⦿ CASE SUMMARY OF:
D & S Trading Company Limited v. Remia C. V. & Anor (2019) – CA
by NSA PaulPipAr
– TradeMark Infringement;
D & S Trading Company Limited
1. Remia C. V.
2. Trixibelle Limited
Court of Appeal
⦿ LEAD JUDGEMENT DELIVERED BY:
Tobi Ebiowei, J.C.A.
* FOR THE APPELLANT
– Peter Shobiye Esq.
* FOR THE RESPONDENT
– Omotayo Okene, Esq.
⦿ FACT (as relating to the issues)
On 20/5/14, the Appellant as Plaintiff in the lower Court (Federal High Court, Lagos Division) instituted an action against the Respondents for the infringement of its Trade Mark which it has registered since 1997 in class 29. The registered Trade Mark is “ROSA”. The Appellant also brought a claim for the passing off of its product. The action was predicated on the grounds that the Respondents in registering or bringing up products manufactured and produced by it, named Rosa Margarine, Rosa Mayonnaise and Rosa Elan Margarine in classes 29 and 30 is an infringement of the Trade Mark and the passing off of the products the Plaintiff had registered. The Respondent on the other hand denied the allegation in stating before the lower Court that the products are not meant for the Nigerian market and more so the Appellant does not have exclusive usage of the word “Rosa”.
The Respondent as Defendants in the lower Court also brought a counter claim for the rectification of the certificate issued to the Appellant so as to conform with the NICE Classification of Goods.
After hearing the witnesses of the parties and the submissions of counsels, the lower Court presided over by M.B. Idris J. (as he then was) delivered his judgment dismissing the case of the Appellant (Plaintiff in the lower Court) and granted the Counter-Claim of the Respondent (Defendant in the lower Court).
Dissatisfied, the Plaintiff (as Appellant) has appealed to the Court of Appeal.
1. Whether the Appellant’s registered trademark “ROSA” is generic within the geographical territory of Nigeria as not to be worthy of exclusive protection within the geographical territorial confines of Nigeria with regards to food products, particularly of goods in Class 29.
2. Whether trademark application “ROSA MARGARINE” and the registered “ROSA ELAN MARGARINE” both in Class 30 are in tandem with the nice classification of goods in Class 30.
3. Whether an Acceptance Letter of a Trade Mark Application is a conclusive evidence of Trademark Registration within the provision of the Trade Marks Act CAP. T13 Laws of Federation of Nigeria 2004 and whether the Appellant had any prior knowledge of the Respondent’s applications at the Trade Marks Registry.
4. Whether the Respondents’ trademark applications ROSA MAYONNAISE in Class 29, ROSA MARGARINE in Class 30 and registered ROSA ELAN MARGARINE in Class 30 are not confusingly similar or identical with the Appellant’s registered trademark “ROSA” in Class 29 in relation to the provisions of Sections 5 and 13 of the Trade Marks Act CAP. T13 Laws of Federation of Nigeria 2004.
5. Whether the decision of the lower Court is not against the weight of evidence and does not amount to a miscarriage of justice and whether from the circumstances of this case the lower Court was right to have granted the reliefs sought by the Respondents in their counter claim.
⦿ HOLDING & RATIO DECIDENDI
[APPEAL: ALLOWED, COST OF N500,000 AWARDED AGAINST THE RESPONDENTS]
1. ISSUE 1 WAS RESOLVED AGAINST THE APPELLANT BUT IN FAVOUR OF THE RESPONDENTS.
i. The question now is whether the registered trade mark “ROSA” is a generic word which cannot enjoy exclusivity? if it is, the implication is that the Respondent can register another trade mark using the word with either a prefix or a suffix. If it is not, the word is a trade mark that enjoys exclusivity. Naturally, the Appellant says it is not. The Respondents on the other hand says it is. The lower Court confronted with this, found as a fact that the “ROSA” is a generic word. This is the finding of the lower Court in page 21 of the judgment found in page 423 of the records. His lordship said: “In the instant case, the word ROSA is the latin version of the English word ROSE. ROSA is a common word used in conjunction with several other words. ROSA is the root of many words. More importantly, the word ROSA is a common word and does not therefore enjoy the relatively expansive protection accorded invented word in Trademarks Law.”
I am inclined to agree with the lower Court.
ii. To this, the Appellant counsel submitted that the word does not mean anything in Nigeria and therefore it is not a generic word within the territory of Nigeria. With due respect, I do not seem to see the real relevance of that distinction. The word ROSA is not even distinct in Nigeria. Some people are called ROSA even in Nigeria. I therefore agree with the lower Court that the word ROSA is a common place word which cannot enjoy exclusivity even within the context of Nigeria. By the provision of Section 5 of the Trade Mark Act, the word is registrable. That is not in dispute but it is not a special word coined by the Appellant for which it can claim exclusivity. There is nothing unique or special about the word. It is indeed a common place word. In Nigeria, people who bear ROSE are fondly called ROSA. The word ROSA is therefore not strange to Nigeria.
2 & 4: ISSUES 2 & 4 WERE RESOLVED IN FAVOUR OF THE APPELLANT BUT AGAINST THE RESPONDENTS.
i. It is clear for all to see that the trade mark registered in favour of the Appellant ROSA is identical, similar and resembles the Respondents’ which is ROSA MAYONNISE, ROSA MARGARINE and ROSA ELAN MARGARINE. It is also clear that the consuming public will be confused and will certainly see the Respondent’s products as those of the Appellant. In this respect, I find the provision of Sections 9(1) & 13(1) of the Trade Mark Act and the case of Ferris George vs. John Walkden (supra) cited by the Appellant counsel instructive. I agree with Appellant counsel that the application to register ROSA MARGARINE and ROSA ELAN MARGARINE are not in tandem with the nice classification of goods. This was done to deliberately mislead the public. The test here in my opinion is the reasonable man’s test. Since the Appellant’s brand registered under class 29 has been in the market with the trade name ROSA, any product bearing ROSA particularly from the same class or similar products but registered in a different case will be seen by any reasonable person as coming from the original brand. If any person is looking for whom to sue or criticize on the negative effect of the product, he will not sue the later person who registered the name but rather the original trade mark proprietor as in the eyes of the public, it is the ROSA trade mark that has produced ROSA MARGARINE, ROSA ELAN MARGARINE AND ROSA MAYONNAISE.
ii. I hold that the Respondents applications ROSA MAYONNAISE in class 29, ROSA MARGARINE and ROSA ELAN MARGARINE in class 30 are confusingly similar and identical with the Appellant’s registered trade Mark “ROSA” as it is capable of been mistaken for the products of the Appellant.
3. ISSUE 3 WAS RESOLVED AGAINST THE APPELLANT BUT IN FAVOUR OF THE RESPONDENT.
i. An acceptance letter has been issued to the Respondents. The effect of this is shown in Section 22 of the Act which is that when the certificate is eventually issued, the date on the certificate will indicate that it is issued from the date of the application.
5. ISSUE 5 WAS RESOLVED IN FAVOUR OF THE APPELLANT BUT AGAINST RESPONDENTS.
i. To bring the case of the Respondent under the exception in Section 7 of the Act, the Respondents’ in their brief submitted that they have been the registered owner of the ROSA trade mark in 17 countries outside Nigeria. This averment is in paragraph 20 of Respondents’ witness deposition. This is in line with paragraph 24 of the statement of defence. Realizing that the burden of proof lies on them, the Respondent in paragraph 24 pleaded those documents of registration in the countries mentioned. For the said section to avail the Respondents, the Respondents must show that they have continuously used the trade mark previously before it was registered by the Appellant. This burden is on the Respondent as the law is trite to the effect that he that alleges must prove.
ii. The point I am laboring to make here is that Section 7 of the Trade Mark Act does not avail the Respondents as they have not met the condition that need to be satisfied before the application of the section. For completeness, the Respondents have not proved from the record before this Court that they have continuously used the trade mark ROSA previously in Nigeria or anywhere else before the Appellant registered same in 1997. I do not see the relevance of Section 8 in the facts of this case to be seen as an exception or limitation.
iii. As it stands, I am left with the obvious decision. The decision of the lower Court cannot stand in the light of the evidence before it.
⦿ SOME PROVISION(S)
⦿ RELEVANT CASE(S)
Sargent 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”.
⦿ CASE(S) RELATED
⦿ NOTABLE DICTA
It is trite law that a party in an appeal cannot formulate issues for determination outside the grounds of appeal and similarly, such a party cannot raise argument on such issues. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)
Simply put, a person who has registered a name or sign as his trade mark has a proprietary right over the use of that name in that class in which it is registered. Once it is so registered, no other person can register any product in that name, subject however to the limitations in Section 7 of the Trade Mark Act. A registered trade mark confers on the proprietor of the trade mark exclusive use of the trade mark to the exclusion of all others, particularly as it relates to the product within the class the trade mark is registered. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)
The purpose of the registration of a trade mark is such that the proprietor of the trade mark should take responsibility for his product and there is no confusion as to who to hold responsible for any damage arising from the use of the product. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)
The trade mark is supposed to be unique and distinctive to the proprietor. In such a situation, any person who uses such registered trade mark without the consent of the proprietor is liable to an action for infringement of the trade mark. The trade mark so registered must be registered in a particular class dealing with products in the class. The trade mark exposes the proprietor to the ownership of the product and connects the proprietor to the product. This implies therefore that the public knows where to go in future if they need the product in future. The public should not be mistaken as to who to sue should any matter arise in relation to the product. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)
The registration of a generic name will not deny another from registering the name either with a prefix or suffix as such trade mark cannot claim distinctiveness or exclusivity. To avoid similar registration, the trade mark must be distinctive and not generic. To be distinctive means something unique and peculiar to the proprietor of the trade mark. What is generic implies that the mark is common and cannot be subject of peculiarity to the proprietor of the trade mark. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)
In the law of trademarks, the element of distinctiveness comes before that of passing off in the way the number 1 comes before the number 2. In other words, the plaintiff must first prove to the satisfaction of the Court that the trade mark has a distinctive character or nature, before he can prove the movement of the trade mark of the defendant in business circles by way of passing-off. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)
In spite of the above first issue, if the later trade mark sought to be registered, is so similar to the earlier one registered so as to amount to deceiving the public and confusing the public, a Court is likely to hold that there is an infringement. – TOBI EBIOWEI, J.C.A. Trading v. Remia (2019)