Alban Pharmacy Ltd. v. Sterling Products International Inc.

Law Cases and Principles

Alban Pharmacy Ltd. v. Sterling Products International Inc.

Court: Supreme Court of Nigeria
Judgment Delivered: Friday, 1 November 1968
Citation: 11 NIPJD [SC. 1968] 459/1966
Suit No.: SC. 459/1966
Jurisdiction: Nigeria
Judgment Delivered By: Ademola, C.J.N.

Appearances

  • For the Appellant: David Garrick (with Tomising)
  • For the Respondents Somoye

BEFORE THEIR LORDSHIPS:

  • Ademola, C.J.N. — Delivered the judgment of the Court
  • Lewis, J.S.C.
  • Madarikan, J.S.C.

BETWEEN:

ALBAN PHARMACY LIMITED
…RESPONDENT

AND

STERLING PRODUCTS INTERNATIONAL INC.
…APPELLANT

Case Summary

Application to Register a Trademark
This case involved an objection to the registration of the trademark “Casorina” by Alban Pharmacy Ltd., which was argued to be too similar to the already registered trademark “Castoria” owned by Sterling Products International Inc.

Trademarks in Dispute

Trademark / LabelPartyRegistration DetailsFeatures Described in the Judgment
CASTORIA (Exhibit 3)Sterling Products International Inc. — Opponent / AppellantRegistered in Nigeria on 26 November 1958, in Class 3, for medicinal products. Registration number not stated in the judgment.The bottle label displayed a small picture of five children and the words “Fletcher’s Castoria.” The product was a laxative for children.
CASORINA (Exhibit 1)Alban Pharmacy Ltd. — Applicant / RespondentApplication filed on 3 May 1962, in Class 3, for medicinal products. Application number not stated in the judgment.The bottle label displayed a large picture of a baby and the word “Casorina.” The product was also a laxative for children.

I. Summary of Facts

  • Sterling Products International Inc. was the registered owner of the trademark “Castoria” in Nigeria (Class 3, medicinal products), registered on November 26, 1958.
  • The Castoria label included a small image of five children with the text “Fletcher’s Castoria.”
  • Alban Pharmacy Ltd., on May 3, 1962, applied to register the trademark “Casorina” (also in Class 3) featuring a large picture of a baby and targeted at similar medicinal products (laxatives for children).
  • Sterling opposed the registration, arguing that “Casorina” was likely to be confused with “Castoria.”

High Court Judgment

On September 15, 1965, Justice Adefarasin ruled in favor of Alban Pharmacy Ltd.

Supreme Court Decision

The Supreme Court overturned the High Court decision, stating:

  • The trial judge erred by placing the burden of proof on the defendants (Sterling).
  • Citing Kerly on Trade Marks (8th Ed.), the court noted that the onus is on the applicant to prove that the proposed trademark would not cause confusion.
  • The court emphasized that the correct approach was not to compare marks side by side, but to assess whether a person with imperfect recollection might confuse the two trademarks.
  • The court found that the shared opening syllable “Cas” and the similarity between “Rina” in “Casorina” and “Ria” in “Castoria” were likely to cause confusion

Important Quotations from the Judgment

“The mark sought to be registered must not when compared with what is already registered, deceive the public or cause confusion.” — Ademola, C.J.N.

“The ear must be considered as well as the eye.”
“The first syllable of a word is, as a rule, far the most important for purposes of distinction.” — Sargant L.J.

II. Facts

The Appellants — a firm known as Sterling Products International Inc. (with its parent company in Broadway, New York), were the proprietors of the registered trademark “Castoria” in Nigeria. The mark was registered on November 26, 1958 in Class 3 for medicinal products and was valid for 14 years. The mark on the bottle was a tiny picture of five children with the words “Fletcher’s Castoria”. A sample of the product was put in evidence and marked exhibit 3.

On May 3, 1962, the Respondents — Alban Pharmacy Limited, applied to the Registrar of Trademarks for the registration of the word “Casorina” in Class 3. The mark shows a baby in a large picture on the bottle bearing the word “Casorina”. The Appellants objected to the Respondents’ application to use the mark “Casorina” on medicines of the same type as those sold by the Appellant i.e. laxative for children and growing children.

At the High Court, the learned trial judge on September 15, 1965 found in favor of the Respondents.

“The short point that arises for a decision is whether the use of the mark “Castoria” as shown in exhibit ‘A’ attached to the applicants affidavit and exhibit 1 tendered at the hearing is so identical to the mark of the respondents shown as exhibit 3 tendered in evidence so as to be calculated to deceive. No evidence was adduced on behalf of defendants of any person who claimed to have been deceived by the product of the applicants, now sought to be registered into believing that it is that of the respondent. The two marked, exhibit 1 and 3 are so different when put side by side that the question that these are similar in picture does not at all arise. Infact the Defendants’ second witness said at once that the two marked in the picture are dissimilar. The case of the Defendants is that the words “Casorina” and “Castoria” when considered in complete isolation from the background on which they appear on their respective products are words of such resemblance that the former can deceive anyone into taking it for the latter. In the case in hand, the suggestion is that anyone may be deceived into taking the mark of the Plaintiff for that of the Defendant. In my judgement this is most unlikely…Per Adefarasin J.

The learned Judge also added:

“I have no hesitation in holding that the mark sought to be registered by the applicants is different from that already registered by the Respondent and in no way resembles the marks of the Respondent either in reference to the background or the words of the two products. I would therefore find in favor of the applicants and will make the order that the registrar of Trade Marks do proceed to register the mark of the applicants notwithstanding opposition by the respondents.”…Per Adefarasin J.

Sterling Products International Inc. appealed filing seven grounds of appeal. At the Supreme Court, it was observed that the trial judge’s approach to the issue was in error.

“It is important to make it clear at the outset that we are of the opinion that the learned judge was in error when he tried to shift the onus of proof on to the defendants/appellants; he stated that they called no witness to prove that he was deceived by the product sought to be registered. We are unable to accept this proposition and we do not think the onus shifts in these cases to the defendant. We refer to Kerly on Trade Marks, 8th Edition at page 399, where the learned author dealing with this point stated:

‘In such cases, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion, so that refusal to register does not involve the conclusion that the resemblance is such that either an infringement action or a passing-off action would succeed.”’

According to the Supreme Court, putting the two trademarks side by side in order to look for resemblance was not the right approach — “what the learned judge had in mind was a case of passing-off which must be distinguished from a claim of infringement”. The court therefore held that the apprehensions of the Appellants were well founded because if the proposed trademark “Casorina” was allowed to be registered the syllable “Cas” will no doubt form the essential part of the name of the medicine and was likely to cause confusion in the minds of the public. Again, the last syllable in the mark “Casorina” namely “RINA” in itself was not free from causing confusion with “RIA” in “Castoria””.

Ademola C.J.N. was of the opinion that in determining what constitutes an infringement, “the mark sought to be registered must not when compared with what is already registered, deceive the public or cause confusion”.

“As Sargant J. said In the Matter of Application for Registration of a Trademark by Sandow Ltd (1914) 31 R.P.C. 196 at P. 205, ‘the question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection.’

It appears to us that what the learned judge had in mind was a case of passing-off, which must be distinguished from a claim for infringement. The rights in the present case are limited to the name registered and not the photos of babies on the bottle. In this sense registration of a trademark is narrow in scope and the rights are limited to what is registered. The criterion is that the mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion. And as the learned counsel for the appellant submitted, it was necessary to compare the two trademarks not only visibly but also by sound. This is sometimes stated that the ear must be considered as well as the eye; and this is generally shown in the confusion which may arise in the course of a telephone conversation and this is a point that must be borne in mind. Thus in Magdalena Securities Ltds’ application (1931) 48 R.P.C. 477 at p. 487 ‘UCOLITE’ was held by the court to be too near ‘COALITE’ for registration. The courts have considered on various occasions that the first syllable is the properly accented one, and the resemblance is of the utmost importance when you are to arrive at the conclusion whether the two words are likely to deceive or cause confusion. This was observed by Sargant L.J., In the Matter of London Lubricants (1920) Limited Application to Register a Trade Mark (1925) 42 R.P.C. 264 at P.279, when he said:

‘Though I agree that if it were the only difference having regard to the way in which the English language is often slurred at the termination of words, might not alone be sufficient distinction. But the tendency of persons using the English Language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purposes of distinction.’

and so in Capsuloid Co. Ltd’s Application (1906) 23 R.P.C. 782 ‘Tablones’ was said to be too near ‘Tabloids’.

It seems to us that the question of the probability of deception of the word ‘Castoria’ and ‘Casorina’ must be decided purely on the construction of the two words. Also, we must consider whether having regard to the circumstances of the trade this medicinal product (both belong to the same class and are laxatives for children), and the use that may be made in practice of this proposed mark, any confusion may arise. The question is whether the applicants have satisfied us that the use of the word ‘Casorina’ is not likely to cause confusion in the minds of the public which use the two babies medicine. We feel that the apprehensions of the appellants are well founded and in our view if the proposed trademark ‘Casorina’ be registered, the syllable ‘Cas’ will no doubt form the essential part of the name of the medicine and is likely to cause confusion in the minds of the public.

In this particular case, the end of the ‘Casorina’ namely ‘Rina’ in itself is not free from causing confusion with ‘Ria’ in ‘Castoria’. As all the cases show, the court must consider the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone. All these considered, the appellants’ counsel has satisfied us that it would be wrong to allow the applicant to register this trademark.

III. Cases Referred To

  • Capsuloid Co. Ltd’s Application (1906) 23 R.P.C. 782
  • Re Sandow (1914) 31 R.P.C. 196
  • London Lubricants (1920) Ltd’s Application (1925) 42 R.P.C. 264
  • Magdalene Securities Ltd’s Application (1931) 48 R.P.C. 477

IV. Final Judgment

ADEMOLA, C.J.N. (delivering the judgement of the Court):—This is an appeal from the judgement of Adefarasin J. delivered in the High Court of Lagos on 15th September, 1965.

The appellants, a firm known as Sterling Products International Incorporated operating in Nigeria with its parent company in Broadway, New York, are the proprietors of the Trade Mark “Castoria” which is registered in Nigeria. The registration was made on 26th November, 1958 for a period of 14 years. A sample of the product was put in evidence and marked exhibit 3. It appears that the product a medical product in class 3, is a special laxative for children and growing children and the mark on the bottle is a tiny picture of five children with the words “Fletcher’s Castoria”.

The appellants base their objection to the registration by the respondents of a proposed Trade Mark “Casorina” on the ground that this Trade Mark is so similar to their registered Trade Mark “Castoria” as to be calculated to deceive and that the applicants respondents who sought to register “Casorina” have not discharged the onus that lies upon them of showing that if the proposed Trade Mark be registered, there will be no deception.

The facts leading up to the application for the registration of the mark “Casorina” are briefly these. The applicants, Alban Pharmacy Limited, general merchants, on 3rd May, 1962, applied under Trade Marks Act (cap. 199) to the Registrar of Trade Marks for the registration as Trade Mark the word “Casorina” for goods in class 3 which is a medicinal product. The mark shows the device of a baby in a large picture on the bottle bearing the word “Casorina”. An objection was raised to the registration by the appellants. It would appear from the materials before the court that no attempt was made at a compromise before the two firms came to the court. In a short judgement delivered after hearing the parties and their witnesses and the address of counsel on both sides, the learned judge, inter alia, said:—

“The short point that arises for a decision is whether the use of the mark ‘Casorina’ as shown in exhibit ‘A’ attached to the applicants affidavit and exhibit 1 tendered at the hearing is so identical to the mark of the respondents shown as exhibit 3 tendered in evidence so as to be calculated to deceive. No evidence was adduced on behalf of the defendants of any person who claimed to have been deceived by the product of the applicants, now sought to be registered into believing that it is that of the respondent. The two marked, exhibits ‘1’ and ‘3’ are so different when put side by side that the question that this are similar in picture does not at all arise. In fact the defendants’ second witness said at once that the two marked in the picture are dissimilar. The case of the defendants is that the words “Casorina” and “Castoria” when considered in complete isolation from the background on which they appear on their respective products are words of such resemblance that the former can deceive anyone into taking it for the latter…… In the case in hand the suggestion is that anyone may be deceived into taking the mark of the plaintiff for that of the defendant. In my judgement this is most unlikely”.

In his penultimate paragraph the learned judge said, inter alia:—

“I have no hesitation in holding that the mark sought to be registered by the applicants is different from that already registered by the respondents and in no way resembles the marks of the respondents either in reference to the background or the words of the two products. I would therefore find in favour of the applicants and will make order that the registrar of Trade Marks do proceed to register the mark of the applicants not withstanding opposition by the respondents”.

From this judgement, Sterling Products International Incorporated have appealed. The seven grounds of appeal filed were all argued together. We see no need to set them out.

It is important to make it clear at the outset that we are of the opinion that the learned judge was in error when he tried to shift the onus of proof on to the defendants/appellants; he stated that they called no witness to prove that he was deceived by the product sought to be registered. We are unable to accept this proposition and we do not think the onus shifts in these cases to the defendant. We refer to Kerly on Trade Marks, 8th Edition at page 399, where the learned author dealing with this point stated:—

“In such cases, the onus is on the applicant to satisfy the registrar that the Trade Mark applied for is not likely to deceive or cause confusion, so that refusal to register does not involve the conclusion that the resemblance is such that either an infringement action or a passing off would succeed”.

We now deal with the approach of the learned judge to the issue before him. We are of the view that the learned judge’s approach to the issue before him was clearly wrong. Putting the two marks side by side before him, looking for resemblance and looking for identical marks on the labels are certainly not the right approach to the question. As Sargant J. said In the Matter of Application for Registration of a Trade Mark by Sandow Ltd. (1914) 31 R.P.C. 196 at p. 205.

“The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection”.

It appears to us that what the learned judge had in mind was a case of passing off which must be distinguished from a claim for infringement. The rights in the present case are limited to the name registered and not the photos of babies on the bottle. In this sense registration of a Trade Mark is narrow in scope and the rights are limited to what is registered. The criterion is that the mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion. And as the learned counsel for the appellant submitted, it was necessary to compare the two trade marks not only visibly but also by sound. This is sometimes stated that the ear must be considered as well as the eye; and this is generally shown in the confusion which may arise in the course of a telephone conversation and this is a point that must be borne in mind. Thus, in Magdalena Securities Ltds’ application (1931) 48 R.P.C. 477 at p. 487 “UCOLITE” was held by the court to be too near “COALITE” for registration. The courts have considered on various occasions that the first syllable is the properly accented one, and the resemblance is of the utmost importance when you are to arrive at the conclusion whether the two words are likely to deceive or cause confusion. This was observed by Sargant L. J., in In the Matter of London Lubricants (1920) Limited Application to Register a Trade Mark (1925) 42 R.P.C. 264 at p. 279, when he said:—

“Though I agree that if it were the only difference having regard to the way in which the English language is often slurred at the termination of words, might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purposes of distinction”.

and so in Capsuloid Co. Ltd’s Application (1906) 23 R.P.C. 782 “TABLONES” was said to be too near “TABLOIDS”.

It seems to us that the question of the probability of deception of the word “CASTORIA” and “CASORINA” must be decided purely on the construction of the two words. Also we must consider whether having regard to the circumstances of the trade this medicinal product (both belong to the same class and are laxatives for children), and the use that may be made in practice of this proposed mark, any confusion may arise. The question is whether the applicants have satisfied us that the use of the word “CASORINA” is not likely to cause confusion in the minds of the public which use the two babies medicine. We feel that the apprehensions of the appellants are well founded and in our view if the proposed Trade Mark “CASORINA” be registered, the syllable “CAS” will no doubt form the essential part of the name of the medicine and is likely to cause confusion in the minds of the public.

In this particular case, the end of the word “CASORINA” namely “RINA” in itself is not free from causing confusion with “RIA” in “CASTORIA”. As all the cases show, the court must consider the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone. All these considered, the appellants’ counsel has satisfied us that it would be wrong to allow the applicant to register this Trade Mark.

The appeal therefore succeeds and we hereby set aside the judgement and order made in the court below. It is hereby ordered that the registrar of TRADE MARK shall not register the TRADE MARK “CASORINA” and this will be the judgement of the court. There will be costs of this appeal assessed at 40 guineas, and costs in the court below assessed at 12 guineas.

V. Key Legal Principle

The case establishes that both visual and phonetic similarities must be considered when deciding whether a proposed trademark is likely to deceive or cause confusion. Marks should not be examined only side by side. The court must consider whether a person with an imperfect recollection of the registered mark might mistake the proposed mark for it.

VI. Later Citations of the Case

Paterson Zochonis (PZ) Ltd. v. A.B. Chami and Company Ltd.

Excerpt from citation:

Once again we agree with his submission, as in Alban Pharmacy v. Sterling Product Int’l. (1968) 3 ALR Comm. 311, (be it noted decided after the judgement of the learned trial Judge in the present case) we said that:

“It is important to make it clear at the outset that we are of the opinion that the learned Judge was in error when he tried to shift the onus of proof on to the appellants; he stated that they called no witness to prove that he was deceived by the product sought to be registered. We are unable to accept this proposition, and we do not think the onus shifts in these cases to the defendants. We refer to Kerly on Trade Marks, 8th Ed. at 399 (1960), where the learned author, dealing with this point, stated:

‘In such cases, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion, so that refusal to register does not involve the conclusion that the resemblance is such that either an infringement action or a passing-off action would succeed.”’

___________

“… the right test is not to place the two devices side by side but to consider, as we said in Alban Pharmacy v. Sterling Prod. Int’l. (1968 (3) ALR Comm. 311 at 316), whether – ‘the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone,” would be likely to be confused or deceived, and we think the devices are so dissimilar overall that, notwithstanding both incorporate an elephant and a palm tree, even an illiterate person with an imperfect recollection would not be confused or deceived.”

CITED IN

Virgin Enterprises Ltd. v. Richday Beverages (Nig) Ltd.

Excerpt from citation:

A comparison of the two trade marks will reveal that the letter is potentially capable of being mistaken for the former (appellant’s trade mark). See: Bell Sons & Co. v. Aka & Ors (1972) VILR Vol.3 Pt 1 Pg. 43, Alban Pharmacy Ltd v. Sterlin Products (1968) All NLR 112 and the unreported decision of this court in CA/L/378/03 Smithkline Beecham Plc. v. Farmex Limited, delivered on 9th February, 2009.

CITED IN

Beecham Group Ltd v. Esdee Food Products Nigeria Ltd.

Excerpt from citation:

“…In another Supreme Court’s decision, in the case of Alban Pharmacy Ltd v. Sterling Products (1968) All NLR 300, Ademola C.J.N. held that the criterion is that the mark to be registered must not, when compared with what is already registered, deceive the public or cause confusion. In that case Ademola C.J.N. held also that the apprehensions of the Appellants were well founded, for if the proposed trademark ‘Casorina’ be registered, the syllable ‘Cas’ will no doubt form the essential part of the name of the medicine and was likely to cause confusion in the minds of the public. Furthermore, the end of the ‘Casorina’ namely ‘Rina’ in itself was not free from causing confusion with ‘Ria’ in ‘Castoria’. These authorities confirm that the learned trial Chief Judge of the Federal High Court was quite right in his findings that ‘Glucosaid’ is calculated to confuse and deceive the public in its sound in their consideration of the trademark ‘Lucozade’…Per Mohammed, J.C.A. (pp. 12 – 13, paragraphs G-D).