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JELR 84163 (WACA)

West Africa Court of Appeal  •   •  West Africa [For WACA cases]



Graham Paul, C.J., (Sierra Leone) :- This is an appeal from a judgment of the Supreme Court in two consolidated suits in which the parties were the Wholesale Colonial Trading Company (hereinafter called “the Appellants” ) and the Ikorodu Trading Company (hereinafter called “the Respondents” ).

The Appellants were the Plaintiffs in the first of these two suits and the Respondents were the Defendants.

The claim in that suit may be summarized as follows :-

(1.) An injunction to restrain the Respondents from infringing the Appellants’ registered Trade Mark “ORIDARA” from passing off goods bearing the same Trade Mark or any colourable imitation thereof; from importing, selling, etc., razor blades not being those manufactured for the Appellants in any form calculated to pass off such razor blades _as and for the goods of the Appellants; and from using the word “ ORIDA” or any other word imitating the Appellants’ Trade Mark “ ORIDARA” in any form calculated to pass off such razor blades as or for the goods of the Appellants.

(2) An account of the profits made by the Respondents in selling any razor blades, not being those manufactured for the Appellants, sold under the trade mark “ORIDA”.

(3) Delivery of all razor blades marked with the word “ORIDA” and of all price lists, etc., in the Respondents’ , possession bearing the word “ORIDA” for erasure or destruction.

The Respondents then issued a writ of summons against the Appellants claiming that the Trade Mark “ORIDARA” registered in name of the Appellants be expunged from the Register on the ground that the word “ORIDARA” is not a registrable Trade Mark.

The two suits were consolidated. In giving judgment in the Court below the learned Judge in effect dismissed the claim of the Appellants and upheld the claim of the Respondents, ordering the Appellants’ registered Trade Mark “ORIDARA” to be expunged from the Register. From that judgment in the consolidated suits the Appellants have appealed to this Court.

There are three grounds of appeal. At the hearing in this Court Appellants’ Counsel abandoned ground No.1 which leaves for consideration grounds 2 and 3 which are as follows :-

“2. Even if the learned trial judge was right in finding that the mark “ORIDARA” is not in fact an invented word, he was wrong in not giving Trading proper consideration to the question whether the mark contained or consisted of any other of the alternative essential particulars set out in section 10 the Trade Marks Ordinance (Cap. 142) and particularly in not finding that the mark having been registered as a distinctive mark in England under the Trade Marks Act 1905 it is deemed to be a distinctive mark for the purpose of the Trade Marks Ordinance and as such was, ipso facto, properly registered thereunder.

“3. The learned trial judge was wrong in ordering the mark “ORIDARA” to be expunged from the register and having found that “if the registration of the trade mark “ORIDARA” had not been attacked and an action brought to expunge it from the Registry I should have no hesitancy in saying that defendants’ mark and get-up did infringe plaintiffs’ mark in that it was capable of producing confusion and calculated to deceive purchasers:” He should have given judgment in favour of the Plaintiffs-Appellants in terms of the writ of summons in Suit 171 of 1942.”

Fortunately in this appeal there is no difficulty as to the facts which are not materially in dispute. The parties are even agreed that the two marks in question are so similar that the use of one is calculated to deceive people dealing in razor blades into thinking they are buying “ORIDARA” blades when they are really getting “ORIDA” blades and of course vice versa.

The history of the present controversy may be shortly stated. Some time before the beginning of the present war, apparently from 1933, razor blades were manufactured and imported into Nigeria by a German firm under the Trade Mark “ORIDA”. The German firm did not register that Trade Mark in Nigeria. On the outbreak of the war the import of these “ORIDA” blades into Nigeria was of course discontinued by the German firm.

It would appear however that those razor blades imported under the mark “ORIDA” must have acquired certain goodwill in Nigeria for, soon after the outbreak of war, there being no German firm to interfere, the Respondents imported razor blades made in England but bearing the mark” ORIDA” and to all intents and purposes with the same get-up as the original German firm had used but without the German inscriptions or the statement that they had been made in Germany.

The learned Judge has found as a fact that before the war these razor blades with their get-up and the word “ORIDA” had become common to the Nigerian Trade. That finding is not attacked in the grounds of appeal and it is accepted. There seems to be no possible doubt that the German firm, if it had still been functioning in Nigeria, could have taken steps to stop this most blatant passing-off by another firm. It is also clear that if any firm had tried to register as a trade mark the word “ORIDA” (or on the admitted hypothesis of this case “ORIDARA” the

German firm, if it had been still functioning in Nigeria, could have Trading successfully oppose such registration under section 13 of the Trade Marks Ordinance (Cap. 142) which is in the following terms :-

“It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being calculated Company to deceive or otherwise, be disentitled to protection in a Court of justice, or would be contrary to law or morality or any scandalous design.”

Clearly the registration of “ORIDA” or “ORIDARA” as a Trade Mark was calculated to deceive in that purchasers of goods with that mark would be or might be deceived into thinking that it was the German brand of razor blade which they were getting.

The Appellants at a time when “ORIDA” blades were being imported by the Respondents, on 14th October, 1941, succeeded in getting registered in Nigeria as their Trade Mark the word ,. ORIDARA”. The Respondents opposed that application unsuccessfully. This is rather curious in view of the fact that the Respondents in January, 1941 had applied to register the word “ORIDA” as their Trade Mark in Nigeria and the Registrar commented on their application as follows :-

“I have been informed that you are not rightly the Proprietor of “ORIDA” Trade Mark in that you neither selected or invented nor caused to be selected or invented the mark. Further, I understand that “ORIDA” blades have long been in the market and had been freely sold by various Lagos Trading Houses.”

Clearly from the results of these two rival applications the Registrar of Trade Marks did not then appreciate what is now common ground that the two marks “ORIDA” and “ORIDARA” are so similar as to be calculated to deceive, They are both Yoruba words meaning “ luck” or “ good luck”.

It appears from the evidence that the Appellants imported into Nigeria large quantities of razor blades marked “ORIDARA” , their first consignment being received by them according to their own evidence about the beginning of 1941, and they commenced selling them at once. It also appears that before the war both parties dealt in the original German “ORIDA” blades, and that in 1941 the Respondents began to import “ORIDA” marked blades made by an English firm to orders given by the Respondents in 1940. These orders by the Respondents specified that the blades ordered were to be marked “ORIDA” and to have a get-up copied from a sample of the original German firms get-up which accompanied the order. Judging by the resulting get-up of the “ORIDARA” blades similar instructions must have been given by the Appellants to their manufacturers.

That exhausts what need be said as to the facts, and the questions of law may now be approached. There is no doubt upon the evidence, and the learned Judge has expressly so held, that the Appellants must succeed in their suit unless the Respondents succeed in theirs.

In that state of the matter two questions of law arise :-

(1) Has a case been made out for expunging the Appellants registered mark “ORIDARA” as a mark wrongly or Company unlawfully registered ?

and (2) Have the Respondents locus standi to bring the action for expunging this mark?

As to (1) it is difficult to see how this question can be answered otherwise than in the affirmative. At the time “ORIDARA” was registered it is common ground that there was and for many years had been a wide user in the Nigerian market of the mark “ORIDA” as signifying a particular make of blades, and on the admitted similarity of the two marks it is obvious that the mark” ORIDARA” would be calculated to deceive and was therefore unlawfully registered by virtue of the terms of section 13 of the Ordinance already quoted. In this connection it must be pointed out that section 10 of the Trade Marks Ordinance does not provide that trade marks coming within any of the descriptions, or the proviso, of that section can necessarily be registered, section 10 is entirely subject to section 13. That disposes of the second ground of appeal and gives an affirmative answer to the first question. It seems to be beyond argument that the original German firm could have opposed successfully the application of the Appellants to register “ORIDARA” on the ground that such registration was not lawful under section 13.

The first question having been answered in the affirmative the whole decision of this appeal now depends on how the second question is to be answered. Upon this point Appellants’ Counsel founded very emphatically on the decision in Paine and - Co. v. Daniells and Sons’ Breweries (1893 2 Chancery 567). In that case the facts bore some resemblance to the facts of the present case. Paine and Co. in 1879 had registered a trade mark for their beer, the distinctive feature of which was “John Bull Brand”. At that time another firm L. and Co. in another part of the country were using a mark “John Bull Beer” for their beer, but abandoned that mark in 1890. Paine and Co. did not know of the mark being used by L. and Co. at the time they applied for registration. Daniells and Sons in 1884 started using a mark for their beer “John Bull Registered “. Paine and Co. brought their action in 1891 to restrain Daniells and Sons from infringing their Trade Mark and from passing off. In that suit Daniells and Sons moved to expunge Paine and Co’ s registered Trade Mark from the Register but the Court of Appeal held that L. and Co. could in 1879 have successfully opposed the registration of Paine and Co.’s trade mark but as they never did so Daniells and Sons could not attack the registered trade mark on the ground of the prior user by L. and Co.

That decision is applied to the present case by Appellants’ Counsel in this way. He does not dispute that the original German users of “ORIDA” could have successfully opposed his clients’ application for registration of “ORIDARA” but as the German

firm (which he suggests was in the equivalent position of L. and Co. in the decision quoted) did not oppose, the present Respondents cannot now ask the Court to expunge the mark.

It seems to us that this argument is not sound. The basis of the decision in Paine and Co.’s case on this point is thus put by Bowen L.J. in his judgment: (at p. 585) “Consent by the Sheffield Company (i.e.. L. and Co.) would in the present case have removed all difficulty m the way of registration of the Plaintiffs’ trade mark” . But in the case now before us that basis for judgment is not present. At the time the Appellants applied to register “ORIDARA” the German firm-albeit on account of the war-had in fact abandoned the use in Nigeria of the “ORIDA” mark and the Respondents taking advantage of that fact had started to use the mark. The Appellants did the same, for their “ORIDARA” must be taken to be the game ad hoc as “ORIDA”.

That user by the two parties to this appeal of the old German mark or a colourable imitation of it was not open to objection by either of them. It was no doubt, on the part of each of them, an attempt to get benefit from the trade goodwill established by the original German firm. But the German firm had not registered the mark in Nigeria and had by this time abandoned the use of it in Nigeria.

I t does not seem to be necessary to examine the commercial morality of this procedure by both the parties to this appeal, as whatever conclusion may be come to on that point it is clear that the legal, equitable, and moral right of each of the two parties to use the abandoned German mark was the same. Neither the Appellants nor the Respondents had any legal, equitable, or moral right to stop the others using the mark but that is just precisely what the Appellants by registering. “ORIDARA” sought and seek to do, and when they do so any other firms using the abandoned German mark, including the Respondents, have the right to come before the Court under section 42 as a party “aggrieved” by the entry of the trade mark “ORIDARA” in the Nigerian Register.

If in Paine and Co.’s case when L. and Co. abandoned the use of their mark other people in the same district as Paine and Co. had been widely using the mark in question to the knowledge of Paine and Co. before Paine and Co. applied to register, the decision in Paine and Co.’s case might have ruled the present appeal. But in that event it is clear that the decision in Paine and Co.’s case would have been to the opposite effect, as it would then be the consent of the other users and not of L. and Co. which (to quote again the words of Bowen L.J.) would have “removed all difficulty” in the way of registration of the Plaintiffs’ trade mark”.

For these reasons the second question is answered in the affirmative.

The appeal is accordingly dismissed with costs assessed at 30 guineas.

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