name which is written in Hausa language on the label is the Company’s Trade Mark. The Trade Mark is described to be picture of a pyramid, a pharaoh, a visitor and a servant and was said to have been registered in 1958. It was tendered and admitted in evidence as Exhibit A. Upon registration of the Trade Mark, a Certificate of Registration No. 9222 was issued by the Registrar of Trade Marks. This was tendered and admitted in evidence as Exhibit B.

This Certificate was subsequently renewed in 1988 and a Certificate of Renewal of Registration issued by the Registrar was tendered and admitted in evidence as Exhibit B.1. In April 1994, the Plaintiff noticed a drop in the sale of its product, ABARAIDADI and so carried out an investigation, which revealed that its label of ABARAIDADI had been imitated by W.J. BUSH & COMPANY of Mission Road Kano. The label, ABARAIDADI was imitated, on top of which there are two words “EMI NINO” and at the bottom, the name of W.J. BUSH & CO. (NIGERIA) LTD of 188, Mission Road, Kano was put.

The imitated Trade Mark was tendered and admitted in evidence as Exhibit C. In October 1995, the Plaintiff came across other products of W.J. BUSH & COMPANY LTD with similar label of ABARAIDADI but instead of the name of the Trade Mark to read “ABARAIDADI” it reads “RAIDADI” written in Hausa language. The two words “EMI NINO” were repeated and there is also a pyramid on “RAIDADI”. The witness said that looking at the product from far away, you will think it is the same with the Company’s product. The alcoholic perfume bottle of W.J. BUSH & CO. bearing RAIDADI and EMI NINO was tendered and admitted in evidence as Exhibit D. He said that Exhibit C is an infringement of the Plaintiff’s label (Exhibit A) because the name Emi Nino is being used on the Plaintiff’s ABARAIDADI and DEVICE. The features on Exhibit A are described to be pyramid, pharaoh, visitor, servant with the name of ABARAIDADI written in Hausa language. He said that on Exhibit C, there is also the pyramid, pharaoh, visitors, servant with the name of ABARAIDADI written in Hausa language. On top of the label are the words EMI NINO. The similarity between Exhibit A and Exhibit D is that it has pyramid and flowers. He said there is little similarity with the colour. The Defendant having not sought the consent of the Plaintiff before using these similarities on their Mark, he instructed their Counsel to write to the Defendant about the infringement. The letter written to that effect was tendered and admitted in evidence as Exhibit E and reply by the Defendant Counsel denying infringing the Plaintiff’s Trade Mark was admitted in evidence as Exhibit E.1. The Defendants are said to be still infringing the Plaintiff’s Trade Mark.

Under cross-examination, the witness admitted that he did not make any complaint to the Registrar of Trade Marks about the infringement being complained of but the distributors complained that somebody was infringing the Plaintiff’s Trade Mark. When Exhibit D was shown to the witness, he observed that it has a pyramid, some candles with a man holding a bird with some flowers and there are Arabic words, RAIDADI. He said that the flower on Exhibits D and A look similar and that at close range, you can see the difference between Exhibits D and A but far from away they look the same. For Exhibits A and C, they are the same whether at close range or from far away. He admitted that before coming to Court, he asked his Counsel to write to the Defendant about infringement of ABARAIDADI and that he never complained about RAIDADI. He also admitted that the Plaintiff’s perfume and that of the Defendant do not smell the same thing, that the container in which the Plaintiff sells its perfume is different from that of the Defendant.

P.W.2 ALAHAJI BUBA AHMED informed the Court that he sells perfume and that he sells the Plaintiff’s product, ABARAIDADI as an individual. He has been doing so for about 30 years now. The product sells well but about two years back, the sales started to fall. His customers told him they have now got another product, ABARAIDADI. When Exhibit A was shown to the witness, he identified it as label of the Plaintiff’s product. He went to the Plaintiff to supply him with the present ABARAIDADI. He confirmed Exhibit C when shown to him as the ABARAIDADI he was referring to. He said that the Plaintiff told him Exhibit C was not its product.

Under cross-examination, he said it was the customers of his father who told him about the new ABARAIDADI. He saw it in the Market. It was not supplied to him by the Plaintiff who said it is not their product. When Exhibits A and C were shown to the witness, he said that there is no difference between the two. When, however, he was shown Exhibit D, he said that there are differences between Exhibit A and Exhibit D and that Exhibit D will not confuse him in the Market.

P.W.3 is MR DERNEY TAUNU, a Senior Assistant Registrar of Trade Marks, Patents and Designs with Federal Ministry of Commerce and Tourism, Commercial Law Department, Trade Marks Division. Through him, the Extract of Trade Marks particulars was tendered and admitted in evidence as Exhibit F.

Under cross-examination, he said that the proprietor has not, to his knowledge, raised any opposition against any other person registering a similar Trade Mark. He further said that the Registrar has power to listen to cases relating to oppositions and cancel existing conflicting Trade Marks. This has, however, not been done in respect of this case. He told the Court that one of the procedures to be followed before a Trade Mark is registered is search for that particular Trade Mark. The purpose of which is to know whether Trade Mark is available for registration. Once it is available, it has to be accepted for registration and once it is accepted for registration, the Applicant has the right to use that Trade Mark until there is opposition to the Trade Mark Registrar.

The only witness called by the Defendant is DOMINIC OKWUEJE, the Corporate Affairs Manager in the Defendant’s Company. He told the Court he has been with the Defendant for about 20 years and that it was originally registered as GEKA TRADING COMPANY LTD. However, by a Special Resolution in December 1964, the name was changed to W.J. BUSH & CO. LTD. The Certificate of Incorporation of GEKA TRADING COMPANY LTD. No. 966 issued on 22nd May, 1952 and the Certificate of Incorporation of W.J. BUSH & CO. (NIG) LTD. No. 966 issued on 5th March, 1965, were tendered through this witness and admitted in evidence as Exhibits G and G.1 respectively. He said that the allegation that the Defendant is infringing the Plaintiff’s Trade Mark is baseless because Defendant is not infringing and has been using the Trade Mark for many years as far back as the time the Defendant started operation i.e. when the Defendant was known and called GEKA COMPANY. The witness confirmed, when shown Exhibit C that it is the Trade Mark the Defendant has been using and when the name of the Company was changed in 1964, the Defendant continued to use the Trade Mark. No attempt was made to register the Trade Mark until January 1994 when the Defendant decided to register it. The necessary Application was got and payments were made. A search was also conducted in the Trade Marks Registry to ascertain if the Trade Mark, EMI NINO and DEVICE was available. The search confirmed that the Trade Mark was available. A certified copy of the Application for the availability of the EMI NINO IN CLASS 3 was tendered and admitted in evidence as Exhibit H. Attached to this Application was said to be the device with the name of EMI NINO on it as described in Exhibit C. This device sent to the Registrar for verification was tendered and admitted in evidence as Exhibit H.1. The Application was acknowledged by the Registrar of Trade Marks in a letter dated 14th January, 1994. The photocopy of this was admitted in evidence as Exhibit H.2. This was followed by a letter of acceptance dated 25th March, 1994 from the Registrar of Trade Marks in which the Defendant was informed that its Application has been accepted and would in due course be advertised in the Trade Marks Journal. This acceptance letter was admitted in evidence as Exhibit H.3. Witness identified Exhibit E as the letter sent from the Plaintiff saying the Defendant’s are infringing their Trade Marks. Attached to that letter is copy of their Trade Mark and device. He said that in the device, there are many similarities with the one the Defendant is using but that the Plaintiff removed EMI NINO and put ABARAIDADI. The letter was passed on to the Defendant’s Counsel who replied accordingly. Thereafter, the management of the Defendant met and decided to change their device in EMI NINO in order to retain the Defendant’s good will. And so the Defendant sent Application and filed the necessary forms to the Registrar of Trade Marks. After the search, acknowledgement letter was issued followed by acceptance letter. The acknowledgement letter dated 7th July, 1994 and the Acceptance letter dated 7th July, 1994 were tendered and admitted in evidence as Exhibits J and J.1 respectively. The new device sent for registration is said to have a man in between candles, three candles on each side and the man carrying a bird. There are also rose flowers on it. Witness identified Exhibit D as the new Trade Mark and device, which the Defendant sent for registration. Nobody has, however, complained about the alteration to the Defendant’s device. The Court was informed that in the last few months, the sales of the Defendant dropped drastically and it is still going down. Through this witness, a certified true copy of the Memo and Articles of the Defendant was tendered and admitted in evidence as Exhibit K.

Under cross-examination, the witness admitted that the Defendant’s Trade Mark should be advertised, the purpose of which is for other people to know whether the Trade Mark is being used already. He also admitted that advertisement has not yet been done, but that it is the responsibility of the Trade Marks Division of the Ministry of Commerce to advertise any Trade Mark made for registration and that the Defendant has not got Certificate of Registration. He said that the Defendant’s Company started operation in 1956 from which year it started manufacturing EMI NINO. It has other Trade Marks like PARIS and BINTA SUDAN that have been registered. He could not explain why EMI NINO was not sought to be registered until 1994, as that was the decision of the management.

At the end of the evidence led for the parties, each of the Counsel addressed the Court. In his own address, the learned Counsel for the Defendant formulated four issues for determination.

1. Whether the Plaintiff has proved its exclusive right or ownership of the Trade Mark known as ABARAIDADI and DEVICE as represented by Exhibit A.
2. Having regard to the available evidence, has the Defendant infringed Plaintiff’s proprietory rights of the Trade Mark in question or is the Defendant guilty of passing-off?
3. Is the Defendant entitled to the use of the Trade Mark, EMI NINO and Device as represented by Exhibits C and D?
4. Is the Plaintiff entitled to the remedies including damages demanded by it?

The learned Counsel submitted that Plaintiff has not on the balance of probabilities proved its exclusive rights or ownership of the Trade Mark, ABARAIDADI and Device represented by Exhibit A. Referring to Exhibits B and B.1, he argued that the person suing as the Plaintiff in this case i.e. A.B. CHAMI & CO LTD is not the registered owner of the Trade Mark in question i.e. ABARAIDADI and Device. He observed that the two Exhibits show that the owner of the Trade Mark is ALI BARAMAT CHAMI and not A.B. CHAMI & CO LTD and the addresses of the two persons are different.

He further observed that there is no evidence before the Court as to how the Plaintiff became the owner of the Trade Mark, in question and that ALI BARAMAT CHAMI who is a natural person and the rightful owner of the Trade Mark, is not a party to this action and has not complained of any infringement of his Trade Mark. He therefore submitted that the Plaintiff has no locus to bring this action and has no reasonable cause of action.

He referred to the case of Gomez v. P.W. (Nig) Ltd. 1995 6 NWLR (Part 402) 402 at P. 404 holdings 7 and 8 and submitted that onus is on the Plaintiff to disclose its locus standi and failure to do so is as fatal as failure to disclose a reasonable cause of action. He drew the Court’s attention to the fact that from Exhibit B, the Trade Mark was registered in 1957 and was renewed in 1988 after 31 years. He noted that there is no evidence of renewal after the first 7 years and 14 years. There is no explanation as to what happened in the period before it was renewed in 1988. He therefore submitted that failure to renew the Trade Mark within the prescribed period makes the ownership of whosoever is the owner defective and the renewal illegal because you can’t base an action on an illegality EXTURPI CAUSA NON ORITUR ACTIO. He cited in aid the case of Melwani v. Chanrai Corporation 1995 6 NWLR (part 402) 438 at P. 442 Holding No. 1. It was further submitted that Exhibit A which is the Trade Mark allegedly infringed is not the Trade Mark registered by the Registrar of Trade Marks for ALIBARAKAT CHAMI because the device on Exhibits B and B.1 is different from that on Exhibit A. On Exhibit F.i.e. Extract from Trade Mark Particulars, the learned Counsel contended that facts relating to that Exhibit were never pleaded by the Plaintiff. Evidence led on facts not pleaded goes to no issue and should be expunged from the record he urged upon the Court. Case of UBN LTD v. B.N. UMEH & SONS 1996 1 NWLR (part 425) 565 at p. 571 Holding 13 and 14 and Aforka v. A.C.B. (Nig) Ltd. 1994 3 NWLR (part 331) 217 at P. 219 Holding No. 5 were cited in support. He referred to Section 91 (3) of the Evidence Act and observed that it was during the pendency of this action that the Exhibit was prepared. It was argued that Plaintiff has not shown it is an incorporated body capable of suing and being sued and that the only way Plaintiff could prove its corporate existence is to produce its Certificate of Incorporation. The case of Apostolic Church Ilesha v. A.G. Mid West 1972 NSCC 247 at P. 452 was cited in aid. Referring to Section 36 (6) of Companies and Allied Matters Act, he contended that having not produced Memo and Articles of Association to see its objects, they have not shown they are a corporate body capable of bringing this action and carrying out the business. Referring to the cases of Progress Bank Nig Ltd v. Ugonno 1996 3 NWLR (part 435) 202 P. 207 RATIO 8 and Balogun v. UBA 1992 6 NWLR (part 247) 336 at P. 338 RATIO No. 2, he submitted that Plaintiff has abandoned the averment on its corporate existence having not led evidence on the point. He therefore urged the Court to strike out the averment that Plaintiff is a corporate body. He submitted that since Plaintiff is not a corporate body, it is not entitled to bring this action in the manner it has done and is also not entitled to carry out the production and sale of perfumery. And if it can’t produce and sell perfumery, it is not entitled to proprietory right over the Trade Mark in question.

On issue No. 2, the learned Counsel submitted that the Defendant has not infringed the Plaintiff’s Trade Mark. He argued that Plaintiff who has not established its proprietory right over the Trade Mark or its existence as a corporate body, cannot allege infringement of its Trade Mark. He referred to the evidence of D.W. 1 who told the Court that the Defendant has been using Trade Mark EMI NINO and Device (Exhibit C) since 1952 when the Defendant started operation and that steps were taken to register this Trade Mark in 1994. The Counsel submitted that even if the Plaintiff is a registered owner or proprietor of the Trade Mark, ABARAIDADI and Device, Section 7 of the Trade Marks Act CAP 436 does not allow the Plaintiff to interfere with the Defendant’s use of its own Trade Mark because the Defendant has been using its own Trade Mark before the Plaintiff did its registration. He referred to the case of America Cynamid Co. v. Vitality Pharm. Ltd. (1991) 2 NWLR (part 171) 15 at P. 18 Holding No. 2 on this proposition.

It was argued that having regard to the evidence of D.W.1, Exhibits H, H.1, H.2, and H.3 it cannot be said that the Defendant has infringed the Plaintiff’s Trade Mark assuming Plaintiff has any Trade Mark because the Defendant formally made an Application to the Registrar of Trade Marks and the Application was accepted for registration. Defendant also took steps required by law to register the Trade Mark. He submitted that if Exhibit C was confusingly identical with Exhibit A, the Registrar of Trade Marks would not have accepted it for registration more so that a search was carried out to show whether there was an identical Trade Mark already in existence.

According to the learned Counsel, once a Trade Mark is accepted for registration, the owner has unfettered right to use it from the date of acceptance. He noted that evidence has been led to show that the Defendant took an additional step to alter Exhibit C to Exhibit D both in name and device when it discovered in 1994 that Plaintiff was using its Trade Mark after removing EMI NINO from the Mark. The Defendant also took steps to register the new Mark i.e. Exhibit D which bears RAIDADI and no more ABARAIDADI. The Registrar also accepted Exhibit D for registration. He contended that it cannot be rightly alleged that Exhibit D infringes Exhibit A because Exhibit D is completely different from Exhibit A both in name and features and the use of Exhibit D has been officially authorised by its acceptance for registration by the Registrar of Trade Marks.

On issue No. 3, he submitted that the Defendant is entitled to the use of its Trade Mark, EMI NINO and Device. Having regard to Section 7 of the Trade Marks Act and the case of AMERICAN CYNAMID (supra)

Relying on Section 3 of the Trade Marks Act, he argued that no person shall be entitled to institute any proceedings to recover damages for infringement of an unregistered Trade Mark. He argued that if the Plaintiff has not shown by credible evidence that it is the owner of the Trade Mark in Exhibit A or that it is a corporate body entitled to own proprietory right over a Trade Mark or authorised by Companies and Allied Matters Act to manufacture and sell perfume, that it cannot be entitled to institute this action and cannot also allege that the Defendant is guilty of passing-off. He submitted that the devices and features are quite different and so the Defendant can’t be guilty of passing-off and furthermore, if anybody is guilty of passing-off, it is the Plaintiff because the Defendant has been using the Mark since 1952. According to the learned Counsel, the Plaintiff stumbled into the Mark in 1957 and started using it by cleverly removing EMI NINO from the Mark. Finally, he submitted that the Plaintiff is not entitled to damages for passing-off because it has not proved by credible evidence that the Defendant is passing-off its goods for their own and urged the Court to dismiss the case with substantial costs.

In his own address, the learned Counsel for the Plaintiff submitted that 21 Maraguta Road is one and the same street as 21 Ahmadu Bello Way and that the only difference is that there has been a change of name. Referring to Section 3 of the Trade Marks Act 1965 CAP 436, he said that the right conferred by the Act is exclusive and only enforceable by bringing an action for infringement predicated on registration but that the last sentence of Section 3 of the Act acknowledges the existence of another type of right outside the ambit of the Act. He argued that the right inherent under the common law is so wide and does neither require any form of registration nor that only a registered Company can enforce it. A person who has been known and associated with a particular name or device automatically has invested on him the right to prevent others from using such name or device and that the remedy for the breach of that right enables the Plaintiff to file an action for passing-off, he submitted. For this submission, he referred to KERLY’S LAW OF TRADE MARKS AND TRADE NAMES 12TH EDITION P. 344 PARAGRAPHS 16-02. He contended that acknowledgement from the Registrar of Trade Marks and letter of acceptance to register the Trade Mark from the Registrar of Trade Marks do not confer any right as they are just progressive steps in an administrative structure. Referring to Section 9 of the Trade Marks Act he submitted that in Trade Marks registration one could register a word, a device or any other distinctive Mark. He then referred to Paragraph 9 of the Amended Statement of Defence and contended that there was no mention of Acceptance Form. He therefore argued that the Defendant should not be allowed to tender any document relating to Acceptance Form. He observed that Exhibit H, which is Particulars of Search for Trade Mark, EMI NINO, in Class 3 makes no mention of device and that Exhibit H.2 which is the Acknowledgement Form makes no mention of device. He urged the Court to take notice of the date in Acknowledgement Form which is 14th January, 1994 and the Search Form which is also 14th January, 1994. The Acceptance Form bears 25th March, 1994 and according to him, an Acceptance comes a couple of months after Acknowledgement but the Certificate is dated 24th January, 1994. He argued that the document could not be certified by the Registrar before it was issued. He further observed that Exhibits G, G1 and K have been kept in safe custody by the Defendant but Exhibits H and H.2 were missing. According to the learned Counsel, they were missing because they are fraud and though Exhibit H.2 bears stamp Certified True Copy, it is not signed by any officer of the Trade Marks Registry. He referred to Exhibit F to drive home the point that all documents emanating from office of the Trade Marks Registrar must be signed by the Trade Marks Registrar or whoever is acting on his behalf. He also referred to Exhibits J and J.1 i.e., Acknowledgement Form and Acceptance Form and argued that it is impossible for the two Exhibits to be issued on the same day i.e. 7th July, 1994.

The learned Counsel submitted that the Plaintiff is the registered proprietor of the Trade Mark known as ABARAIDADI and Device (Exhibit A) registered on 26th April, 1957 as Enjoy Life and Device in Hausa Language. He referred to the affidavit deposed to on behalf of the Defendant dated 19th June, 1995 to the effect that the Plaintiffs are resident in Jos and argued that he is, therefore, estopped from questioning the existence of the Plaintiff. He contended that Paragraph 1 of the Amended Statement of Defence is a mere denial. Rather, Plaintiff has proved that the Company is in existence and producing perfume products more especially the product bearing Exhibit A. The submission that Plaintiff is not registered owner of the Trade Mark, he argued, shows desperation on the part of the Defendant to avoid liability. The issue, he contended, is not whether Plaintiff is a registered entity or not but it is that of the ownership of the Trade Mark. He submitted that the only way of proving ownership is through Exhibit F which is a compendium of all the facts relating to the Trade Marks; it contains the history of the Trade Mark and gives recent information about it. He referred to Sections 23(3) and 58(1) of the Trade Marks Act and Regulation 65 of the Regulations. He urged the Court to take a close look at Exhibit B which, according to him, reveals at the bottom thereof that this Certificate should not be the document on which the Court should rely in determining registration.

On proof of ownership, the learned Counsel submitted that ownership of a Trade Mark in the case of infringement is predicated on registration while in the case of passing-off, it is based on use. The only way ownership can be proved in an infringement action is by proving registration and the validity of that registration on the Register of Trade Marks on the date of the commencement of the action. He referred to Section 14 of the Trade Marks Act and Regulations 65 and 113 of Trade Marks Regulations 1967 on the procedure for proving registration and contended that Exhibit B cannot be used for legal proceedings and that possession of Certificate of Registration only presupposes that the Trade Mark is registered but the issue as to whether that registration is valid or that the Trade Mark still remains valid in the register requires that the Registrar of Trade Marks should issue another Certificate explaining in greater detail than the original Certificate of Registration the status of the Trade Mark as at the time the action was commenced. This other Certificate which is to be issued by the Registrar for the purpose of legal proceedings according to him, is known as ‘EXTRACT OF TRADE MARKS PARTICULARS’ which is Exhibit F in this case.

He argued that once an interested party pleads registration and ownership of the Trade Mark, the only way to prove registration is to tender a document issued by the Registrar. He said that registration was pleaded in Paragraph 3 of the Statement of Claim and Exhibit F is the way of proving it. On the argument that Exhibit F should be rejected because it was made in anticipation of legal proceedings, he submitted that the law requires that it should be made under that circumstance. On the argument that Exhibit F should not have been accepted by the Court, he submitted that it is an abuse of the Court process to raise that issue in the address, since there was a ruling on that by the Court against which the Defendant is entitled to appeal if aggrieved.

On proof of ownership in passing-off, he submitted that this is by extensive and long use. He relied on KERLY’S LAW OF TRADE MARKS AND TRADE NAMES TWELFTH EDITION PAGE 343. Referring to the evidence of P.W.1 and P.W.2 and Paragraph 12 of the Amended Statement of Defence and evidence of D.W.1, he submitted that the Plaintiff has proved on the preponderance of evidence that the Defendant passed off its goods as those of Plaintiff. In considering the issue of passing-off, he referred to the cases of Hodkinson & Corby v. Wards Morility Services Ltd. 1995 Fleet Street (Part 3) P. 169 At P. 175 Taittinger S.A. v. Allbev Ltd 1993 Fleet Street Report (Part ii) 641 At P. 665 and a book on Intellectual Property, Patent Copyright and Allied Rights 2nd Edition by W.R. CORNISH 412. He urged the Court to take into consideration the Plaintiff’s reputation in relation to the Trade Mark in question. He referred to Paragraph 5 of the Statement of Claim and traverse of the Defendant in Paragraph 4 of the Statement of Defence and contended that the fact that Plaintiff has built a wide, positive and long-standing goodwill and repute among members of the public, has not been controverted.

The Defendant’s Counsel’s Statement that the change effected from Exhibit C to Exhibit D was because the Defendant did not want anybody’s trouble is an admission that there is trouble in using the particular Trade Mark. He argued that what is in issue is the device and not the name, EMI NINO and since the Defendant has not given the Court any cogent reason why it effected the change, he urged the Court to hold that it is an acknowledgement of the fact that Exhibit C was deceptive and likely to cause confusion and did actually cause confusion in the minds of the public. He urged the Court to take into consideration the geographical area of operation of the parties. He said that the Plaintiff’s get-up is targeted at a certain geographical area within the jurisdiction of this Court and that there is a cultural affinity between the device and the area in which it is sold. He referred to Paragraphs 1, 2 and 3 of the Statement of Claim and the evidence of P.W.1 on this and submitted that the chances of confusion and deception are greater in the area in which the Defendant sold its product.

On issue No. 2 formulated by the Defendant, the learned Counsel said that the issue is whether Defendant in their former name as GEKA or in their present name, W.J. BUSH & CO. LTD. did commence production of the Trade Mark, EMI NINO and Device i.e. Exhibit C in 1952. He submitted that there is no proof that Defendant has been in prior use of the Trade Mark in 1952 as not one single distributor or retailer or any user was called by the Defendant to prove its case.

On the question whether the Defendant is entitled to register EMI NINO as represented by Exhibits C and D, he said that Exhibit C which is EMI NINO and Device infringe the Plaintiff’s registered Trade Mark which is the subject of this suit. He referred to Paragraph 8 of the Statement of Claim where it has been averred that the Plaintiff through their Solicitors alerted the Defendant to the fact that they took objection to the use of ABARAIDADI and Device. He then referred to the evidence of P.W.1 and D.W.1 to show that it was at this stage that the Defendant changed their device to Exhibit D and reapplied to register the Trade Mark, EMI NINO with their new device which does not infringe the Plaintiff’s earlier registered Trade Mark. He concedes the Defendant is entitled to register the word, EMI NINO but not entitled to register the word, EMI NINO and Device as shown in Exhibit C.

On remedy, it was submitted that even if the Court were to hold that the Plaintiff’s Trade Mark has not been infringed by the Defendant, the Plaintiff still has an action in passing-off. It was argued that by the use of Exhibit C, the Defendant has infringed the Plaintiff’s legal right and needs not to prove damages. He relied on the Supreme Court case of Soleh Boneh Overseas (Nig) Ltd v. Agboola Ayodele (1989) 1 NWLR (Pt. 549) at p. 559 and KERLY’S LAW OF TRADE MARKS P. 292 – 293 PARAGRAPHS 15.02 and 15.04 as well as S.5 of the Trade Marks Act.

Finally, he submitted that the Claims for the sum of N10m or inquiry into the account are vindicated on the fact that a man that had spent over 40 years toiling and building reputation within the ambit of the law should not be punished for this effort when people seek to destroy the reputation.

In reply, the learned Counsel for the Defendant contended that the submission that 21 MARAGUTA JOS is the same with 21 AHMADU BELLO WAY, JOS should be disregarded because there is no evidence in the Court’s record as to this explanation. He referred to the case of Prospect Textile Mills v. I.C.I. Plc England (1996) 6 NWLR (Part 457) 668 at p. 674 ratio 10. Calling in aid the case of Patkun v. Niger Shoes Manufacturing Co. Ltd. 1988 3 N.S.C.C. Vol. 19 (Part 3) 214 at 216 and 233 to 226 and 232 to 233, he contended that the right to bring an action for passing-off is a right conferred by statute i.e. Section 3 of the Trade Marks Act and not a Common Law right. He argued that the passing-off right is an incidence of infringement and that being the case, in the absence of any other evidence apart from what has been pleaded, the Plaintiff has no cause of action in passing-off like in the case of alleged infringement.

In other words, if the Plaintiff cannot bring an action for infringement, it cannot also bring an action for passing-off because it is not the rightful person to bring that action, since the Trade Mark out of which the passing-off arose belonged to somebody else, the Plaintiff having no proprietary right over that Trade Mark. He observed that the renewal of the Trade Mark was done in 1988 whereas the registration of the Mark was in 1958. He therefore argued that having not renewed within 7 years which contravenes Section 23 of the Trade Marks Act and Regulations 66, 67 and 68, the renewal is illegal. On Exhibit F on which the Plaintiff relied to show their ownership of the Trade Mark, Exhibit A, he submitted that there is a conflict between Exhibits F, B and B1 and urged the Court to reject them and the evidence relating to them. He referred to the cases of White v. Jack (1996) 2 NWLR (Part 431) 407 at P. 413 Ratio 8 and Adebayo v. Ighodalo (1996) 5 NWLR (Part 450) 507 at P. 510 Ratio 4 and 5. Referring to the cases of UBN Ltd v. B.U. Ume & Sons (supra) and also Chukwuma v. Chukwuma (supra) and Ipinlaiye v. Olukotun (1996) 6 NWLR (Part 453) 148 Ratio 11, he urged the Court to expunge Exhibit F from the record because no facts were pleaded relating to it.

On the submission that Exhibit D on the face of it should not be used in legal proceedings, he contended that the learned Counsel is estopped from raising the point because the Plaintiff pleaded it and tendered it in evidence. He then referred to Section 22(3) of the Trade Marks Act and Regulation 65 of the same Act which make it mandatory for the Registrar of a Trade Mark to issue to an Applicant, Certificate of Registration of a Trade Mark after it has been duly registered as evidence of registration. He contended that there is nothing in the Act preventing the use of Exhibit B in legal proceedings.

As for Exhibit E.3, he contended that the document needs not be specifically pleaded. He submitted that facts relating to the document have been pleaded and referred to Paragraph 9 of the Amended Statement of Defence and Amadi v. Olu Mati (1995) 7 NWLR (Part 410) 739. He regarded as misconceived the argument that Exhibits H, H2 and H3 referred to registration in Class 3 and do not show the Trade Mark is to be registered with its device. This is because Section 67(1) of the Trade Marks Act defines the ‘Mark’ to include device and so the Application to register that Mark includes device. He urged the Court to discountenance the submission that it is impossible to receive Exhibit H.2 on 14th January, 1994 which is the same day the Application for registration of the Trade Mark was submitted, because it amounts to giving evidence when a witness should have been called from the Trade Marks Registry to testify. Also urged to be discountenanced is the submission that it is not possible for an acceptance of Trade Mark to bear the same date with the acknowledgement of the Application. He referred to Regulations 33 and 34 of the Regulations which have not specified a period within which acceptance should be given out to an Applicant.

In reply to the submission that the Acceptance Form having been dated 25 March, 1994 and its Certification dated 24th January, 1994, the Certification is therefore a fraud, he contended that allegation of fraud cannot be made in the course of the Counsel’s address when he did not plead it in his Statement of Defence or give evidence about it. He referred to the case of Olufunmishe v. Falana (1990) 3 NWLR (Part 136) 1 at P. 5 and Section 138 of the Evidence Act which said such allegation must be proved beyond reasonable doubt. On Certification, he referred to Section 111 of the Evidence Act and the case of Kabue v. Araka (1996) NWLR (Part 433) 688 at P. 692. On the argument that Exhibits H, H1, H2, H3, J and J1 are forgeries, he said that the Exhibits were all pleaded and evidence led on them and there was no cross-examination on them. He therefore contended that it is not competent for the Counsel to say they are forgeries. He referred to the case of Bijou Nig. Ltd v. Obidaroniwo (1992) 6 NWLR (Part 249) 643 at P. 645 which held that evidence not controverted is deemed to be accepted by the other party. On the affidavit evidence deposed to earlier when the case was pending in Lagos, it was contended that the Plaintiff’s Counsel cannot rely on that affidavit to establish the fact that it is actually in existence in Jos when there was no prior Application made to the Court to use that evidence.

Finally, he urged the Court to dismiss the Claim of infringement and passing-off having regard to the pleadings and evidence of D.W.1. He referred in particular to Paragraphs 10, 11, 12, 13 and 14 of the Statement of Defence which pleaded prior use of the Trade Mark, Exhibit C and the evidence of D.W.1 which was not controverted or challenged and also submitted that having regard to evidence and law, the Plaintiff cannot be entitled to the remedies it sought and the entire case should be dismissed with substantial costs.

It would be seen from the Plaintiff’s Statement of Claim that this action is principally for passing-off of the Plaintiff’s perfumery, ABARAIDADI and infringement of the Registered Trade Mark No. 9222, ABARAIDADI & Device. I will first consider the issue of infringement. Section 5(1) and (2) of the Trade Marks Act CAP 436 hereinafter referred to as “the Act” deals with infringement of a registered Trade Mark. It provides that the registration of a person in Part A of the register as a proprietor of a Trade Mark (other than a Certification Trade Mark) in respect of any goods shall if valid, give or be deemed to have given to that person the exclusive right to the use of that Trade Mark in relation to those goods. That right shall be deemed to be infringed by any person who not being the proprietor of the Trade Mark or a registered user, thereof using it by way of permitted use, uses a Mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered. This brings us to the question whether Plaintiff has established its exclusive right or ownership of the Trade Mark known as ABARAIDADI & Device? Related to this is the submission that Plaintiff having not proved it is a corporate body, is not entitled to bring this action. In Paragraph 1 of the Statement of Claim, it is averred as follows:

“1. The Plaintiff is a Limited Liability Company Incorporated in the Federal Republic of Nigeria and having its head office at 21 Ahmadu Bello Way, Jos, Plateau State and carries on business there as manufacturers of and dealers in perfumery including toilet articles, preparations for teeth and hair and perfumed soap among others.

This will be compared with Paragraph 1 of the Amended Statement of Defence where the following is averred: –

“1. The Defendant denies Paragraph 1 of the Statement of Claim and avers that this fact is not within its knowledge.”

It is my view that this is not a sufficient traverse of the averment that the Plaintiff is a limited liability Company incorporated in Nigeria and having its head office at 21 Ahmadu Bello Way Jos and carries on business there as manufacturer of and dealers in perfumery including toilet articles, preparations for teeth and hair and perfumed soap among others. It was argued relying on the case of Registered Trustee of Apostolic Church Ilesha v. A.G. Mid West State (supra) that the only way to prove incorporation is to bring the Certificate of Incorporation. I have read that case. It did not hold that the only way to prove the incorporation of a Company is by producing such a Certificate. The following stated at P. 250 of the report: “Although evidence was led as to named persons being made trustees, the Certificate of Incorporation was never produced”. This point is not indeed bereft of judicial authority. For example, in the case of Oil Supply Centre v. Johnson (1987) 2 NWLR (part 38) 62, the Supreme Court held that to establish that a person is a shareholder of a Company, it is not mandatory that documentary evidence such as receipt or share certificate must be tendered.

This authority supports the conclusion that the production of the Certificate of Incorporation is not the only way of proving incorporation of Company. In any case, does the Plaintiff need to prove it is a corporate body in order to have locus to institute this suit? I don’t think so. For it is provided in Section 9(1) of the Act that a Trade Mark will be registrable in Part A of the Register if it contains or consists of at least name of a Company, individual, or firm, represented in a special or particular manner. A Trade Mark can therefore be registered by a corporate body, a firm or even an individual and any of these can bring an action for infringement of a registered Trade Mark, the Plaintiff needs only assert his registered title and allege the facts constituting infringement. The Mark must actually be registered at the date of commencement of the action. It is not enough that registration has been applied for but not yet granted, even though it will date back to date of Application if granted. HALBURY’S’ LAWS OF ENGLAND FOURTH EDITION PAGE 162 PARAGRAPH 245.

In his evidence P.W.1 informed the Court that the Plaintiff manufactures over 25 products of perfumes in Jos including a brand called ABARAIDADI which is written on the label in Hausa Language. The Plaintiff has been manufacturing ABARAIDADI SINCE 1955 and the same ABARAIDADI is its registered Trade Mark which was tendered and admitted in evidence as Exhibit A. It is worthy of note that Exhibit A consists of the picture of a pyramid, a pharaoh, and a servant. The name, ABARAIDADI is also written at the bottom of it in Arabic characters. Upon registration of the Trade Mark, Certificate of Registration was issued by the Registrar of Trade Marks. This Certificate which is in class 48 and numbered 9222 dated 26th April, 1957 was tendered and admitted in evidence as Exhibit B. It is in respect of perfumery (including toilet articles, preparation for the teeth and hair, and perfumed soap). It is shown further to have been registered in Part A (or B) of the Register in the name of ALI BARAKAT CHAMI, 21 Maraguta Street, P.O. Box 174, Jos, Nigeria. It was renewed on 26th April, 1988 in the name of A.B. CHAMI, 21 AHMADU BELLO STREET, P.O. BOX 66 JOS NIGERIA.

Exhibit B is thus the original registration of the Trade Mark, ABARAIDADI. Under Section 14 of the Act, in all legal proceedings relating to a Trade Mark, the original registration of the Trade Mark registered in Part A shall be taken to be valid in all respect unless the registration was obtained by fraud or the Trade Mark offended against Section 11 of the Act. Under Section 22(3) of the Act and Regulation 65 of the Trade Marks Regulation hereinafter referred to as “the Regulations”, on the registration of a Trade Mark, the Registrar shall issue to the applicant a Certificate of Registration i.e. Exhibit B. The registration if valid, gives to that person the exclusive right to the use of the Trade Mark in relation to those goods as per Section 5(1) of the Act. And it will be infringed by any person who not being the proprietor of the Trade Mark or a registered user thereof using it by way of the permitted use, uses a Mark identical with it, or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade in relation to any goods in respect of which it is registered. See Section 5(2) of the Act.

I will return to Exhibit B later. The Certificate of Registration was recovered in 1988 and a Certificate of Renewal of Registration was issued by the Registrar. This was tendered and admitted in evidence as Exhibit B.1. It was renewed in the name of A.B. CHAMI 21 AHMADU BELLO STREET, P.O. BOX 66 JOS NIGERIA. It was submitted that since the Certificate of Registration was not renewed until 1988 after a period of 31 years from the original registration, the renewal is an illegality. Section 23 of the Act provides that the registration of a Trade Mark shall be for a period of seven years after which the registration may be renewed at intervals of fourteen years from the date of expiration of the original registration or of the 1st renewal of registration. Where a Trade Mark was not renewed within the prescribed period, neither Section 23 of the Act nor Regulations 60, 67 and 68 of the Regulations say the subsequent renewal is an illegality. The concern of those provisions is the payment of renewal fee. If the renewal fee is not paid within the specified period, the Registrar shall advertise that fact in the Trade Marks Journal and if at the expiration of one month from the advertisement the fee is not paid, the Registrar may remove the Mark from the Register. Even then, upon payment of renewal fee and restoration fee, the Mark may be restored by the Registrar. There is no evidence before the Court that the Mark has been removed by the Registrar from the Register. It was in fact renewed in 1988 long before the institution of this suit. There is nothing illegal by that renewal.

It must be noted that in his evidence-in-chief, P.W. 3, Denny Teumu, a Senior Assistant Registrar, Trade Marks, informed the Court that he received a subpoena to tender a document i.e. Extract of Registration of Trade Mark ABARAIDADI NO. 9222, in this Court. The document was then tendered through him and admitted in evidence without objection as Exhibit F. Earlier before that when the document was sought to be admitted in evidence, it was rejected because evidence was not led to show that it emanated from the Registry of Trade Marks and that E.O. FENUYI who signed it was the Acting Registrar of Trade Marks. It is this Exhibit F that the learned Counsel for the Plaintiff has submitted, should be solely relied upon in proving ownership of the Trade Mark ABARAIDADI. Before determining that question, there is the contention that the Exhibit having not been pleaded and having been prepared during the pendency of this proceeding should be discountenanced by the Court. I do not think it is an abuse of process for the Defendant to ask for this prayer. The law on this point as expressed by Ogundare J.S.C. in Saraki v. Kotoye (1992) 9 NWLR (Part 264) 156 at 201 is that where evidence is tendered and objected to and the trial Judge after argument by Counsel for the parties, admits or rejects same, he cannot later when considering his judgment reverse himself without hearing the parties and that where evidence which goes to no issue has been inadvertently admitted, the trial Judge is under a duty to disregard it when considering his verdict. Going back to the contention of Defence Counsel, the Claim that Exhibit F was not pleaded was earlier raised when the document was first sought to be admitted in evidence and I rejected the contention in a considered Ruling delivered on 22nd January, 1996. I still stand by that Ruling.

On the other contention, it must be noted that Section 91(3) of the Evidence Act only renders inadmissible in evidence any statement made by a person interested at a time when proceedings were pending or anticipated. The document was prepared by the Registrar of Trade Marks who I do not consider to be person interested.

In determining the status of the Trade Mark, ABARAIDADI and Device, it is my view and this I hold, that reference has to be made to the Trade Mark, ABARAIDADI and Device (Exhibit A), Certificate of Registration No. 9222 (Exhibit B), Certificate of Renewal of Registration (Exhibit B.1) and Extract of Trade Marks Particulars (Exhibit F). In doing so, I am not unmindful of the fact that at the bottom of Exhibit B, the following is written inter alia: “This Certificate is not for use in legal proceedings or for obtaining Registration abroad”. I am constrained to reject this Statement because it is in conflict with several provisions of the Act. Under Section 22(3) of the Act and Regulation 65 of the Regulations, once a Trade Mark is registered, the Registrar is obligated to issue to the Applicant a Certificate of Registration. It is the registration of a Trade Mark that gives the Proprietor exclusive right to the use of the Mark in relation to the goods in respect of which it is registered and so is evidence of title. See Section 5(1) of the Act. Registration is also a condition precedent to an action for infringement of a Trade Mark. See Section 3 of the Act. Furthermore, it is enacted in Section 14(1) of the Act that in all legal proceedings relating to a Trade Mark registered in part A of the Register, the original registration of the Trade Mark shall after the expiration of seven years from the date of that registration, be taken to be valid unless the registration was obtained by fraud or the Trade Mark offends against the provisions of Section 11 of the Act. It is also provided in Section 49 of the Act that in all legal proceedings relating to a Registered Trade Mark, the fact that a person is registered as a proprietor of a Trade Mark shall be prima facie evidence of the validity of the original registration of the Trade Mark and of all subsequent assignments and transmissions. This provision therefore raises the presumption that the original registration is valid. It must also not be forgotten that since the Certificate of Registration was issued under the hand of the Registrar, then under Section 59 of the Act, it is prima facie evidence of the contents thereof. I will not forget to mention the case of Re William Crawford & Sons Application NO. 1 (1917) 34 RPC 97 cited in HALSBURY’S LAWS OF ENGLAND FOURTH EDITION P. 167 where it was held that Certificate of Registration is the legal and proper proof of registration.

Going back to these documents, it would be seen that the name on Exhibit B (Certificate of Registration) is ALI BARAKAT CHAMI of 21 MARAGUTA STREET, P.O. BOX 174, JOS, NIGERIA. But the name of the Plaintiff is A.B. CHAMI & CO. LTD. The two names are therefore different; whereas one is an individual, the other is a Company. It is well settled that a Company has its own separate legal personality and identity distinct from its members. See for example the case of Marina Nominees v. F.B.I.R (1986) 1 NWLR (Part 20) 56. By Exhibit B, the Trade Mark ABARAIDADI & Device was registered in Part A or B in the name of ALI BARAKAT CHAMI 21 MARAGUTA STREET, P.O. BOX 174 JOS, NIGERIA on 26th April, 1957 in Class 48 under NO. 9222 in respect of perfumery (including toilet articles, preparations for teeth and hair, and perfumed soap). This Certificate of Registration was renewed in 1988 as per Exhibit B.1 in the name of A.B. CHAMI, 21 AHMADU BELLO STREET, P.O. BOX 66 JOS, NIGERIA. Certainly, the name of A.B. CHAMI in Exhibit B.1 is different from the name of the Plaintiff in this case. Curiously, the Extract of Trade Marks Particulars (Exhibit F) has now shown the name of the proprietor of the Trade Mark as A.B. CHAMI & CO. LTD. of 21 Ahmadu Bello Street P.O. Box 66 Jos, Nigeria. Exhibit F is of course only prima-facie evidence of what is in its Register. See Section 39 of the Act. But it derives its force and potency from the Certificate of Registration (Exhibit B). The name and address on Exhibit F must therefore conform to that in Exhibit B and where this is not so, there must be evidence of change of ownership of the Trade Mark and address and the Application made to the Registrar to register the change. See Regulation 82 of the Regulations. In the event of assignment of a Registered Trade Mark, there must be evidence of the fact of assignment, Application made to the Registrar to register the Deed and the Certificate of Assignment issued by the Registrar. See Sections 28, 29 and 30 of the Act. There is no evidence of such assignment before the Court. The status of the Trade Mark, ABARAIDADI & Device No. 9222 is that its Proprietor remains ALI BARAKAT CHAMI, 21 MARAGUTA STREET P.O. BOX 174 JOS, NIGERIA. The Plaintiff is not ALI BARAKAT CHAMI. It has therefore not satisfied the condition precedent for instituting an action for infringement of the Trade Mark, ABARAIDADI NO. 9222 having failed to establish that the said Trade Mark was registered in its name.

Assuming without holding that Plaintiff is the Proprietor of the Trade Mark in question, the question may still be asked whether the Defendant has infringed the Trade Mark. The right of exclusive user is deemed to be infringed by any person who uses a Mark identical with or so nearly resembling the registered Mark as to be likely to deceive or cause confusion in the course of trade in relation to goods in respect of which it is registered. Did the Defendant use a Mark identical with or so nearly resembling the Registered Mark, one may ask. P.W.1 informed the Court that the Plaintiff manufactures over 25 products of perfume in Jos including a brand called ABARAIDADI. The label, ABARAIDADI, which is the Plaintiff’s Trade Mark was admitted in evidence as Exhibit A. It has the picture of a pyramid, a pharaoh, a visitor and a servant and name of ABARAIDADI written on the label. The Court was informed that in April 1994, the Plaintiff noted that the sale of its products, ABARAIDADI, dropped sharply and when investigation was carried out in the market, it was discovered that label of ABARAIDADI has been imitated by the Defendant. The infringing Trade Mark was admitted in evidence as Exhibit C. In October 1995, the Plaintiff also came across another product of the Defendant with similar label of ABARAIDADI but this time, the name read RAIDADI and the words EMI NINO. It has a pyramid on it and a pharaoh carrying a bird put above his head with his two hands. A bottle of perfume with the aforesaid Trade Mark was admitted in evidence as Exhibit D. I have observed, however, that the Trade Mark said to have been infringed i.e. Exhibit A is not the Trade Mark registered with the Registrar of Trade Marks which resulted in the issuing of Exhibits B and B.1. The device on Exhibit A is different from that on Exhibits B and B.1. In Exhibit A, there is picture of pyramid, a pharaoh, a visitor, a servant and the word ABARAIDADI written in Arabic characters. After the word ABARAIDADI, there are also words “MADE IN NIGERIA”. On the other hand, in Exhibits B and B.1, Certificate of Registration and Certificate of Renewal of Registration respectively, as well as Exhibit F i.e. Extract of Trade Mark Particulars, before the word, ABARAIDADI, there are no words “MADE IN NIGERIA” and only half of the body of the servant is seen and he is holding two sticks of flower unlike Exhibit A where the servant is fully seen holding only one stick of flower. We have a girl wearing a plain head gear not graduated standing in the centre holding a stick with both hands unlike Exhibit A where at the centre is a pharaoh wearing a graduated head gear and holding a stick by the left hand. Exhibit A is therefore not what was registered with the Registrar of Trade Marks. It is therefore an unregistered Trade Mark. The law is that no person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered Trade Mark. See Section 3 of the Act. I have seen Exhibit C, on it we have a pyramid, pharaoh and a servant and the name of ABARAIDADI. On top of the label, there are words EMI NINO and at the bottom, there are the words, “W.J. BUSH & CO. (NIGERIA) LTD. 186 Mission Road, Kano.” The features on Exhibits C and D are not similar to those on Exhibits B and B.1 and F. The Trade Mark on Exhibits C and D are not identical nor do they resemble the Trade Mark Registered as per Exhibits B and B.1 and F. Having concluded Exhibit A is an unregistered Trade Mark, it is unnecessary to consider whether or not the Defendant’s Mark has been in use prior to that of the Plaintiff. The Claims for the infringement of the Registered Trade Mark No. 9222 ABARAIDADI & Device in Class 48 fails and it is hereby dismissed.

The first arm of the Plaintiff’s Claim is an injunction to restrain the Defendant from passing-off the Plaintiff’s perfumery, ABARAIDADI. Passing-off is provided in Section 3 of the Act. It enacts:

“3. No person shall be entitled to institute any proceeding to prevent or to recover damages for, the infringement of an unregistered Trade Mark, but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”

In Patkun Industries Ltd. v. Niger Shoe Manufacturing Co. Ltd. 1988 NWLR 138 considering the above cited provisions of the, Act the Supreme Court identified two types of passing-off: passing-off which arises from infringement of a Registered Trade Mark and passing-off which postulated that the Plaintiff is marketing some goods and the Defendant is passing-off his own goods as and for the goods marketed by the Plaintiff. The Plaintiff in the instant case is claiming the second type of passing-off. A Plaintiff may fail to make out a case of infringement of a Trade Mark because he cannot prove its registration, or that its registration extends to the goods or to all the goods in question or because the registration is invalid, and may yet show that by imitating the Mark claimed as a Trade Mark, or otherwise, the Defendant has done what is calculated to pass-off his goods as those of the Plaintiff. See Kerly’s Law of Trade Marks and Trade Names Fourth Edition Page 555 Paragraphs 16 – 31. In the instant case, Plaintiff has failed to prove the registration of Exhibit A i.e. ABARAIDADI & Device and so the question is whether it has proved that the Defendant has done what is calculated to pass-off its goods as those of the Plaintiff. In doing so, the Plaintiff does not need to establish that it is a corporate body, as is being contended by the learned Counsel for the Defendant. Furthermore, since the claim here is not for passing-off arising from infringement of a registered Trade Mark, the argument that if the Plaintiff cannot show it is the owner of a Registered Trade Mark, it cannot allege the Defendant is guilty of passing-off does not avail the Defendant. The claim here is for passing off of the Plaintiff’s Perfumery, ABARAIDADI.

According to Agbaje J.S.C. (as he then was) in Patkun v. Niger Shoes Manufacturing Co. Ltd (supra) at P. 162 when it is said that something is passed off as something, it means no more than that something is falsely represented as something. In the Advocate Case (1980) R.P.C. 31, Lord Diplock stated the following as the necessary elements of a passing-off action.

(i) a misrepresentation.
(ii) Made by a trader in the course of trade.
(iii) To prospective customers of his or ultimate consumers of goods or service supplied by him;
(iv) Which is calculated to injure the business or goodwill of another trader and;
(v) Which cause actual damage to a business or goodwill of the trader or will probably do so.

Has the Plaintiff led evidence to prove those elements? Before reviewing further the evidence before the Court, I have found it appropriate at this stage to reproduce the entire Statement of Claim. It reads:

1. “The Plaintiff is a Limited Liability Company incorporated in the Federal Republic of Nigeria and having its head office at 21 Ahmadu Bello Way, Jos, Plateau State and carries on business there as manufacturer of and dealer in perfumery including toilet articles, preparations for teeth and hair and perfumed soap among others.
2. The Defendant is a Limited Liability Company with its head office at 168 Mission Road, Kano and carries on business as manufacturers of perfumery and other toiletries.
3. The Plaintiff is the Registered Proprietor of the Trade Mark ABARAIDADI & Device No. 9222 and has enjoyed long and uninterrupted benefits of proprietorship of the said Mark for a considerable length of time.
4. The Plaintiff has been manufacturing, distributing and selling its products, more especially perfumery under the ABARAIDADI & Device Trade Mark for sometime prior to the registration of the ABARAIDADI & Device Trade Mark on January 20, 1958 and ever since then.
5. The Plaintiff’s perfumery products sold under the Trade Mark, ABARAIDADI is well known in the Nigerian market and the said products have gained tremendous goodwill in the minds of the buying public.
6. That sometime, in April 1994, the Plaintiff noticed a sharp drop in the sale of its perfumery, ABARAIDADI and discovered that the drop was a result of the Defendant’s introduction of another perfume being sold by the Defendant under a Trade Mark “EMI NINO” which Device is confusingly similar to that of the Plaintiff.
7. Even though the EMI NINO & DEVICE” has not been registered, the Defendant, without lawful authority, continues to market its perfumery under the “EMI NINO & DEVICE” Trade Mark thereby taking unfair advantage of the Plaintiff’s goodwill in the ABARAIDADI & DEVICE Trade Mark and thereby causing the Plaintiff substantial loss in revenue and sales.
8. On or about 15th day of April, 1994, the Plaintiff caused its Solicitors, David Garrick & Co. to write a Cause & Desist letter to the Defendant to stop the unlawful sale of the Defendant’s perfumery under a Mark that is confusingly similar to that of the Plaintiff. The Plaintiff will rely on the Solicitor’s letter dated 13th April, 1994 and the reminder dated 28th September, 1994 at the trial of this action.
9. The Defendant through its Solicitor, G.A. Adolor & CO. replied the Plaintiff’s Solicitor’s letter claiming that the Defendant’s Trade Mark, EMI NINO & DEVICE was registered by the Trade Marks Registry in Abuja. The Plaintiff would rely on the Defendant’s Solicitor’s letter to the Plaintiff’s Solicitor’s letter dated 4th October, 1994.
10. The Plaintiff avers that the Defendant has no Registered Trade Mark known as EMI NINO & DEVICE in Nigeria, it cannot therefore claim to have authority and/or consent of the Plaintiff to sell the Defendant’s perfumery under the Trade Mark, EMI NINO & DEVICE.
11. The Defendant has continued to manufacture and sell its perfumery under the Trade Mark “EMI NINO & DEVICE” which is a continuing infringement of the Plaintiff’s Registered Trade Mark “ABARAIDADI & DEVICE”.

Whereupon the Plaintiff Claims as follows:
“(i) An injunction to restrain the Defendant, whether by its Directors, Officers, Servants and Agents or any of them or otherwise, from doing the following acts that is to say passing-off of the Plaintiff’s perfumery “ABARAIDADI” or infringing the Registered Trade Mark No. 9222 “ABARAIDADI” & DEVICE in Class 48 of the Plaintiff either by the use or in connection therewith in the cause of trade of a get-up similar to that of the Plaintiff or any colourable imitation thereof without clearly distinguishing such goods from the goods of the Plaintiff;
(ii) Obliteration and/or destruction or modification upon oath by the Defendant of all Marks and get-up upon all packages, labels, wrappers, signboard, advertisement and all printed or Marked articles in the possession, custody or control of the Defendant, the use of which bearing the Mark, would be a breach of the injunction prayed for;
(iii) An inquiry as to damages or at the Plaintiff’s option, an account of profits and payment of all sums found upon taking such an inquiry or account or damages of N10 million.
(iv) Costs.
(v) Further or other reliefs.”

It would be seen that the facts pleaded in the Statement of Claim are with respect to the infringement of the Plaintiff’s Registered Trade Mark, ABARAIDADI & Device No. 9222 and that no facts have been pleaded to support the Claim for passing-off of the Plaintiff’s perfumery ABARAIDADI. Though where Trade Mark action fails, passing-off action may still succeed on the same evidence, I dare say that separate facts must be pleaded to support actions for infringement and passing-off. And so, where separate facts have not been pleaded as in the instant case, you can’t rely on evidence led in support of infringement to find passing-off proved. It is well settled that any evidence which does not support a pleaded fact has no value and must be ignored as it is inadmissible. See for example the cases of Eboeka v. Amola (1988) 2 NWLR (Part 75) 128 at p. 154 and Adimora v. Ajufo 1988 2 NWLR (Part 80) 1 at P. 14.

I would like to recall that the Plaintiff’s action was initially for infringement and did not include that of passing-off. It was indeed after Plaintiff had closed its case and before commencement of Defence that leave was sought and granted to it to amend the Statement of Claim to simply include passing-off. This case would have ended here but assuming I am wrong in my conclusion that facts have not been pleaded to support the Claim for passing-off, it would be necessary to consider the evidence led before the Court to find out whether or not Plaintiff has on balance of probabilities, proved that the Defendant has done what is calculated to pass-off its goods as those of the Plaintiff.

P.W.1 informed the Court that the Plaintiff manufactures over 25 products of perfume including ABARAIDADI, a brand which it has been manufacturing since 1955. He said that the name, ABARAIDADI is written in Hausa Language on a label which includes a pyramid, a pharaoh visitor and a servant and that was its Trade Mark. This was admitted in evidence as Exhibit A. The Plaintiff has failed to prove before this Court that Exhibit A was registered with the Registrar of Trade Marks. Witness went on to inform the Court that sometime in April, 1994, the Plaintiff noticed a drop in the sales of its product ABARAIDADI and so carried out an investigation which revealed that its label of ABARAIDADI has been imitated by the Defendant. The imitated Mark was admitted in evidence as Exhibit C. He also told the Court that in October 1995, the Plaintiff came across in other products of the Defendant similar label of ABARAIDADI but instead of name of the product to read ABARAIDADI, it read RAIDADI written in Hausa Language. This product was admitted in evidence as Exhibit D.

The three Exhibits are relevant in the consideration of this Claim. I will first consider Exhibit C.

The Court was informed that the Defendant took steps in January, 1994 to register its Trade Mark i.e. Exhibit C and it was accepted for registration by the Registrar of Trade Marks. It was submitted that if Exhibit C was confusingly identical with Exhibit A, the Registrar would not have accepted it for registration since a search was carried out to find out whether there was an identical Trade Mark already in existence. Exhibit H is the Application for the availability of a Mark, Exhibit H.1 is the device sent to the Registrar of Trade Marks for verification, Exhibit H.2 is the acknowledgement from the Registrar and Exhibit H.3 is the Acceptance from the Registrar.

It is indicated thereon that the Application in respect of EMI NINO in Class 3 has been accepted and numbered TF 20955 and will in due course be advertised in the Trade Marks Journal. I will pause here to comment on Exhibits H, H.2 and H.3. It was submitted by the learned Counsel for the Plaintiff that the aforesaid Exhibits are fraud. It was argued that it is impossible to receive Exhibit H on 14th January, 1994 and for Exhibit H.2 to be issued on the same 14th January, 1994. It was observed that Exhibit H.3 is dated 25th March, 1994 and argued that such a Form comes a couple of months after acknowledgement.

It was also observed that whereas the date on Exhibit H.3 is 25th March, 1994, its Certificate is 24th January, 1994. It was therefore argued that Exhibit H.3 could not be certified by the Registrar before it was issued. I agree that the learned Counsel cannot allege fraud in his address when he did not plead same. In Leathy Kelly v. Glover (1893) 10 R.P.C. 141, the High Court held that if a charge of fraud is to be made at the trial, it is essential that it should put forward clearly and prominently on the pleadings. And in Bulmer v. Bollinger (1978) R.P.C. 79 where fraud was neither pleaded nor suggested in cross-examination, a finding of fraud was held to be unjustified. And in the case of Olufunmise v. Falana (supra), the Supreme Court held that an allegation of fraud must be pleaded and established in evidence and where no fraud is alleged, evidence of fraud will not be allowed at the trial and if allowed will be expunged on appeal. I will now go back to the issue of the Registrar accepting the Defendant’s Trade Mark EMI NINO, for registration. It should be noted that by Section 19(1) of the Act when an Application for registration of a Trade Mark has been accepted, the Registrar shall thereafter cause notice of the Application as accepted to be published in the Trade Marks Journal and by Section 20(1) of the Act, any person may within two months from the date of the publication give notice to the Registrar of opposition to the registration. It is only after the Application has not been opposed and the time for notice of opposition has expired or the Application has been opposed and the opposition has been decided in favour of the Applicant that the Registrar shall register the Trade Mark and on registration, issue to the Applicant a Certificate of Registration. See Section 22 of the Act.

In his evidence-in-chief, D.W.1 said that the Defendant has not yet received Certificate from the Registrar. He also admitted under cross-examination that advertisement has not yet been done in the Trade Marks Journal. It is my view therefore that acceptance of Exhibit C for registration is not conclusive that it is not confusingly identical with Exhibit A because at that stage Exhibit C had not yet been advertised not to talk of Certificate of Registration being issued by the Registrar. The combined effect of Sections 18, 19, 20, 21 and 22 of the Act is that acceptance of Exhibit C by the Registrar of Trade Marks for Registration simpliciter cannot confer any special right on the Defendant to use a Mark which may be identical to that of the Plaintiff.

In his evidence-in-chief, P.W.1 said:

“On Exhibit C we are objecting that they are using the name of EMI ABARAIDADI & Device on our perfumery ABARAIDADI & Device and this is an infringement of our label”.

This, in my view, is not evidence of passing-off of the Plaintiff’s perfumery ABARAIDADI but rather, evidence of infringement of Exhibit C. The witness went on to tell the Court that the Defendant was informed of the infringement and that the Plaintiff’s Counsel was instructed to write to the Defendant. The letter written was admitted in evidence as Exhibit E. Its complaint is also on infringement. It reads inter alia:

“We have just been informed by our clients that they have discovered in the market perfume product being sold under the well known Mark of our clients “ABARAIDADI” with your name conspicuously written on the forged “ABARAIDADI” label of our clients’ property right in their registered Trade Mark”.

On similarity between Exhibit A and Exhibit C, P.W.1 said in his evidence-in-chief:

“Exhibits A and C are 100 per cent the same. It is like a photocopy”.

When Exhibits A and C were shown to P.W. 2 under cross-examination, this is what he said:

“There is no difference between the two. On picture, I cannot distinguish because they are all the same”.

It is my view that Exhibit C (Defendant’s Mark) nearly resembles Exhibit A (Plaintiff’s Mark) as to likely deceive or cause confusion. But this is a Claim for passing-off the Plaintiff’s perfumery, ABARAIDADI and not Claim for infringement or passing-off arising from infringement of a registered Trade Mark where comparison is to be made between the Marks as registered.

In Saville Perfumery Co. Ltd v. June Perfect Ltd. (1914) 58 R.P.C. 47, it was held that in infringement, it is the Marks themselves that must be compared. Therefore where it is the passing-off of goods, it is my view that it is the goods that must be compared. The Plaintiff should have produced before this Court the goods, i.e. perfumery

It is my view that Exhibit C (Defendant’s Mark) nearly resembles Exhibit A (Plaintiff’s Mark) as to likely deceive or cause confusion. But this is a Claim for passing-off the Plaintiff’s perfumery, ABARAIDADI and not Claim for infringement or passing-off arising from infringement of a registered Trade Mark where comparison is to be made between the Marks as registered. In Saville Perfumery Co. Ltd v. June Perfect Ltd. (1914) 58 R.P.C. 47, it was held that in infringement, it is the Marks themselves that must be compared. Therefore where it is the passing-off of goods, it is my view that it is the goods that must be compared. The Plaintiff should have produced before this Court the goods, i.e., perfumery ABARAIDADI upon which Exhibit A was affixed and the Defendant’s goods upon which Exhibit C was affixed. The Court will then, make a comparison between the two goods and taking cognisance of the fact that a customer will not necessarily have the opportunity of seeing the goods side by side and allowing for imperfect recollection by a person of ordinary memory conclude whether or not there will be confusion between the Defendant’s goods and that of Plaintiff and that members of the public will be confused as to whether they are getting the Plaintiff’s goods or the Defendant’s goods.

The necessity of having the two products before the Court is further underscored by the admission of P.W.1 under cross-examination that the Plaintiff’s perfume and that of Defendant do not smell the same way i.e. they have different aroma and that the container in which the Plaintiff sells its perfume product is different from that of the Defendant. If as the Plaintiff said, it discovered in a Market, perfume product being sold under the Mark, ABARAIDADI with the name of the Defendant conspicuously written on the forged ABARAIDADI label of the Plaintiff, then I am at a loss why the perfume product was not brought to Court. Failure of the Plaintiff to bring before the Court its product i.e. perfumery, ABARAIDADI, and the perfume product being sold under the Mark, ABARAIDADI with the name of the Defendant written on the forged ABARAIDADI label of Plaintiff is in my view and this I hold, fatal to its Claim for passing-off.

Even then, it is not enough to show that Exhibit C nearly resembles Exhibit A as to likely cause confusion. The Plaintiff has to further prove a reputation or goodwill attached to the perfumery under the ABARAIDADI name sufficient for members of the public to be misled by the Defendant’s conduct into thinking that they are securing the goods of the Plaintiff. It will have to demonstrate the volume of its sales and supplement that by evidence from traders and public of the meaning that they attach to the distinguishing features of the Plaintiff’s goods saying for instance that they have long understood the Trade Mark ABARAIDADI to denote the perfume of Plaintiff. See on this Intellectual Property, Patents, Copyright, Trade Marks Second Edition page 404 paragraphs 16–004 by W.R. Cornish. On the volume of sale, this is what P.W.1 said:

“In April 1994, we noticed that the sales of this product, ABARAIDADI, has dropped sharply in the Market.”

What was the volume of sales in the year preceding 1994 and what was the volume of sale in 1994? The Court was not told. I do not think it is enough to say the volume of sales have dropped without stating the yearly turnover of the Plaintiff before and after 1994.

The Plaintiff called one of its customers as a witness. This is what ALHAJI NURA AHMED P.W. 2 said:

“I sell perfume. I sell the Plaintiff’s product. I do sell ABARAIDADI. I sell it as an individual. I have been selling ABARAIDADI for 30 years now. About two years ago, the sales of ABARAIDADI started to fall.”

When Exhibit A was shown to P.W.2, he simply identified it as label of the Plaintiff’s product and told the Court under cross-examination that there is no difference between Exhibit A and Exhibit C. The Evidence led in my view falls short of proving a reputation or goodwill sufficient for members of the public to be misled by the Defendant’s conduct into thinking that they are securing the goods of the Plaintiff.

I would not forget to mention the fact that the Defendant’s perfumery product which is in evidence has been admitted not to be similar to the Plaintiff’s perfumery product. In his evidence-in-chief, P.W. 1 informed the Court that in October 1995, the Plaintiff came across in other products of the Defendant, similar label of ABARAIDADI but instead of the Trade Mark to read ABARAIDADI, it reads RAIDADI written in Hausa Language. He identified the Defendant’s bottle of perfumery and this was admitted in evidence as Exhibit D. He admitted under cross-examination that there are differences between Exhibit D and Exhibit A. He said that the differences are seen at close range but that far away, you would think they are the same. He also admitted that the aroma of the Plaintiff’s perfume is different from that of the Defendant and that the container in which the Plaintiff’s perfume is sold, is different from that of the Defendant. Also when Exhibits D and A were shown to P.W.2 under cross-examination, he admitted that there are differences between the two Exhibits and that he would not be confused in the market. I have compared Exhibit D with Exhibit A and it is my opinion and this I hold, that Exhibit D is not identical with Exhibit A as to be likely to confuse the public.

For the various reasons which I have given above, I hold that the Plaintiff has failed to prove that the Defendant has done what is calculated to pass off its goods as those of the Plaintiff. The Claim for passing-off is hereby dismissed. It is therefore unnecessary to consider the Defence of prior use. Having dismissed the Claims for infringement and passing-off, Claims (ii) (iii) and (iv) are consequently dismissed.