➥ CASE SUMMARY OF:
Sunday Uzokwe V. Densy Industries Nig. Ltd & Anor. (2002) – SC
by “PipAr” Branham-Paul C. Chima.
➥ COURT:
Supreme Court – SC.134/1999
➥ JUDGEMENT DELIVERED ON:
Friday, the 18th day of January, 2002
➥ AREA(S) OF LAW
Industrial design;
Burden of proof.
➥ PRINCIPLES OF LAW
⦿ THE DESIGN SAID TO BE IN DISPUTE SHOULD BE PUT SIDE TO SIDE FOR COMPARISON
It will be seen that to be registrable, an industrial design must come within the meaning of the expression “designs” in section 12 of the Act. It is any combination of lines or colours or both, and any three dimensional form, whether or not associated with colours that is an industrial design. What actually constitutes the design is that particular combination and arrangement of lines which give such features. It is therefore important in a case where the newness of a design is in dispute, as in this case, the design claimed to be infringed and the infringing design should be put side by side to enable the court to compare and determine whether they are basically the same or whether there are fundamental differences in the shape and pattern of the lines. See Ajibowo & Co. Ltd. v. Western ile Mills Ltd. (1976) 7 SC. 97. — O. Ogwuegbu, JSC.
⦿ THE PERSON WHO WOULD LOSE HAS THE GENERAL BURDEN
In civil cases, the ultimate burden of establishing a case is as disclosed on the pleadings. The person who would lose the case if on completion of pleadings and no evidence is led on either side has the general burden of proof. See Elemo & Ors. v. Omolade & Ors (1968) NMLR 359. See also section 137(1) of the Evidence Act. — O. Ogwuegbu, JSC.
➥ LEAD JUDGEMENT DELIVERED BY:
O. Ogwuegbu, J.S.C.
➥ APPEARANCES
⦿ FOR THE APPELLANT
S.O.P. Okeke, Esq.
⦿ FOR THE RESPONDENT
Chief J.C. Ifebunandu.
➥ CASE FACT/HISTORY
The case of the plaintiff from his pleadings and evidence at the court of trial is that he is the registered owner of Design No. 4464 in respect of kitchen plastic container, that the design was registered on 5th March, 1991 in the name of “Sunday Innocent and Co.”, that at the time of registration, the design was new and that he is the author. It was his case that he started producing the plastic containers shortly after registration of the design and within two months of registration he discovered that his right in the design had been infringed.
This is an appeal against the judgment of the Court of Appeal, Enugu Division delivered on 7th July, 1998 allowing the appeal of the defendants who were appellants in that court.
The plaintiff instituted an action in the Federal High Court, Enugu claiming against the defendants (respondents herein) jointly and severally as follows: “1. N5,000,000.00 (Five Million Naira) being general damages for infringement of the Registered Design No. 4464. 2. Injunction restraining the defendants, whether acting by their agents, directors, officers, servants, privies and/or otherwise however from infringing the plaintiffs copyright in the Registered Design No. 4464.”
The learned trial Judge awarded N10,000.00 damages against the defendants in favour of the plaintiff for infringement of the plaintiff’s Design No. 4464. The defendants were dissatisfied with the judgment and appealed to the Court of Appeal, Enugu Division. Their appeal succeeded and the plaintiff’s claim was dismissed. The plaintiff appealed to this court against the decision of the court below.
➥ ISSUE(S) & RESOLUTION(S)
[APPEAL DISMISSED]
I. Whether Exhibit “1” was new at the time of its registration coupled with this is the question of proof of its novelty at the said time?
RULING: IN RESPONDENT’S FAVOUR.
A. THAT SIMILARITY IN DESIGN HAS NOTHING TO DO WITH ITS NOVELTY
“I am satisfied that the learned trial Judge was in error in coming to his conclusion that the two products are similar and are produced from one design by mere “cursory perusal of the external appearances of Exhibit 2 and Exhibit 5.” Similarity in design has nothing to do with its novelty or distinctiveness. A claim for an infringement of rights in design cannot be sustained merely because the infringing product is similar to that of the plaintiff. More is required from the plaintiff bearing in mind the provisions of section 1 of the Act. The earlier observation of the learned trial Judge that owing to the absence of the design for Exhibit “5”, he could not compare Exhibits “2” and “5” is sound but he derailed when he proceeded to compare the finished products as against the designs from which they were produced. See Metropolitan Industries (Nig) Ltd. v. Industrial Applications (Nig.) Ltd. (1973) 1 NMLR 274, Amp. Incorporated v. Utilux Proprietry Ltd. (1972) R.C.P. 103.”
B. THAT THE PLAINTIFF MUST PROVE THAT THE FINISHED PRODUCTS ARE MADE FROM SAME DESIGN
“Thus, to succeed in his claim that his copyright in the design, Exhibit “1” had been infringed, the plaintiff has the onus of showing that the finished products comprised in Exhibits “2” and “5” are made from the same design and not that the products are merely similar as the learned trial Judge concluded in his judgment. He should tender the designs of both products (Exhibits “2” and “5”) for comparison. In a patent action for infringement, as in every other kind of action, the onus is on the plaintiff to prove that he has a definite cause of action against the defendant and he is not entitled to call upon the defendant to disprove the alleged infringement in other words, to prove that plaintiff has no cause of action against him. That is precisely what the plaintiff is urging the court to compel the defendants to do. See Saccharin Corporation Ltd. v. Wild (1930) 1 Ch. 410.”
.
.
.
✓ DECISION:
“I therefore come to the conclusion that the court below was right when it held that the plaintiff failed to prove his case. On the whole the appeal fails. The decision of the court below is upheld. The defendants are entitled to cost which I assess at N10,000.00.”
➥ MISCELLANEOUS POINTS
➥ REFERENCED (CASE)
➥ REFERENCED (OTHERS)
