⦿ CASE SUMMARY OF:
Ferodo Limited & Anor. v. Ibeto Industries Limited (2004) – SC
by NSA PaulPipAr
1. Ferodo Limited;
2. Ferodo Nigeria Limited
1. Ibeto Industries Limited
(2004) 5 NWLR (Pt.866)317;
(2004) 2 S.C. (Pt I) 1;
(2004) 17 NSCQR 560
⦿ LEAD JUDGEMENT DELIVERED BY:
* FOR THE APPELLANT
– Olatosi Ogunkeye, Esq.
* FOR THE RESPONDENT
– O. Opasanya, Esq.
⦿ FACT (as relating to the issues)
The appellants herein were the plaintiffs in the Federal High Court and the appellants at the Court of Appeal, Lagos. The claim in the Federal High Court was against the respondent herein (as the defendant) and was in the following terms: “An injunction to restrain the defendant whether acting by itself, its servants or agents or any of them, or otherwise howsoever from doing the following acts or any of them that is to say – (i) Infringing the 1st plaintiff’s registered trade mark No. 38604. (ii) Passing off or causing or enabling or assisting others to pass off the defendant’s UNION brake linings as and for the plaintiffs’ FERODO brake linings. (iii) Selling or offering for sale or supplying brake linings or brake pads with labels or in packages having the distinctive red, black and white package design or get up of the plaintiffs’ FERODO brake linings’ package design or get up or so closely resembling it as to be calculated to lead to the belief that brake linings not of the plaintiffs’ manufacture and merchandise are products of the plaintiffs. Delivering up for obliteration destruction of all brake linings, packages and labels containing the offending marks or being in the offending design or get up including printing blocks and other matters the use of which would be a breach of the injunction prayed for. Damages of N1,000,000.00 exemplary or aggravated damages of N500,000.00 costs. Further or other reliefs.”
The Appellant has further appealed to the Supreme Court.
1. Whether the Court of Appeal should at all have looked into the registerbility or the entitlement of the plaintiffs/appellants to exclusive use of the individual components of the trade mark registered under No. 8604?
2. If the Court of Appeal was right to have looked into the registerbility of any component of trade mark No. 38604, whether the court was right in deciding that only FERODO was registered under trade mark No. 38604?
⦿ HOLDING & RATIO DECIDENDI
ISSUES 1 & 2 IS RESOLVED IN FAVOUR OF THE RESPONDENT BUT AGAINST THE APPELLANT.
i. Thus there is no proof or indication whatsoever that the colour outlay and the geometrical outlines as contained in exhibit D are of any distinctive character so as to constitute device within the contemplation and intendment of sub-sections 2 and 3 of Section 9 and also of section 67 of the Trade Marks Act. A look at exhibit C which is the package in which the appellants market FERODO brake linings, exhibits K-KI which are photographs of the appellants’ billboards advertising brake pads found in different locations in Lagos make it obvious that it was only the word FERODO that was registered under section 9(1)(a) of the Act. This fact, is further borne out, by the evidence of P.W.2 and other witnesses that the appellants’ brake pad is known as FERODO and that customers purchase the product by asking for it by its brand name.
ii. I am also convinced that what is registered as a trade mark is only the word “FERODO”. It is a distinct character marked sharply and boldly in exhibit D denoting that it represents the futmistic character by which the proprietor manufacturer intended to convey a message that the product is hers and no other person’s. As mentioned above, there is nothing distinctive about the colouration and the graphic chequered design to make them part of the registered trade mark. Also as earlier mentioned when a word is used to denote a product and when the other features contained are not distinctive, they are merely decorative of the trade mark and not part of it.
iii. In any event, I also agree that the packaging design in colours of red, black and chequered white graphics are common in the trade of brake pads and linings clearly shown and evidenced in exhibits 0, C, N and M. All these exhibits show how various packages of various manufacturers of brake linings market their products in same colours. In summary, I agree with the courts below, that the only mark registered for the first appellant is the word “FERODO” and the colouring outlay and the geometric designs are merely decorative and do not form part of the trade mark.
⦿ SOME PROVISION(S)
Section 9 of the Trade Marks Act, Cap. 436, Laws of the Federation of Nigeria:
“9(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register it must contain or consist of at least one of the following essential particulars: (a) the name of a company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) an invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification or geographical name or surname. (e) any other distinctive mark; Provided that a name, signature or word or words other than such as fall within paragraphs (a) to (d) of this section shall not be registrable under paragraph (e) of this section except upon evidence of its distinctiveness.
(2) For the purposes of this section, “distinctive” means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of the trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which (a) the trade mark is inherently adapted to distinguish as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstance, the trade mark is in fact adapted to distinguish as aforesaid.”
⦿ RELEVANT CASE(S)
In Magdalena Securities Ltd’s application (1931) 48 RPC 477 at 487, it was held that “UCOLITE” was too near to COALITE for registration.
In Alban Pharmacy Ltd. v. Sterling Products international Inc. (1968) All NLR 300, the appellants, a firm known as Sterling Products International Incorporated were the proprietors of the trade mark “Castoria” which was registered in Nigeria. They objected to the registration of the trade mark “Casorina” on the ground that the trade mark is so similar to “Castoria” as to be calculated to deceive. The Supreme Court held that the apprehensions of the appellants were well founded, for if the proposed trade mark 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 and also that the end of the word “Casorina”, namely “rina” in itself was not free from causing confusion with “ria” in “Castoria”.
In Beecham Group Ltd. v. Essdee Food Products Nigeria Ltd. (1985) 3 NWLR (Pt.11) 112, the plaintiffs/respondents sued the defendants/appellants for infringement of their trade mark “Lucozade”. The defendants/appellants had put in the market and offered for sale and sold a non-alcoholic beverage under a trade mark called “Glucose aid”. The Court of Appeal held that Glucose-aid in sound, is confusing to “Lucozade” and it will undoubtedly mislead the public.
In Kerly’s Laws of Trade Marks and Trade Names, 10th edition, page 307, paragraph 1502, it was stated that in an action for infringement of trade mark the plaintiff complains that the defendant has infringed his trade mark by taking in its entirety, or by taking a substantial portion of it, or by colourably imitating it, and he relies on his statutory title to the exclusive use of the mark in question in goods of a specified kind.
⦿ CASE(S) RELATED
⦿ NOTABLE DICTA
It is elementary law, that an appellate court such as the Supreme Court will hardly reverse a concurrent finding of facts. – Musdapher, J.S.C. Ferodo v. Ibeto (2004)
The essence of a trade mark is that it indicates a connection in the course of trade between the goods and some person having the right to use the same. A mark, in this connection includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. A trade mark on the other hand is a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, it connection in the course of trade between the goods and some person having the right either as a proprietor or a registered user to use the mark. – Musdapher, J.S.C. Ferodo v. Ibeto (2004)
A trade mark if registered gives the proprietor the exclusive right to use the trade mark in marketing or selling his goods. And without his consent if anyone else uses an identical mark or one mark so nearly resembling it as to be likely to deceive or cause confusion, will entitle the proprietor to sue for infringement of the trade mark, or to sue in action for passing off or both. – Musdapher, J.S.C. Ferodo v. Ibeto (2004)
Following the provisions of section 5(2) of the Trade Marks Act an infringement of a registered trade mark cannot be maintained unless the court finds that the defendant is engaged in the use of a mark identical with the registered trade mark or uses a mark so nearly resembling the registered trade mark, as to be likely to deceive or cause confusion in the course of trade; or uses in relation to any goods in respect of which it is registered, or uses in such a manner as to render the use of the mark to be taken as importing a reference to the goods which the plaintiff’s trade mark is connected. – Musdapher, J.S.C. Ferodo v. Ibeto (2004)
Although the peoples of the world are entitled to freely use these three of God’s rainbow colours, the law of trade marks thinks differently. It dares God by placing restrictions here and there. And that has caused the problem in this appeal. – Tobi, J.S.C. Ferodo v. Ibeto (2004)
A court of law can allow itself to be persuaded by an obiter dictum. I know of no law which holds a contrary view. – Tobi, J.S.C. Ferodo v. Ibeto (2004)