DYKTRADE LIMITED (APPELLANT)
v.
OMNIA NIGERIA LIMITED (RESPONDENT)
(2000) All N.L.R. 591
Division: Supreme Court of Nigeria
Date of Judgment: 14 July 2000
Case Number: SC 57/1995
Before: Salihu Modibbo Alfa Belgore; Michael Ekundayo Ogundare; Uthman Mohammed; Aloysius Iyorgyer Katsina-Alu; Akinola Olufemi Ejiwunmi, JJSC
ISSUE
Whether, after an application for registration of a trade mark has been accepted, but before its registration, the applicant enjoys protection against the use of the trade mark by another?
FACTS
In October 1991 the appellant applied to the Trade Marks Registry at Abuja for registration of the trade mark "Super Rocket", in relation to a product used in the grinding of stones applied in the washing of terrazzo floors. The Registrar of Trade Marks later informed the appellant that his application had been accepted. But certain procedural steps, prescribed by the Trade Marks Act, were still to be taken before registration of the trade mark could be finalised with retroactive effect to the date of application.
Subsequent to the notification of acceptance from the registry, but before registration of the trade mark, the appellant got wind of the respondent's intention to import, market, distribute and sell grinding stones with the name "Super Rocket". He approached the Federal High Court sitting at Lagos in March, 1993 with an ex parte application for an injunction to restrain the respondent from doing so. Simultaneously, the appellant also filed a Writ for Orders of Injunction as well as a further Notice on Motion, for an interlocutory injunction pending judgment in the suit instituted by the Writ.
The ex parte application was granted on 12 March 1993 and on 5 April 1993 the respondent applied to the trial court to have that order set aside. The trial court thereupon heard the respondent's application and the appellant's application on Notice of Motion together. On 16 July 1993 the trial court set aside the injunction granted on 12 March, and, additionally, struck out the appellant's entire action.
The Court of Appeal dismissed the appellant's appeal against this ruling and the appellant brought a further appeal to the Supreme Court.
HELD
1. On infringement of a trade mark
All that was before the court was an allegation that application had been made for the registration of a trade mark. This contention did not mean that the trade mark had been registered. Per Belgore, JSC, at page 596.
The right to protection does not accrue until registration of the trade mark. The appellant has not yet acquired that right as all the procedural steps statutorily prescribed for the registration of the trade mark had not yet been complied with. The appellant had no trade mark, and accordingly no right, to protect. Per Belgore, JSC, at page 596.
As the appellant had acquired no right, there was nothing to protect by way of an interlocutory injunction. Per Ogundare, JSC, at page 599.
"Acceptance" of the appellant's application to the Trade Marks Registry cannot be seen to mean "registration" of the trade mark. Per Ogundare, JSC, at page 599.
The purpose of an interlocutory order is to protect from injury an applicant who enjoys an existing right by offering protection against violation of that right. The appellant possessed no registered trade mark to warrant protection. Per Katsina-Alu, JSC, at page 604.
2. On passing off
The appellant's Notice of Motion of 12 March 1993 did not cover an allegation of the tort of passing off. It would be wrong to grant an order not asked for. Per Ogundare, JSC, at page 599.
O Ogunkeye Esq. for the appellant.
A Ajibola Esq. for the respondent.
The following cases were referred to in this judgment:
Nigeria
Alowonle v Bello & another (1972) ANLR 45
Ekpenyong & others v Nyong & others (1975) 2 SC 71
Kalio v Kalio (1975) 2 SC 15
Kotoye v CBN (1989) 1 NWLR (Part 98) 419
Obeya Memorial Specialist Hospital & another v A-G, Federation & another (1987) 2 NSCC 961
Oduntan v General Oil Ltd (1995) 4 NWLR (PP 38) 1
Olurotimi v Ige (1993) 8 NWLR 259
Union Breverages v Owolabi (1988) 1 NWLR (Part 68) 128
Wellcome Foundation v Ranboxy Mantori Nigeria Ltd (unreported FHC/L/35/90 of 31 October 1990)
Foreign
American Cynanud Co v Ethicon Ltd [1975] 1 All ER 504
The following statutes were referred to in this judgment:
Nigeria
Trade Marks Act Cap. 436 Laws of the Federation of Nigeria 1990: Ss 3; 9(1), (2), (3); 10; 11; 12; 18; 19; 20; 22(2); (4)
The following book was referred to in this judgment:
Law of Trade Marks and Trade Names (12ed) Kerly at paragraph 15-66 at 321
Belgore, JSC (Delivered the Leading Judgment):- The appellant was the plaintiff in the Federal High Court and the appellant at the Court of Appeal. The claim in the Federal High Court was against the defendant (now respondent as it was in Court of Appeal) as follows:-
An injunction to restrain the defendant from:-
"(a) Infringing the plaintiff's Trade Mark "Super Rocket" applied for and accepted in Nigeria under No TP 11933/91/5.
(b) Passing off or causing enabling or assisting others to pass off grinding stones used for the purpose of washing terrazzo floors inscribed with the trade mark "Super Rocket" not being of the plaintiff's manufacture or merchandise as and for the goods of the plaintiff.
(c) Importing, selling or offering for sale or supplying grinding stones used for the purpose of washing terrazzo floors or any other product under the trade mark "Super Rocket" as to be calculated to lead to the belief that grinding stones not of the plaintiff's manufacture or merchandise are the products of the plaintiff."
Then an ex parte order was prayed for which included an injunction restraining the defendant from manufacturing, selling, offering for sale, inviting offers to acquire or distribution for the purposes of sale grinding stones used for the purpose of washing terrazzo floors inscribed with the Trade mark "Super Rocket" but not being of the plaintiff's manufacture or merchandise" This ex parte application was granted. Concurrently filed with the ex parte application was an application on notice praying for an interlocutory injunction to restrain the defendant from selling grinding stones branded as Super Rocket which were imported or about to be imported by the defendant. Reacting to both the ex parte order of injunction and pending motion on notice for injunction the defendant filed an application to discharge the ex parte order and to oppose the motion on notice. Trial Judge decided to hear the two applications together and in his ruling decided:-
1. that the plaintiff was not entitled to sue for infringement of a trade mark which had not been registered and mere acceptance by Registrar of Trade Marks of the applicant has not amounted to registration.
2. the defendant cannot be held liable for passing off because it ordered and imported goods as an agent for disclosed principals and therefore the court would not grant an application for injunction and a suit for passing off could not be sustained.
3. As the claim for infringement was struck out the entire suit stood struck out.
Against this ruling an appeal was unsuccessfully lodged to Court of Appeal. There is a further appeal to this Court. The appellant raised the following issues for determination:-
"1. Whether the plaintiff/appellant did not establish that there was a serious question to be determined at the trial, as far as its claim for infringement of trade mark was concerned such as to support its prayer for an interlocutory injunction.
2. Whether the court is obliged to consider the question of balance of convenience between the parties as the respondent did not assert in its counter affidavit to the prayer for interlocutory injunction, whether directly or impliedly, that if the injunction sought was granted, it would suffer an injury which cannot be adequately recompensed by an award of damages under an undertaking as to damages.
3. Whether the prayer in the plaintiff's/appellant's motion for interlocutory injunction does not amount to a prayer to restrain the respondent from passing off as well as to restrain it from trade mark infringement, and whether the plaintiff/appellant is not entitled to an interlocutory injunction as far as its claim for passing off was concerned."
"Trade mark" when registered will entitle the proprietor to sue or institute an action for any infringement of the trade mark. Registration entitles the proprietor to the exclusive use of the trade mark and also right to sue for passing off the goods of the proprietor. The Registrar of Trade Marks will register a trade mark on an application by the proprietor and after making all the searches and investigations as provided for in Trade Marks Act Cap. 436 Laws of the Federation of Nigeria 1990 to satisfy the requirements of Section 9(1), (2) & (3) and Sections 10, 11 & 12 thereof. The Act sets out clearly in Sections 17, 18, 19 and 20 the procedure whereby the application for registration of a trade mark will proceed. In the instant case on appeal the only matter before the courts below is the allegation that the appellant applied for registration of the trade mark. The contention that the application was made does not mean that it is "registered" The Act in Section 22 states clearly:-
"(1) when an application for registration of a trade mark in Part A or in Part B of the register has been accepted, and either:-
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has been opposed and the opposition has been decided in favour of the applicant.
the registrar shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be."
Also when registered, the trade mark shall be deemed as having been registered on the date the application was made. Therefore, what was before the courts below was mere application and acknowledgement of the application, not what the applicant calls acceptance. Acceptance of the application is when the conditions in Section 22 above have been fulfilled. Up to the moment, there is no evidence that the application has been accepted and by virtue of Section 22(4) the application has abated.
It is therefore clear that from the wording of the Act nobody acquires the status of the "proprietor" unless that person, in relation to the trade mark, is the owner, importer exporter, shipper or any other person for the time being possessed of or beneficially interested in the goods to which the trade mark is applied. The appellant has not acquired any right to protect for the time being as the applicant for the purpose of the Act because all the procedure leading to acceptance had not been followed.
The word "proprietor" may be misleading, if taken literally because what is being protected is the goodwill of a business, not a proprietary right as such. It is therefore clear that the right sought to be protected with injunction by the appellant has not matured and the trial court on scanty materials before it rightly refused to continue with the matter and the action was rightly struck out. Court of Appeal did the right thing. The appellant has not indicated clearly the right he wanted protected either in the interim or substantive claim. What was before the trial court was not a matter of passing off but that of breach of appellant's trade mark. The appellant has got no trade mark to protect.
The courts in this country must not look beyond our statute when there is no ambiguity. Trade Marks Act is very clear and the appellant has not acquired anything called "voidable registration" as held in Wellcome Foundation v Ranboxy Mantori Nigeria Ltd (unreported FHC/L/35/90 of 31 October 1990) because nothing in the Act justifies such status for trade marks. The grant or refusal of an injunction is a discretionary power of the court and enough facts must be available in court to grant it. (See American Cynanud Co v Ethicon Ltd [1975] 1 All ER 504; Kotoye v CBN (1989) 1 NWLR (Part 98) 419 and Oduntan v General Oil Ltd (1995) 4 NWLR (PP 38) 1, 18 are decisions on conditions necessary to grant discretionary order of injunction). The appellant has not shown any other reasons or that he has applied and got any trade mark registered.
I therefore find no merit in this appeal and I dismiss it with N10,000 costs to the respondent.
Ogundare, JSC:- I agree with my learned brother Belgore JSC whose judgment I had a preview of before now, that this appeal is totally lacking in substance and ought to be dismissed. I may, however, add a few words to the reasons given by him for reaching this conclusion.
The appellant now before us was plaintiff in the Federal High Court sitting in Lagos. It had sued the present respondent claiming an injunction to restrain the defendant etc for infringing the plaintiff's Trade Mark "Super Rocket" applied for and accepted in Nigeria under No TP 11933/91/5. Passing off grinding stones used for the purpose of washing terrazzo floors inscribed with the trade mark "Super Rocket" not being of the plaintiff's manufacture as and for the good of the plaintiff and importing etc such product; delivery up for destruction of all grinding stones bearing the offending mark "Super Rocket" in the possession, custody or the control of the defendant; one million Naira (N1,000,000) profits or an account of profits; costs, and further or other reliefs.
Simultaneously with the filing of the Writ, the appellant filed a Motion ex parte praying for some injunctive orders pending the hearing and determination of another Notice of Motion, filed at the same time, praying for an order of injunction "restraining the defendant whether acting by itself, its Directors, Officers, servants, employees or agents or any of them or otherwise howsoever, until judgment in this suit or further order, from doing or authorising the doing of the following acts or any of them, that is to say: selling, offering for sale, inviting offers to acquire or distributing for the purposes of sale grinding stones branded as "Super Rocket" and imported or about to be imported by the defendant/respondent." The ex parte application was granted on 12 December 1993 and injunctive orders were made. On being served with the orders the respondent moved the trial court by way of motion filed on 5 April 1993 for an order "to set aside/discharge" the ex parte order made by this Honourable Court and dated 16 March 1993 on the ground that this Honourable Court was misled into making the order". Both the appellant's Notice of Motion and the respondent's motion to set aside were taken together and arguments were advanced by learned Counsel appearing for the parties.
In a reserved ruling, the learned trial Judge (Jinadu J) on 16 July 1993 dismissed the appellant's Notice of Motion and set aside the interim injunction granted on 12 March 1993. In addition he struck out the entire suit with costs to the respondent on the ground that the appellant had no cause of action against the respondent but against its principals. The learned Judge had said:-
"I have read thoroughly all the avalanche of court papers filed in this matter. I have also patiently read and digested all the submissions of both learned Counsel including all the legal authorities cited before me. I have, however, found that there are so much conflicting affidavits and counter-affidavits that the facts cannot be resolved unless I take oral evidence from the deponents. However, this I will not do in view of the very formidable arguments put up by both learned Counsel for the plaintiff and the defendant. If I resolve the legal propositions of the defendant's Counsel in favour of the defendant then this case must be struck out otherwise I may decide to give the case an accelerated hearing instead of proceeding to hear oral evidence from the deponents to the affidavits and counter-affidavits."
After considering the submissions made by learned Counsel, the learned Judge found:-
1. "that once an application is accepted for registration the applicant can be said to have a voidable registration this does not confer the right to sue conferred by Section 22(2) of the Trade Marks Act on such an applicant. What Section 22(2) did was to relate the date of registration of the trade mark back to the date of the application. It is my humble view that the exclusive right (to) a trade mark is based on its registration and it belongs to the person who first filed an application."
2. "the plaintiff cannot have a cause of action for infringement of trade mark until the trade mark is registered and a certificate of registration is issued to it by the Registrar of Trade Marks . . . I therefore hold that the plaintiff has not yet vested in it the legal interest in the trade mark 'Super Rocket' to protect."
3. "It is therefore not entitled to the grant of any injunction in respect to the substantive claim for an infringement of the trade mark 'Super Rocket' and the claim in respect thereof is hereby struck out because it is premature."
4. "Once the defendant has stated that it is an agent of a disclosed and known principal and Exhibit 'D' attached to the affidavit in reply to the counter-affidavit of the plaintiff clearly showed that the plaintiff knew one of the principals of the defendant and that the plaintiff in fact purchased Exhibit 'C' attached to the affidavit in support of the Motion for Injunction from the agent (sic principal?) and not from the defendant then on the strength of this it is clear that the defendant incurred no liability and its principals ought to have been sued ."
Being dissatisfied with this decision, the appellant appealed to the Court of Appeal (Lagos Division) which court dismissed the appeal but held that "the suit ought not to have been struck out and as such it is hereby sent back for trial". The order of the trial court striking out the suit was set aside. The Court of Appeal had found:-
1. that the learned trial Judge was wrong to have struck out the suit as there was no prayer to that effect by any of the parties.
2. that the learned Judge was wrong in inferring that contract of agency existed between the defendant and its customers.
3. that the trade mark was not yet registered in the appellant's name.
4. that "with the nature of the case presented by the appellant in respect of his prayer for interlocutory application (sic injunction), I find it difficult to say that the balance of convenience really tilts to its side. Restraining the respondent when the appellant is yet to have his trade mark registered offends my sense of justice."
There is no appeal to this Court against the order restoring the action to the list. The appellant, however, appealed further to this Court against the order of the Court of Appeal refusing its application for interlocutory injunction. Four grounds of appeal are raised in the Notice of Appeal upon which three issues are distilled, to wit:-
"1. Whether the plaintiff/appellant did not establish that there was a serious question to be determined at the trial, as far as its claim for infringement of trade mark was concerned such as to support its prayer for an interlocutory injunction.
2. Whether the court is obliged to consider the question of balance of convenience between the parties as the respondent did not assert in its counter affidavit to the prayer for interlocutory injunction, whether directly or impliedly, tha