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

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

Court: Supreme Court of Nigeria
Judgment Delivered: April 2, 1971
Citation: 14 NIPJD [SC. 1971] 314/1968
Suit No.: SC. 314/68
Jurisdiction: Nigeria

Coram:

• Ian Lewis, J.S.C. (Delivered the Lead Judgment)
• George Sodeinde Sowemimo, J.S.C.
• Udo Udoma, J.S.C.

Appearances

• For the Appellants: Mr. Souza
• For the Respondents: Mr. Ogunlami

Case Summary

Trademark Infringement — Likelihood of Deception or Confusion
The case questioned the validity of registering a new trademark involving similar visual elements to an existing trademark, especially in relation to illiterate consumers and the shifting of the burden of proof.

I. Facts of the Case

• Appellants: Paterson Zochonis Ltd. (PZ), owners of a registered trademark in Class 48 (perfumery, soaps, etc.) — an image of an elephant pulling fruit from a palm tree.
• Respondents: Applied to register a different design also in Class 48 — named “Asirire” (meaning “evening” in Hausa), featuring an elephant with a rider, flanked by two palm trees.

High Court Decision: The Lagos High Court (Justice Adefarasin) dismissed PZ’s objection and allowed the registration of the Asirire trademark.

II. Key Legal Issues on Appeal

1. Use of Colour in Trademark Evaluation
   • The trial judge wrongly considered color, even though the existing trademark was registered without color limitation.
   • Supreme Court: Color should not have been a factor.
2. Burden of Proof Misplaced
   • The trial judge wrongly placed the burden on PZ to show that confusion or deception had already occurred.
   • Court Clarification: As in Alban Pharmacy v. Sterling Products, the burden is on the applicant to show the mark is not likely to deceive or confuse.
3. Honest Concurrent Use
   • The Respondents never argued based on “honest concurrent use,” so it was irrelevant.
   • Section 13(1) of the Trade Marks Act applied (not Section 13(2)).
4. Likelihood of Confusion
   • The Appellants argued that using an elephant and palm tree would confuse illiterate Nigerians.
   • The court held that the devices were distinct in layout (vertical vs horizontal), imagery, and content.

“Trade marks which may not deceive literates but could deceive illiterate Nigerians should be excluded from registration.”

III. Decision of the Supreme Court

• The test is not placing two marks side-by-side but determining whether a person with imperfect recollection (especially illiterates or those ordering by phone) could be misled.
• Though both trademarks featured elephants and palm trees, the designs were clearly different:
  • PZ’s: Wild elephant, no rider, horizontal rectangle.
  • Chami’s: Tamed elephant with rider, vertical rectangle, name “Asirire” embedded.

Final Holding:

The trademarks were distinctive enough to prevent confusion.

IV. Judgment

Appeal Dismissed

• Registration of Asirire trademark upheld
• Costs Awarded: 34 guineas to the Respondents

V. Legal Principle Affirmed

In trademark registration disputes, the burden lies on the applicant to prove no likelihood of deception or confusion — especially among vulnerable consumers like the illiterate or inattentive.

VI. Cited Authorities

• Alban Pharmacy Ltd. v. Sterling Products Int’l (1968) 3 ALR Comm. 311
• In re Worthington & Co.’s Trade Mark (1880) 14 Ch.D. 8
• Kerly on Trade Marks (8th Ed.)
• Halsbury’s Laws of England, 3rd Ed., para. 896
• In re Jelley, Son & Jones’s Application (1878) 51 L.J. Ch. 639
• Bailey’s Case (1935) 53 R.P.C. 136

VII. Other Citations

• (1971) 2 NCLR 376