In The Supreme Court of Nigeria
On Friday, the 13th day of July 2007
Before Their Lordships
Aloma Mariam Mukhtar |
...... |
Justice, Supreme Court |
Ikechi Francis Ogbuagu |
...... |
Justice, Supreme Court |
Francis Fedode Tabai |
...... |
Justice, Supreme Court |
Ibrahim Tanko Muhammad |
...... |
Justice, Supreme Court |
Christopher Mitchel Chukwuma-Eneh |
...... |
Justice, Supreme Court |
S.C. 176/2003
Between
Omnia Nigeria Limited |
....... |
Appellant |
And
Dyktrade Limited |
....... |
Respondent |
Judgment of Court
Delivered by
Aloma Mariam Mukhtar. J.S.C.
This is an appeal from the decision of the Court of Appeal Lagos division, which dismissed the appeal of the defendant/appellant who appealed to it, not being happy with the judgment of the Federal High Court, holden at Lagos. The parties are both limited liability companies. Sometime in 1989 the plaintiff initiated a trading venture with an Italian company to manufacture grinding stones for the washing of terrazzo floors. The plaintiff adopted the trade mark 'Super Rocket' for the grinding stones which it registered in Nigeria under No 51136 in class 19 with effect from 10th October, 1991 and the trade mark was inscribed on all the grinding stones ordered and supplied to the plaintiff. The plaintiff has in the course of the trading venture sold substantial quantities of 'super Rocket' grinding stones all over Nigeria and has acquired substantial reputation and good will in the trade mark. In December 1992 the defendant imported consignment of grinding stones branded 'Super Rocket' and distributed and sold them. It again imported another set of grinding stones branded Super Rocket, but plaintiff obtained an Anton Filler order against the defendant. The use of the trade mark 'Super Rocket' by the defendant has infringed the plaintiffs registered trade mark 'Super Rocket' No 51136, and was thereby passing off its grinding stones as and for the plaintiffs products. Consequently the plaintiffs sales have declined, and it has suffered loss and damage. The plaintiff thus claimed the following reliefs:-
"1. An injunction to restrain the Defendant whether by itself, its Directors, officers or any of them or otherwise howsoever from doing the following acts, or any of them, that is to say:-
a. Infringing the plaintiffs trade mark Super Rocket", registered under No 51136 in class 19.
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 Plaintiffs 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 Plaintiffs manufacture or merchandise are the products of the Plaintiff.
2. Delivery up for destruction of all grinding stones bearing the offending mark Super Rocket in the possession, custody or control of the Defendant.
3. Damages of Nl,000.000.00 or an account of profits.
4. Costs."
On being served with the plaintiffs statement of claim, rather than file the statement of defence, the defendant filed a motion on notice for the following orders:-
"1. An order striking out paragraphs 4, 5, 9, 11, 16, 21 (1) (a) of the Plaintiffs statement of claim dated 3rd of June 1997.
2. Striking out the statement of claim/entire claim of the Plaintiff.
3. Dismissing the entire suit with cost against the Plaintiff on the ground that:-
a. The Plaintiff has no locus standi and
b. Its claim discloses no reasonable possible cause of action."
The affidavit in support of the motion has the following salient facts:-
"2. That pursuant to an application by the Plaintiff dated the 25th of April 1997, this Honourable court on the 5th of May 1997 granted an order to set down the suit for mention and consequently ordered pleadings to be filed, i.e., the Plaintiff is to file and serve its statement of claim within 30 days and Defendant to file and serve its defence within 7 days after service of statement of claim.
3. That paragraph (sic) 4, 5, 9, 11, 16, and 21 (l)(a) of the statement of claim in so far as they lay claim to an alleged registration of a trade mark in favour of the Plaintiff are in direct material conflict with the particulars of claim dated the 2nd of March 1993.
4. Further to the conflict indicated in paragraph 3 above, the statement of claim directly contradicts all relevant material affidavit evidence in support of various motions filed by the Plaintiff in this suit, all of which are matters contained in the courts (sic) records, that nothing other than a mere application for registration of a trade mark is pending before the trade mark registry and not a registered trade mark as alleged in all the offending paragraphs aforementioned.
5. The rights if any in law of the Plaintiffs in the trade mark in dispute were considered by the court of Appeal in refusing the Plaintiffs appeal and claim for injunction, it was not and has never been the Plaintiffs case, in the said appeal No CA/L/202/93, or in the Federal High Court that it possessed a registered trade mark on the name "Super Rocket" or as alleged in all the above referred paragraphs.
6. That this bold attempt to introduce new issues into this suit by filing a statement of claim as in the said referred paragraphs is not only procedurally irregular but in bad faith and highly prejudicial to the interest of justice.
7. That the said offending paragraphs of the statement of claim ought to be stricken from (sic) the entire body of claim, as it is a gross abuse of the courts (sic) process.
8. That well apart from the offending stated paragraphs, the Plaintiff has no locus standi to bring or maintain the present action nor does its statement of claim contain or even disclose a reasonable cause of action or raise a triable issue upon which the honourable court can be called upon to adjudicate at all.
9. That consequently the entire statement of claim is incompetent, ought to be struck out in its entirety and the suit dismissed with cost against the Plaintiff."
The application was moved and Jinadu J. of the Federal High Court dismissed the application, having found as follows:-
"It is by operation of law in Section 22 (2) of the Trade Marks Act that the subsequent registration of the Trade Mark was related back to the date of the application for registration which was 10/10/91. There is therefore no doubt in my mind that the plaintiff has the locus standi to institute this action and also that there is reasonable cause of action in this matter."
The defendant was not happy with the dismissal of his application, so he appealed to the Court of Appeal on grounds of appeal. Briefs of argument were exchanged by learned counsel, pursuant to the Rules of this court. The briefs of argument which included an appellant5 s reply brief were adopted at the hearing of the appeal. Three issues for determination were distilled from the grounds of appeal in the appellant's brief of argument. These issues are:-
1. Whether the Court of Appeal was right in holding that Federal High Court has jurisdiction to entertain a claim instituted upon an unregistered trade mark?
2. Whether the learned Justices of the Court of Appeal were justified in holding that ".......with the registration of the Respondent's trademark a new event has not intervened to make the present circumstances different from the issues considered in the earlier interlocutory matter.....?
3. Whether the Court of Appeal was right in giving credence to the Respondent's certificate of Registration of Trade mark which was issued in contravention of Section 22 (4) of the Trade mark Act, Cap 436, Laws of the Federation?"
The respondent also formulated three issues for determination in its brief of argument as follows:-
"Issue No 1
Whether the Federal High Court has jurisdiction to adjudicate over the claims brought before it by the plaintiff?
Issue No 2
Whether the decision of the Supreme Court in respect of the earlier interlocutory appeal in this suit ((Dyketrade v. Omnia (2000)12 NWLR (pt. 680) 1), operate as a bar against the entertainment by the Federal High Court, of the plaintiffs subsisting claim for infringement of trade mark?
Issue No 3
Whether the Federal High Court is precluded from recognizing the certificate of registration of the trade mark Super Rocket under No 51136 pleaded in the statement of claim?"
I will adopt the appellant's issues for the treatment of this appeal, starting with issue (1) supra. The learned counsel for the appellant opened his argument on this issue by submitting that the Federal High Court lacks jurisdiction to entertain a claim upon an unregistered trade mark. Learned counsel for the appellant referred to the case of Madukolu v. Nkemdilim (1962) 2 NWLR page 341 on the competence of a court to adjudicate on an action. In that case the competence of a court to adjudicate upon an action is illustrated thus:-
"1 (a) It is properly constituted as regards numbers and qualifications of the members of the bench and no member is disqualified for one reason or the other;
(b) The subject matter of the case is within its jurisdiction, and there is no feature in the case which prevent the court from exercising its jurisdiction; and
(c) The case comes before the court initiated by due process of law, and upon fulfilment of any condition precedent to the exercise of jurisdiction."
According to learned counsel, the third condition is the problem in this issue, and learned counsel's argument is whether the case before the Federal High Court was initiated by due process of law, and upon fulfilment of any condition precedent to the exercise of jurisdiction, and what determines jurisdiction of court is the cause of action of the plaintiff in the writ of summons as held in the case of NV Scheep v. MV "Arz" (2000) 15 NWLR part 691 page 668. This may be so, but where a statement of claim has been filed; its content and claim determine the jurisdiction of the court, as it is settled law that a statement of claim supersedes a writ of summons. See Ayorinde v. Oni (2000) 3 NWLR part 649 page 348, and Nnadi v. Okoro (1998) 1 NWLR part 535 page 573.
I will now look at the statement of claim and reproduce the salient averments hereunder. They read:-
"4. The plaintiff further avers that for the purpose of distinguishing the grinding stones manufactured for the Plaintiff from other grinding stones available in the market, the plaintiff adopted the trade mark "Super Rocket" which it registered in Nigeria under No. 51136 in class 19 with effect from 10th October 1991 for the sale of grinding stones and which said trade mark is clearly inscribed on all grinding stones ordered by and supplied to the plaintiff.
5. The plaintiff avers that the said trade mark Super Rocket' is valid and subsisting on the register of trade marks and remains in force up to 10th October, 1998.
8B. By reason of the foregoing the Plaintiff has acquired substantial reputation in the trade mark Super Rocket' in connection with grinding stones as its products have become extremely well known in the building industry and to the purchasing public in Nigeria.
9. As a consequence of the above reputation, the Plaintiff has acquired substantial goodwill in the trade mark "Super Rocket" in Nigeria and which trade mark has by wide spread usage over the past 7 years become distinctive of the Plaintiffs goods on the part of the members of the public.
10. In December 1992 it came to the Plaintiffs attention that a consignment of grinding stones branded "Super Rocket" not being the Plaintiffs product had been imported into the country by the Defendant from Italy, without the consent or permission of the Plaintiff.
11. The Plaintiff being seriously concerned about the aforesaid importation, as it constituted an infringement of the Plaintiffs trade mark "Super Rocket" No. 51136 proceeded to investigate same, but by the time the Plaintiff traced the importation of the aforesaid grinding stones to the Defendant, the whole consignment had already been distributed and sold off by the Defendant.
12. The Plaintiff avers that subsequently it received information that the Defendant had again imported into the country another consignment of grinding stones, not of the Plaintiffs merchandise and branded Super Rocket and that the consignment was at the time being cleared at the Port preparatory to delivery and distribution.
13. Consequently, the Plaintiff applied ex-parte for an Anton Filler Order against the Defendant which was granted by the Honourable court on the 12th of March, 1993.
14. The Plaintiff further avers that upon the execution of this order on the Defendant at its address at Adeyanju Daniel Street (Vanguard Avenue) Oshodi - Apapa expressway Lagos 8 photocopies of the way bills showing sales of polishing stones to certain customers, were delivered to the Plaintiffs solicitor and the bailiffs of this Honourable court.
Particulars
|
Way Bill Receipt |
Quantity of Polishing Stones Supplied
|
a. |
No. 10593 dated 5th March 1993 |
785 Cartons
|
b. |
No. 9841 dated 12th May 1992 |
392 Cartons
|
c. |
No. 9840 dated 12th May 1992 |
393 Cartons
|
d. |
No. 9835 dated 9th May 1992 |
392 Cartons
|
e. |
No. 9834 dated 9th May 1992 |
393 Cartons
|
f. |
No. 9736 dated 31st March 1992 |
413 Cartons
|
g. |
No. 9754 dated 1st April 1992 |
72 Cartons
|
h. |
No. 9753 dated 1st April 1992 |
300 Cartons
|
15. The Plaintiff also avers that each carton contains about 56 grinding stones and the Defendant sells 3 grinding stones for N45.00 as against the Plaintiffs product which sells for N55.00 for 3 pieces.
16. By using the trade mark "Super Rocket" in the course of trade in relation to grinding stones which are not of the Plaintiffs manufacture or merchandise, the Defendant has infringed the Plaintiffs registered trade mark "Super Rocket" No 51136. Further the Defendant is also thereby passing off its grinding stones as and for the Plaintiffs products.
17. The Plaintiff avers that the defendant has deliberately branded its products as "Super Rocket" in order to benefit undeservedly from the good reputation which the Plaintiff has earned over the past 7 years from the high quality of the Plaintiffs grinding stones."
The statement of claim was filed well before the motion for dismissal of the suit was filed, so the above averments were very much active to determine the cause of action. The particulars of claim reproduced in the appellant's brief of argument cannot be read in isolation, they must be read together with the above averments to determine whether or not a cause of action has been disclosed by the plaintiff. I have no doubt in my mind that the cause of action is the infringement of the plaintiffs registered trade mark and passing off. By virtue of Section 251 (1) (f) of the 1999 Constitution of the Federal Republic of Nigeria, the Federal High Court was conferred with exclusive jurisdiction in matters relating to any Federal enactment on copyright patent designs etc.
The relevant Federal enactment to the subject matter of this suit is the Trade Marks Act Cap 436, Laws of the Federation of Nigeria 1990; Sections 3 of which stipulates the following:-
"3. No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark; but nothing in this Act shall be taken to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof."
The learned Counsel relied upon the cases of Ayman Enterprises v. Akuma. Industries Ltd and 3 ors (2003) 13 NWLR part 836 page 22 and Dyketrade v. Omnia (2000) 755 part 1 page 1.
The learned Counsel for the respondent has in response submitted that it is only where the statement of claim has not been filed that the court will look only at the writ of summons and the particulars of claim endorsed thereon to determine whether or not the court has jurisdiction in the matter before it. Therefore, the claim of the plaintiff as formulated in the statement of claim is final. He argued that in the NV Scheep case only the writ of summons and particulars of claim had been filed at the time the issue of jurisdiction was raised, hence the court in that case stated that the cause of action is as endorsed on the writ of summons, but where a statement of claim has been filed, it is the averments therein that need to be looked at. He referred to the case of Ikine v. Edjerode (2001) 18 NWLR part page 446. Indeed, having filed the statement of claim, the position of the law is that the writ of summons and particulars of claim are superseded, and it is the content of the said statement of claim that becomes final, and on which the case is predicated.
The learned counsel for the appellant has submitted that the Federal High Court has no jurisdiction to entertain the respondent's claim owing to the failure of the respondent to fulfil the condition precedent to bringing the claim, which is obtaining a certificate of registration of the said trade mark before suing for its alleged infringement.
The learned counsel for the appellant argued that unless this action was initiated by an invalid process, this court should not be concerned with the jurisdiction of the Federal High Court at the date the writ of summons was filed, but with the current jurisdiction of the Federal High Court. According to him even if the Federal High Court did not have jurisdiction over the cause or causes of action sought to be litigated before it at the time the action was initiated, but later acquired jurisdiction, then its continued adjudication over the matter will be lawful and valid. He placed reliance on the case of Adani & Anor v. Igwe 1957 1 NSCC 84. Learned counsel further contended that jurisdiction conferred on the Federal High Court by Section 251 of the 1999 Constitution is in addition to any other jurisdiction which might be conferred on the court by any Act of the National Assembly. Therefore, the jurisdiction of the Federal High Court is not limited to that prescribed in the Constitution. He continued by submitting that Section 315 of the 1999 Constitution deems existing laws in respect of matters within the legislative authority of the National Assembly to be Acts of the National Assembly. That the law relating to the establishment power and administration of the Federal High Court is a law within the legislative competence of the National Assembly, therefore the Federal High Court Act is an Act of the National Assembly. Consequently any jurisdiction conferred upon the Federal High Court by that Act, which is wider than the jurisdiction conferred upon the court by the Constitution shall be jurisdiction, validly conferred on the court. Hence in Ayman Enterprises v. Akuma Industries & 3 ors 2003 13 NWLR part 836 page 22, the court took into consideration the jurisdiction conferred by the Federal High Court in reaching its decision. Now, let me examine the provision of Section 251 (1) (f), vis-à-vis Section 315 of the constitution, which states thus:-
"251 (1) Notwithstanding anything to the contrary contained in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil causes and matters:-
........................
(f) Any Federal enactment relating to copyright patent, designs, trade marks and passing-off, industrial designs and merchandise marks, business names. Commercial and industrial monopolies combines and trusts; standards of goods and commodities and industrial standards."
"315 (1) Subject to the provisions of this Constitution, an existing law shall have effect with such modifications as may be necessary to bring into conformity with the provisions of this Constitution and shall be deemed to be-
(a) An act of the National Assembly to the extent that it is a law with respect to any matter on which the National Assembly is empowered by this Constitution to make laws; and
(b) a law made by a House of Assembly to the extent that it is a law with respect to any matter on which a House of Assembly is empowered by this Constitution to make laws."
The above provisions speak for themselves. Section 251 confers on the Federal High Court jurisdiction to hear and determine not only on matters stipulated in subsection (f) supra, but other jurisdiction as may be conferred upon it by an Act of National Assembly. Consequently the Federal High Court's jurisdiction is not limited to only matters contained in the said subsection (f) supra. Section 315 of the Constitution similarly widens the scope of the jurisdiction of the Federal High Court, as the Federal High Court is within the purview of the legislative power of the National Assembly. It is a fact that the case of Ayman v. Akuma supra was decided with reference to the provision of Section 230 (1) (f) of the 1979 Constitution as amended by Decree 107 of 1993 and Section 7 of the Federal High Court Act 1973. According to learned counsel for the respondent, the provisions of Section 230 (1) of the 1979 Constitution as amended by Decree 107 of 1993 and Section 251 (1) of the 1999 Constitution being virtually identical, the decisions in Ayman v. Akuma regarding the interpretation of Section 230 (1) of the 1979 Constitution is applicable in the interpretation of Section 251 (1) (f) of the 1999 Constitution. He continued that this court has adopted as prescribed by the Federal High Court Act, the 1973 text of Section 7 of the Act, whereas that text had already been amended and therefore no longer valid at the time the decision in Ayman v. Akuma was reached, so the decision was in error, hence this court is being urged to depart from the conclusion reached in that case; that the jurisdiction of the Federal High Court in respect of passing-off is limited to claims arising from the infringement of a registered trade mark and does not extend to claims founded on principles of common law. According to learned counsel section 7 of the Federal High Court Act 1973 was amended by the Federal High Court (Amendment) Decree 1991 (Decree No 60). Though the decree was promulgated on 30th December 1991, it was suspended two days later by the Federal High Court (Amendment Decree 1992 (Decree No 16), promulgated on 1st January 1992. Subsequently, on 25th August 1993, by Statutory Instrument No 9 of 1993, 26th August 1993 was appointed as the date on which the Federal High Court (Amendment) Decree 1991 shall come into force.
It is a fact that in the Ayman's case Section 7 of the 1973 text of the Federal High Court Act was reproduced and dealt with thus :-
"Section 7 (1) (c) (ii) of the Federal High Court also provides:-
The Federal Revenue Court shall have and exercise jurisdiction in civil causes and matters arising from-
(i) .................................................................................
(ii) any enactment relating to copyright, patents, designs, trademarks and merchandise marks;"
Section 7(1) above re-affirms the jurisdiction conferred on the Federal High Court in respect of 'any civil causes and matters, arising from any enactment relating to trade marks. "It is to be noted that it did not include "passing-off" and it did not say "arising from any Federal enactment relating to". In respect of the general jurisdiction in passing-off; the provision in Section 230 (1) of the 1979 Constitution prevailed so that after 1993, the Federal High Court had jurisdiction to entertain passing-off, actions arising from any Federal enactment"
It is also a fact that Section (7) of the Federal High Court Act was amended by the Federal High Court (Amendment) Decree No 60 of 1991 in the following provision, in as far as it concerns the subject matter in the present suit:-
"2. For section 7 of the Principal Act, there shall be substituted the following new section, that is
7(1) The court shall to the exclusion of any other court have original jurisdiction to try civil causes and matters connected with or pertaining to
(f) Any Federal enactment of common law relating to copyright, patents, designs, trademarks and passing-off, industrial designs .........."
With this amendment the issue of common law, and passing-off was specifically introduced to the provision of Section 7 of the Federal High Court Act reproduced in the Ayman's case supra, and reproduced herein. The Federal enactment in the context of the issue under discussion is the Trade Marks Act 1965, Cap. 436, Laws of the Federation of Nigeria 1990, Section 3 of which I have already reproduced supra.
Inspite of the amendment, Section 7 of the Federal High Court Act by the introduction and or additions mentioned above, the Federal enactments still remain the said section 3 of the Trade Marks Act reproduced supra, and which has not been amended. The fact that the old text of Section 7 i.e. the Federal Revenue Court was invoked for the purpose of looking for the jurisdiction of the High Court does not derogate from the fact that the enactment referred to and relied upon was the Trade Marks Act. The second part of the provision of section 3, which is another aspect of the provision is very clear on the passing off as it includes the right of any person to maintain an action against any passing off of goods as goods of another person, one of the grouse upon which the respondent's claim was predicated; (see paragraph 21 (b) of the statement of claim reproduced above. The Federal High Court therefore has jurisdiction to hear and determine the claim for passing-off, and I subscribe to the learned counsel for the respondent's argument that the said court has jurisdiction whether or not that claim arises from the infringement of a registered or unregistered trade mark. At any rate, even if the claim was based on the infringement of an unregistered trade mark, as at the time the statement of claim was filed, the trade mark had already been registered. Towards this, I will re-echo the words of Nageon de Lestang F.J., in Adani & Anor v. Igwe's ease supra, cited by learned counsel for the respondent when he said:-
"Assuming that when pleadings were closed, the then Supreme Court had jurisdiction to try the action, it is clear that when the case came up for trial before the High Court in September, 1956, that court was invested with jurisdiction to try it. What is the court to do in such case? Is it to decline jurisdiction merely because it had no jurisdiction when the case started and thus put the parties to the expenses of beginning all over again? In my view, this would not be only unreasonable, but wrong in law. I have always understood the position to be that so long as a court acquires jurisdiction before delivering judgment, its decision cannot be attacked on the ground of want of jurisdiction. Consequently, the time to decide whether the court has jurisdiction or not is when the point is taken ......."
Indeed, the above clarifies the position as in the instant case, on the jurisdiction of the court.
In the light of the above discussion I resolve issue (1) supra in favour of the respondent, and dismiss ground (1) of appeal to which it is married.
I will now deal with issue (2) in the appellant's brief of argument, where the learned counsel for the appellant posited that it is trite law that where an issue has been decided in an earlier action it is incompetent for a court to decide on such issue in a subsequent action. He argued that issue estoppel arises wher