Azonobi v. Arthur Buchting (Nig.) Ltd
High Court of Lagos
Judgement delivered on: Monday, June 19, 1967
Jurisdiction: Nigeria
BEFORE: Honourable Justice Adedipe
BETWEEN
Azonobi ……………………………………………………………… Plaintiff
AND
Arthur Buchting (Nig.) Ltd. ………………………………………………………. Defendant
Appearances: Awosanya for the Plaintiff; Bickersteth for the Defendant
I. BACKGROUND
The plaintiff, a Lagos-based shoe dealer, registered the trademark “SAC” in 1962. Before registration, he had been importing SAC shoes through United Trading Co., which sourced them from the French manufacturer Societe Anonyme des Chaussares. The term “SAC” came from the initials of the manufacturer’s name and was already registered in France.
The defendant, acting on instructions from its German principal (an agent of the SAC manufacturer), obtained 180 pairs of SAC shoes from Liberia and sold them in Nigeria, including to one of the plaintiff’s regular customers. The plaintiff alleged trademark infringement and passing-off, seeking damages and an injunction.
Evidence revealed that SAC shoes had been sold in Nigeria before the plaintiff’s registration by multiple dealers, including G.B. Ollivant & Co., and that the plaintiff knew of the manufacturer’s prior use before registering the mark in Nigeria.
Key Legal Principles
- Honest Use to Avoid Public Deception
- A trademark must distinguish the proprietor’s goods from those of others. Using a manufacturer’s existing mark without change undermines this purpose (In re Worthington & Co.’s Trade Mark).
- Prior Continuous Use – Section 48, Trade Marks Act (Cap. 199)
- The Act protects prior continuous use of a trademark by others before registration. Since SAC had been sold in Nigeria before 1962, the plaintiff could not restrain such sales.
- Passing-Off Requires Misrepresentation
- To succeed, the plaintiff must prove the defendant misrepresented goods as his own. No such evidence was provided.
- Proprietorship and Distinctiveness
- Registering a foreign manufacturer’s mark without modification does not give exclusivity against legitimate sellers of that brand.
Issues
- Whether the plaintiff was the original proprietor of the “SAC” trademark in Nigeria.
- Whether the defendant’s sale of SAC shoes amounted to infringement.
- Whether the defendant’s conduct constituted passing-off.
Decision
The court held that:
- The SAC mark belonged to the French manufacturer and had been in use in Nigeria before the plaintiff’s registration.
- Under Section 48 of the Trade Marks Act, the defendant’s prior use could not be restrained.
- There was no evidence of passing-off.
Outcome: Plaintiff’s claims dismissed; injunction refused; 30 guineas costs awarded to the defendant.
II. FACTS
The Plaintiff is a shoe dealer and the registered proprietor of a Trade Mark known as “SAC” which he registered in 1962. Prior to registration in 1962, the Plaintiff had been buying SAC shoes through the United Trading Co. which ordered these shoes directly from the manufacturers, Societe Anonyme des Chaussares, a shoe manufacturing company in France. The word “SAC” represents the first letters of each of the words which make up the name of the manufacturers and to the Plaintiff’s knowledge is also the registered Trade Mark of the French company in France.
The Defendant, on the instructions of its principal in Hamburg, Germany, obtained shipment of about 180 pairs of SAC shoes from Liberia and sold same to several persons including one of the Plaintiff’s customers.
The Plaintiff instituted this action against the Defendant claiming damages for infringement, an injunction and passing off.
ISSUE
Whether the Plaintiff is the original owner of the Trade Mark to entitle him to the reliefs sought.
HELD
Public Deception – duty on Applicant to prove intention to avoid deception.
An applicant seeking to register a Mark must show that he honestly seeks to distinguish his goods from those of others in order to avoid public deception which can be avoided by choosing a mark clearly different from that of others.
“The mark ‘SAC’ printed on the shoes sold by the Plaintiff, the Defendant and all those who sell SAC shoes, was printed on them not because it is the Trade Mark of the Plaintiff, but because it was the Trade Mark of the manufacturers themselves. There was no better way by which the Plaintiff could distinguish his own shoes than by asking the manufacturers to use a Trade Mark which he invented himself, and not their own, on shoes which he ordered from them. He could have used the word ‘Jazo’, but he never did, for obvious reasons.”
III. JUDGEMENT
Delivered by ADEDlPE, J.:
The Plaintiff claims:
- £10,000 damages from the Defendant for infringement of his registered Trade Mark No. 12492.
- An injunction to restrain the Defendant from infringing his registered Trade Mark No. 12492.
- An injunction to restrain the Defendant from passing off goods not of the Plaintiff’s manufacture as and for the goods of the Plaintiff.
On January 29th, 1962, the Plaintiff registered in Lagos a Trade Mark known as “SAC” and a Certificate of Registration was issued to him under s.22 of the Trade Marks Act (cap. 199). The Trade Mark “SAC” was not invented by the Plaintiff. Before he registered it in 1962, he had been buying SAC shoes through the United Trading Co. which ordered these shoes directly from the manufacturers, Societe Anonyme des Chaussares, one of the biggest shoe manufacturers in France. The word “SAC” represents the first letters of each of the words which make up the name of the manufacturers and evidence was given that the word is the registered Trade Mark of the French company in France.
About 180 pairs of SAC shoes were shipped to the Defendant from Liberia on the instructions of the Defendant’s principal, Mr. Arthur Buchting of Hamburg, Germany, who is the agent of the SAC shoe manufacturers in Hamburg, when the Liberian Company had refused to take delivery of 360 pairs of shoes sent there. The Defendant did not order the 180 pairs of shoes, and there is no evidence that the Company has ordered any before or since. All the 180 pairs had been sold and, according to the evidence before the Court, at a loss.
One Lambert Maduka, a witness for the Plaintiff, bought 30 pairs of SAC shoes from the Defendant on March 5th, 1965. Before then, he had been buying SAC shoes from the Plaintiff. He paid 36/- per pair to the Defendant, instead of 50/- which he had been paying the Plaintiff. He took a pair of the shoes to the Plaintiff and told him where he had obtained them. The Plaintiff later went to the Defendant’s showroom at Dosunmu Street, where he found similar shoes displayed. He complained to the Manager who pushed him out of the showroom, after which he instructed his Solicitors to institute this action.
The United Trading Co., which ordered SAC shoes for the Plaintiff, is still selling this kind of shoe. G.B. Ollivant & Co. and the Nigerian Modern Stores were also selling SAC shoes till now. The Plaintiff knew that the Trade Mark had been in use before he registered it. This is part of his evidence.
“Before 1962, I saw samples of the shoes at the United Trading Co.’s premises marked ‘SAC made in France’. The Trade Mark ‘SAC’ was not designed by me, it had been in use by the French manufacturers. I decided to register the Trade Mark after I knew that it was used in France. I did not design the shoes which I ordered.”
There is evidence that when the Plaintiff applied to register the Trade Mark, the Defendant Company objected to the registration on behalf of its clients, but later withdrew its objection.
The Trade Mark “SAC” was in use in Nigeria, though not registered there, long before the Plaintiff registered it. The proviso to s.48 of the Trade Marks Act (cap. 199) reads:
“… [N]othing in this Act shall entitle the proprietor of a registered Trade Mark to interfere with or restrain the use by any person of a similar Trade Mark upon or in connection with goods upon or in connection with which such person had, by himself or his predecessors in business, continuously used such Trade Mark from a date anterior to the use of the first-mentioned Trade Mark by the proprietor thereof or his predecessors in business …”
The definition of the words “Trade Mark” in the Act is not restricted to a Mark used or registered in Nigeria only.
The Mark “SAC” printed on the shoes sold by the Plaintiff, the Defendant and all those who sell SAC shoes, was printed on them not because it is the Trade Mark of the Plaintiff, but because it was the Trade Mark of the manufacturers themselves. There was no better way by which the Plaintiff could distinguish his own shoes than by asking the manufacturers to use a Trade Mark which he invented himself, and not their own, on shoes which he ordered from them. He could have used the word “Jazo”, but he never did, for obvious reasons.
Jessel, M.R. in In re Worthington & Co.’s Trade Mark 14 Ch. D. at 10; 42 L.T. at 564 (2) stated as follows:
“Here the business of Worthington & Co. is represented to me as an old-established business, which makes a good article, and must be anxious that such good article should be distinguished from all other articles made in the same trade. If the proprietor of that business is an honest man and honestly desirous of distinguishing his goods by a Trade Mark from the goods of anybody else, because his anxiety and desire must be that the public shall by no possibility mistake his goods for the goods made by anybody else.”
SAC shoes were made by the manufacturers not for the Plaintiff alone, but for the public at large, that is, for anyone who cares to order them. On the evidence before me and in view of the proviso to s.48, this claim must fail.
On passing-off, there is no evidence that the Defendant passed off his goods to anyone as the goods of the Plaintiff. I refuse to grant any injunction in this case, and I refer to Procter v. Bayley.
I will, therefore, dismiss the Plaintiff’s claim and, as I have said before, refuse the injunction asked for. I award 30 Guineas costs in favour of the Defendant.
Judgment for the Defendant.
Cases Cited:
- Procter v. Bayley (1889), 42 Ch. D. 390; 61 L.T. 752.
- In re Worthington & Co.’s Trade Mark (1880), 14 Ch. D. 8; L.T. 563.
Statutes:
Trade Marks Act (Laws of the Federation of Nigeria and Lagos, 1958, cap. 199), Ss. 22, 48 (lines 32–39).
