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MICHAEL OREDOLAPO ONAYEMI
V.
LUTFALLAH BOUARI
THE WEST AFRICAN COURT OF APPEAL, HOLDEN AT LAGOS, NIGERIA
25TH DAY OF OCTOBER, 1954
APPEAL NO. 1 OF 1954
2PLR/1954/72 (WACA)
OTHER CITATION(S)
2PLR/1954/72 (WACA)
(1954) XIV WACA PP. 597-604
LEX (1954) – XIV WACA 597-604
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BEFORE THEIR LORDSHIPS:
DE COMARMOND, Ag. C.J. NIGERIA
COUSSEY, J.A.
STUART, J.
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BETWEEN:
MICHAEL OREDOLAPO ONAYEMI – Appellant
AND
LUTFALLAH BOUARI – Respondent
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ORIGINATING COURT(S)
Appeal by the plaintiff against decision of Abbott, J., given in the Ibadan Division of the Supreme Court
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REPRESENTATION
Kayode — for the Appellant
Ferguson — for the Respondent
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ISSUE(S) FROM THE CAUSE(S) OF ACTION
INTELLECTUAL PROPERTY — TRADE MARK:- Design registered as trade mark — Cloth of that design sold by another — Suit by owner of trade mark for infringement of his trade mark — Trade Marks Ordinance, section 2 — Cause of action founded on trade mark where passing off more appropriate — Proper order for court to make
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PRACTICE AND PROCEDURE ISSUE(S)
ACTION:— Close of case — Interim judgment giving defendant time to apply on matter not raised in case — Final judgment covering new matter — Appeals in Civil Cases — W.A.C.A. Rules, 1950, rule 36 — Judgment on appeal that ought to have been given below.
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CASE SUMMARY
The above rule empowers the Court of Appeal “to give any judgment and make any order that ought to have been made, and to make such further or other order as the case may require, etc.”
The plaintiff (above appellant) had ordered artificial silk brocade to be made in England according to a certain design. The firm receiving the order registered the design in England in its own name in 1944, and the copyright in it expired in 1949. The plaintiff registered the design in Nigeria as a trade mark in respect of artificial silk brocade in 1945 (the registration would be in force for fourteen years) thereby thinking he would have a monopoly in the sale of brocade with that design. He sued the respondent for infringement of his trade mark, alleging that the defendant had been selling in Nigeria artificial silk brocade bearing the same design. (The design was not identical but the differences were not such as would be distinguished by an illiterate person; they are immaterial to the decision.)
The defendant pleaded that he had not infringed any trade mark and asserted his right to go on selling; his counsel submitted that although the plaintiff had exclusive right to the trade mark, other people could use the pattern.
From the evidence of traders in textiles it appeared that a trade mark was not repeated all over a piece of cloth, and that a trade mark normally appeared on the face of a piece of cloth and bore the proprietor’s name.
“Trade mark” is defined in section 2 of the Trade Marks Ordinance (Cap 217), as meaning “a mark used or proposed to be used upon or in connection with goods for the purposes of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with or offering for sale”.
The trial Judge gave, at the close of the case for both sides, what was called an interim judgment pointing out that the action was for infringement of trade mark and not a passing-off action, and that a trade mark usually appeared on the outside fold of a piece of cloth whilst this was rather a design woven into and appearing all over the cloth; and (for a certain reason which need not be gone into here) the Judge gave the defendant time to apply for expunging the trade mark from the Register, adding that if the defendant did not apply within that time, the plaintiff was at liberty to move for judgment in his favour. The defendant applied as intimated to him, and the Judge gave a final judgment ordering the plaintiff’s trade mark to be expunged and dismissing the plaintiff’s claim. The plaintiff appealed.
In his appeal the plaintiff complained that the defendant’s application ought not to have been entertained as the defendant had never raised the issue of the validity of the registration in his pleadings and had never applied during the trial for a rectification of the Register. It was also argued for the plaintiff that the Judge erred in not entering judgment for him at the close of the case for both sides.
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DECISION(S) OF THE WEST AFRICAN COURT OF APPEAL
Held (setting aside the Judgment of the Court below set aside; and entering a Judgment dismissing the action) that:
(1) The design appearing on the brocade sold by the defendant could not be said to be a use of a trade mark within the meaning of section 2 of the Trade Marks Ordinance (Cap. 217), merely because the same pictorial representation was registered as a trade mark in respect of artificial brocade.
(2) The defence not having been amended and the issue that the trade mark was invalid not having been raised, all the proceedings after the “interim” judgment would be set aside as void; but as the action was for infringement of the plaintiff’s trade mark, the proper judgment at that stage was a judgment dismissing the action, and this was a proper case for applying rule 36 of the West African Court of Appeal Rules of 1950.
Cases cited:-
(1) In re Harrison, McGregor 6, Co.’s Trade Marks, 42 Ch. D. 691.
(2) Kutnow’s case, in Kerly al pp. 312-3.
(3) Cardoso v. The Executors of the Estate of the late J. H. Doherty, 4 W.A.C.A. 78, 80.
(4) E. E. Johnson v. Ojobado, W.A.C.A. appeal No.3238, at p. 71 of the Lagos cyclostyled reports for July, October-December, 1950.
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MAIN JUDGMENT
The following Judgment was delivered:
DE COMARMOND, Ag. C.J.
This is an appeal from a decision of Abbott, J., given in the Ibadan Division of the Supreme Court.
The appellant was the plaintiff in the Court below.
The pleadings are of importance and I propose to deal with them first.
What appears to be intended as a writ of summons bears the heading “Statement of Claim”; a proper statement of claim was filed after pleadings had been ordered. I will call the former the writ of summons.
The alleged cause of action set out in the writ of summons is the infringement by the defendant of a trade mark consisting of a puffed bird and of the words Banku Leiyewu and other markings, which trade mark was registered in Nigeria in respect of artificial silk brocade. The plaintiff sued as registered owner of the said trade mark alleging that the defendant had been selling in Nigeria artificial silk brocade bearing “the same design depicting a puffed bird with the same inscription”. The plaintiff claimed an injunction to restrain the defendant, his servants and agents from infringing the plaintiff’s trade mark and also claimed £1,000 damages for the said infringement.
I draw attention to the words set out above between quotation marks because an important feature in the case is the plaintiff’s apparent inability to distinguish between a trade mark and a design. For example, the fourth paragraph of the statement of claim reads as follows:
“4. The defendant has infringed the plaintiff’s trade mark by causing to be made, selling and offering for sale in Nigeria similar artificial silk brocade designed in accordance with the design described in the complete specification of the said registered trade mark and claimed in paragraph 3 above”.
Paragraph 3 contains a description of the trade mark and gives the registration number thereof in the Register of Trade Marks kept in accordance with the provisions of the Trade Marks Ordinance (Cap. 217).
In paragraphs 5 and 6 of the statement of claim the plaintiff averred that the defendant had sold artificial silk brocade “designed as above”.
It appears clearly from the paragraphs of the statement of claim mentioned above the alleged infringement of the trade mark consisted in selling, etc., in Nigeria artificial silk brocade made according to a certain design or pattern. In paragraphs 9 and 10 of the statement of claim the plaintiff reverted to the averment that his trade mark has been infringed by the defendant and that this caused him great damage.
At the trial, it came out clearly that the confusion arose out of the fact that the plaintiff had ordered artificial silk brocade to be made.in England according to a design furnished by him and consisting of a puffed bird, of the words “Banku Leiyenwu” and of certain other markings. The order was given to plaintiff’s agents in England who placed the order with William Cannan Ltd., of Manchester, who registered the design under the Patents and Designs Act, 1907 to 1942, in their own name. The Registration Certificate (exhibit H) shows that the registration took effect on the 9th August, 1944. The copyright in the design was effective for five years unless extended. No extension was asked for and the design ceased to be protected in 1949.
The effect of the registration of the design was that William Cannan Ltd., and not the plaintiff, held the copyright for the design from 1944 to 1949. William Cannan Ltd. were therefore free to sell the brocade bearing the puffed bird design to whomsoever they chose, unless they had contracted with plaintiff to sell the material exclusively to him.
Whether or not it was right for William Cannan Ltd. to register the design in their own name is not a matter in issue in the present case. There is no hint that there was any contract between plaintiff and William Cannan Ltd., restricting the latter from selling the brocade to their other customers, and the plaintiff could never have sued any other trader selling the said brocade in Nigeria on the ground that he held the copyright of the registered design.
The plaintiff, however, did a rather odd thing. He registered the puffed bird design in Nigeria as a trade mark in respect of artificial silk brocade. It is not disputed that the trade mark consists of the pictorial representation of a puffed bird and the other characteristics of the design registered by William Cannan Ltd. The trade mark was registered in 1945, i.e. after the design had been registered in the United Kingdom, and was to remain in force for fourteen years from the 8th January, 1945 (see exhibit A).
I will now tum to the statement of defence. The defendant did realise the difference between a trade mark and a registered design and tried to point this out in paragraph 4 of his statement of defence. Put shortly, his defence was that he had not infringed any trade mark by selling, etc., although he happened to have sold brocade embodying a design registered in England by the manufacturers from whom he had purchased the brocade.
The defendant did admit that the plaintiff was the owner of the registered trade mark No. 5238 in class 31 but made no further admission regarding the description of the trade mark set out in paragraph 3 of the statement of claim. It is not necessary to say any more about the statement of defence except that the defendant denied liability and asserted his right to go on selling the artificial brocade which is the cause of the dispute.
The defendant gave evidence at the trial and said that he first knew that the plaintiff had registered the puffed bird trade mark when he received a letter from plaintiff’s solicitor in August, 1951. His attitude is clearly explained by the following passage in his cross-examination: “Because the pattern on exhibit B is woven all over the cloth, it would not come to my mind that it would be likely to be registered as a trade mark”. According to the trial Judge’s notes, defendant’s counsel in the Court below submitted that “although plaintiff has exclusive right to trade mark, other people can use pattern “.
The learned counsel went on to submit that the mark should not have been registered.
The puffed bird design registered in England in 1944 is exhibit H. It shows the puffed bird with the word “Banku” on top and the word “Leiyenwu” below. The trade mark registered in Nigeria (exhibit A) shows a similar bird with the same words: the two pictorial representations, the words and other markings are similar.
At the trial, the plaintiff produced the brocade exhibit B as being the one sold by him: it is a material embodying the design registered in England. The plaintiff also produced exhibits C and D which are brocades embodying a pattern of a puffed bird with the word “Banku” on top and the word “Leiyenwu” below. The bird on exhibits C and D looks towards the right and has a small crest whereas the bird in the registered design and in the registered trade mark looks towards the left and has no crest. The other markings woven into exhibits C and D are not exact reproductions of those on the registered design or the registered trade mark.
It is beyond dispute that the defendant does stock and sell the brocade exhibit C and exhibit D (which have the same pattern).
I might mention that, at the trial, the plaintiff said that his sales of exhibit B had gone down. He gave no figures establishing the decrease in quantity sold and did not mention what financial loss he had suffered.
After the parties had closed their case before Abbott, J., the learned Judge adjourned the case for delivery of judgment. In due course he delivered what has been called an interim judgment. In that judgment the learned Judge very properly pointed out that the action was one for infringement of trade mark and was not a passing off action. He noted that the plaintiff had established that he was the registered proprietor of the trade mark No. 5238 in class 31 in respect of artificial silk brocade. He then went on to examine whether the brocade sold by the defendant infringed the plaintiff’s mark and after comparing the pattern on the brocade exhibit B (i.e. plaintiff’s brocade) with the pattern on exhibit C. (the defendant’s brocade) he came to the conclusion that an illiterate person would not notice the difference between the two patterns.
The learned Judge then stated that he had “carefully considered the pattern which is registered in the plaintiff’s name as a trade mark, and the manner in which it appears on his goods”. The learned Judge then stated as follows:” It is, in my view, much more truly a pattern or design than a trade mark, which, I am satisfied from the evidence, usually appears only on the outside fold of a piece of cloth “.
The learned Judge then went on to express his concern over the fact that the design registered in England (exhibit H) by William Cannan Ltd. is exactly the same as the trade mark subsequently registered by plaintiff in Nigeria, and also over the fact that the defendant had been supplied with the brocade bearing the puffed bird design by William Cannan Ltd.
These considerations led the learned Judge to raise the question whether the puffed bird device was not more appropriately registrable as a design than as a trade mark, the more so as it appears all over the cloth.
I am of opinion that the learned Judge was on the right track when paying attention to the fact that the real subject-matter of the complaint was that the defendant was selling a type of cloth embodying a pattern which the plaintiff averred was his monopoly.
I have already quoted at length paragraph 4 of the statement of claim which, taken together with that part of the writ of summons which reads: “The defendant is marketing similar artificial silk brocade in Nigeria with the same design depicting a puffed bird with the same inscription”, can only mean that the plaintiff was challenging the defendant’s right to sell brocade embodying the puffed bird design.
The writ of summons, and the statement of claim, do not really mean that the plaintiff complains that the defendant has been using his trade mark. The plaintiff pleaded that the defendant had no right to cause to be manufactured and to market a material designed in accordance with the design described in the complete specification of the plaintiff’s registered trade mark.
Being given that the plaintiff was not the registered owner of the design embodied in the brocade, he had, in my opinion, no cause of action, the more so as the design which had originally been protected by registration under the Patents and Designs Acts in 1944 ceased to be so protected in August. 1949. Not only William Cannan Ltd. but any other manufacturers were free to manufacture and place on the market, after August, 1949, a brocade embodying the design originally registered by William Cannan Ltd.
The picture of the puffed bird and the words accompanying it were, in my opinion, not used on the brocade as a trade mark but as a design, i.e. as an intrinsic part of the material.
At the beginning of plaintiff’s cross-examination at the trial of the action he said:
“I registered the words ‘Banko Leiyenwu’ to describe the pattern on exhibit B, which is made by William Cannan Ltd. of Manchester”.
This piece of evidence emanating from plaintiff gives the key-note of the case, which is that the plaintiff thought that he could claim a monopoly in a type of artificial silk brocade manufactured by a firm in England embodying the design which was never registered in his name and which ceased to be protected in 1949.
I should mention at this stage, that the witnesses called by the plaintiff did not help to prove the case for infringement of trade mark. Thus the third witness, Adumola Aribi, who sells brocade, stated that he knew “the Banko pattern” and that exhibit C (i.e. the brocade sold by defendant) is known as “Banko” brocade. The fourth witness said the same thing but went even further by stating that any brocade of the colour of exhibit C, even if it is plain brocade, is “Banku” brocade.
The crux of this case is whether the pattern appearing on brocade such as exhibits B, C and D could be said to be an infringement of a trade mark merely because the same pictorial representation was registered as trade mark in respect of artificial brocade.
The defendant stated that it would not have occurred to him to think that a pattern woven all over a cloth was likely to be registered as a trade mark. The defendant also explained that he had been offered brocade by William Cannan Ltd. with the pattern appearing on exhibits B and C and that he had chosen exhibit C.
Mr. R. F. Coker who is a textile sales manager of the U.A.C. stated in evidence that a bird is a common pattern used for textiles in Nigeria and that Nigerians choose according to pattern and colour. The witness explained that he had never seen a trade mark repeated all over a piece of cloth, and that a trade mark normally appears on the face of the fold of a piece of cloth and bears the proprietor’s name. Another witness, a trader in textiles, bore out Mr. Coker.
The evidence just referred to leads me back to the question as to whether there was any justification for the plaintiff to aver that his trade mark had been infringed.
“Trade mark” is defined in section 2 of the Trade Marks Ordinance (Cap. 217) as meaning “a mark used or proposed to be used upon or in connection with goods for the purposes of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with or offering for sale”, This is the same definition which appeared in the Trade Marks Act, 1905, in England.
I find it difficult, not to say impossible, to accept the view that what I call the puffed bird design embodied in the very fabric of the brocades exhibits B, C and D constitutes a mark used to indicate that the brocade is manufactured or sold by a particular person within the meaning of the definition of trade mark.
There is no doubt that features of get-up may be copied so as to lead to passing off, but this is not a passing-off action, and infringement depends on there being the use of a mark, and the question in the present case must be decided by considering whether what the defendant has done amounts to the use of a mark within the meaning of the definition of trade mark reproduced above. I am of opinion that in the present case the design embodied in the brocade was not the use of a mark within the meaning of the definition, and I am of opinion that the learned trial Judge would have been fully justified in dismissing the action after hearing the evidence and counsel’s addresses.
I have read the judgment of Kekewich, J., in In re Harrison, McGregor & Co.’s Trade Marks (1) and his differentiation of trade mark and design has helped me to arrive at the conclusions expressed above.
Abbott, J., in his interim judgment, offered the remark that no application had been made by the defendant to expunge, from the Register of Trade Marks, the plaintiff’s puffed bird trade mark. He then examined the provisions of the Trade Marks Ordinance relating to the validity of trade marks after seven years and ended up by saying that the defendant might wish to make an application for rectification of the Register and that he proposed to give him an opportunity of doing so. He added that any application which the defendant wished to make would have to be filed in the Supreme Court at Ibadan not later than a certain date. He ended up by stating that if no application was filed, the plaintiff was at liberty to move the Court for judgment in his favour.
What happened next was that the defendant filed a notice of motion in the suit then pending and served it on the plaintiff and on the Registrar of Trade Marks, Lagos. The motion was for expunging the plaintiff’s trade mark.
When the matter next came before Abbott, J., there were two notices of motions before him: the one filed by the defendant (now respondent) and the other filed by the plaintiff to move for leave to appeal against the interim judgment.
The plaintiff’s counsel took a preliminary objection to defendant’s notice of motion on the ground that the defendant should have proceeded by originating motion, the more so as there was no defence based on the invalidity of the registration.
The learned Judge decided that the motion to rectify the register was in order and proceeded to hear it. The motion for leave to appeal was adjourned pending the decision on defendant’s motion to rectify the Register of Trade Marks.
The Judge heard submissions on the defendant’s motion and then gave a final judgment in which he ordered the plaintiff’s trade mark to be expunged and then dismissed the plaintiff’s claim. The learned Judge added that if he had decided that the plaintiff should succeed in his action, he would have awarded him nominal damages of twenty shillings only on the ground that his trade mark is not sufficiently distinctive; and he would also have granted the injunction prayed for. The final words of the judgment were “The plaintiff could have no monopoly in the word ‘Banku’ nor in the bird (Kutnow’s case, cited at pp. 312-3 of Kerly)” (2).
On the hearing of this appeal, Mr. Kayode appeared for the appellant and Mr. Ferguson for the respondent.
The second ground of appeal was that the learned trial Judge erred in entertaining the defendant’s motion in as much as the defendant had never raised the issue of the validity of the registration in his pleadings and had never applied during the trial for a rectification of the Register. This was not denied by Mr. Ferguson who, however, submitted that there was nothing wrong or irregular in the issue of rectification being raised by the learned trial Judge.
Mr. Kayode relied on two decisions of this Court: Cardoso v. The Executors of the Estate of the late J. H. Doherty (3) and E. E. Johnson v. Ojobado (4). In the first mentioned case, this Court held that as the plaintiff had not pleaded valuable consideration and had never asked for an amendment of his pleadings (although the defendant had raised the defence of absence of valuable consideration), the plaintiff should not have been allowed to adduce evidence of valuable consideration: the Court added that it was not a case in which the Court should amend the statement of claim at such a late stage. In the Johnson case (4) the Court pointed out that if pleadings are to have any meaning and serve any useful purpose, it is essential that the party pleading should be bound thereby.
I have carefully considered the submissions of counsel and have reached the conclusion that the second ground of appeal must be upheld. This is not a matter of amending the proceedings under Order XXXIII of the Supreme Court (Civil Procedure) Rules or of settling issues under Order XXXI of the said Rules. The statement of defence was never amended and, what is more important, the defendant was content to close his case without raising the issue that the trade mark was invalid. It may be that the defendant did not deem it necessary to raise such issue, and it is likely that if he had wanted to attack the validity of the registration he would have taken the necessary steps very early in the proceedings or even before proceedings were begun.
Although I think the learned Judge was actuated by the laudible motive of determining all the matters connected with the action he was trying, I am of opinion that he was not justified in intimating to the defendant, after the latter had closed his case, that he should take steps to have the plaintiff’s trade mark expunged and I am also of opinion that the subsequent re-opening of the case was not justified.
By reason of the view expressed above, I hold that all the proceedings after the delivery of the “interim judgment” must be set aside as void.
It is therefore unnecessary to deal with the first, fourth, fifth and sixth grounds of appeal which all relate to the question of rectification of the Trade Mark Register.
In view of the order which I consider should be made in this appeal, it is unnecessary for me to deal with the seventh ground of appeal which was to the effect that the learned Judge in stating in his final judgment that, had he decided the case in plaintiff’s favour, he would have allowed nominal damages only. The eighth ground of appeal, which was that the judgment was against the weight of evidence, was not pressed by Mr. Kayode.
The third ground of appeal was that the learned trial Judge having found that the plaintiff was entitled to judgment at the close of the case for both sides, he was wrong in failing to enter judgment for damages in plaintiff’s favour.
It is true that at the end of the “interim judgment” the learned trial Judge did say that if the defendant did not take certain steps the plaintiff was at liberty to move the Court for judgment in his favour, but I am not prepared to say that this necessarily meant that the learned Judge would have given judgment in plaintiff’s favour. However, the final judgment was in defendant’s favour and, naturally, the defendant was quite satisfied with the result and had no reason for appealing.
The plaintiff-appellant, on the other hand, has succeeded in getting rid of all that part of the proceedings which took place between the interim judgment and the final judgment and he has asked this Court to enter judgment in his favour on the claim formulated in the writ of summons and the statement of claim. This I am not prepared to do because, as already explained, I am of opinion that the proper decision at the close of the case on the 5th August, 1952, should have been a judgment dismissing the claim. I consider that this is a proper case for the application of rule 36 of the West African Court of Appeal Rules, 1950. I would direct that the decision of the Court below be set aside and that a judgment dismissing the action be entered.
As regards costs, being given that the appellant has been partially successful. I would make no order as to costs of this appeal.
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COUSSEY, J. A.
I concur.
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SMART, J.
I concur.
Judgment of Court below set aside; Judgment dismissing the action entered.