Patierson Zochonis & Company Ltd. V. A.B. Chami And Company Limited (1971)

LawGlobal-Hub Lead Judgment Report

LEWIS, J.S.C.

The appellants, Patierson Zochonis & Company Limited, were proprietors of a trade mark registered in Class 48 in respect of perfumery (including toilet articles, preparations for the teeth and hair, and perfumed soap) which was registered in Nigeria for a period of 14 years from February 2nd, 1960 as No. 10989. The trade mark has no name but is of a device in a horizontal rectangle of an elephant using its trunk to pull fruit from a palm tree with a hill in the background. No colour was registered.

The respondents for their part applied to register, in Class 48 in respect of perfumery (including toilet articles, prepartions for the teeth and hair, and perfumed soap), a device in a vertical rectangle bearing the name “Asirire” (meaning “evening” in Hausa) in letters down the right hand side in an outer border, depicting, within a further vertical rectangle inside, an elephant in the background, bedecked and with a person riding in a howdah upon its back, with two palm trees on either side of the rectangle and water in the foreground. The appellants objected to that registration, but on May 23rd, 1968 Adefarasin, J. in the Lagos High Court in Suit No. M/135/67 rejected the objection, allowed the application, and ordered the registration of the applicants’ trade mark with 10 guineas costs. Against that decision the objectors have appealed to this Court.

The first point taken by Mr. Souza for the appellants is that the learned trial Judge in his judgment referred to the colour actually used in the device of the objectors, put in evidence as Exhibit 3, when he described the registered trade mark of the objectors and that he also referred to the colour in the applicants’ device, yet colour was not mentioned in the registered trade mark or in the application to register. In the circumstances we agree that, as no question of the colour being used so as to be likely to deceive arose, the learned trial Judge should have ignored the colours used, because they were not part of the existing registered trade mark and were not sought to be used as an integral part of the device which the applicants sought to register as a trade mark. It must always be kept in mind that a registered owner whose mark is registered without limitation of colour may use the trade mark in any colour.

The second point taken by Mr. Souza was that the learned trial Judge in his judgment said (1968 (2) ALR at 74):

“I have considered whether the mark of the applicants could deceive or confuse illiterate Nigerians living in the North into taking it for the product of the respondents. The respondents did not attempt to show by evidence how such a confusion or deceit could arise; they did not call any of their customers or show that there has been any exclusive association of their products with the elephant or palm tree. In the cases to which I have made reference above, evidence of the behaviour of the dealers in the products in question in relation to the mark was led, and the court was satisfied in each case that the public could be deceived. It is not sufficient for an objector to allege deceit or confusion. Where resemblance is not so obvious on an examination of the two rival marks, evidence ought to be led to show that illiterates are or could be deceived. There is no evidence before me in the instant case that the applicants have adopted the essential feature of the respondents’ trade mark or that the respondents’ mark is known in illiterate Nigerian trading circles by that feature.”

This was putting an onus on the objectors of calling evidence that they did not have to bear. Once again we agree with his submission, as in Alban Pharmacy v. Sterling Product Int’l. (1968) 3 ALR Comm. 311, (be it noted decided after the judgment of the learned trial Judge in the present case) we said at:

“It is important to make it clear at the outset that we are of the opinion that the learned Judge was in error when he tried to shift the onus of proof on to the appellants; he stated that they called no witness to prove that he was deceived by the product sought to be registered. We are unable to accept this proposition, and we do not think the onus shifts in these cases to the defendants. We refer to Kerly on Trade Marks, 8th Ed. at 399 (1960), where the learned author, dealing with this point, stated:

‘In such cases, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion, so that refusal to register does not involve the conclusion that the resemblance is such that either an infringement action or a passing off action would succeed.”’

Mr. Souza then objected to registration being granted when there was no evidence of concurrent use, but Mr. Ogunlami for the applicants rightly pointed out that the case was never brought or fought by the applicants on the basis of concurrent use, and concurrent use only comes into issue if the court in fact finds that there was honest concurrent use, and it did not do so here. Compare 38 Halsbury’s Laws of England, 3rd Ed., para.896 at 539, where it is stated:

”The court or registrar may, in the case of honest concurrent use or of other special circumstances, permit the registration of identical or similar marks for the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as may be thought right. Each case must be considered on its own merits and where there would be real hardship in refusing the application, this may offset the possibility of confusion.” Concurrent use arises under section 13(2) of the Trade Marks Act, 1965, which came into force on June 1st, 1967 and so applied to the present application, but in this case the dispute was in respect of section 13(1); and these sub-sections read:

“13 (1) Subject to the provisions of subsection (2) below, no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.

(2) In case of honest concurrent use, or other special circumstances which in the opinion of the court or the Registrar make it, proper so to do, the court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject, to such conditions and limitations, if any, as the court or the Registrar, as the case may be, may think it right to impose.”

Mr. Souza finally argued that the learned trial Judge was wrong to permit registration, as the use of an elephant and palm tree in any form would deceive or confuse an illiterate, so that although the two devices were not identical the ordinary man in the street would be deceived or confused if the applicants’ device was allowed to be registered. Mr. Souza asks us, if he be right, to order that the order of the learned trial Judge, that the applicants’ trade mark be registered, should be set aside and the application to register be refused.

The learned trial Judge however immediately before the passage in his judgment which we have already quoted stated, quite correctly in our view, the principle to be applied when he said (1968 (2) ALR at 74) –

”the principle is well-established that trade marks which were not likely to deceive literates or educated persons but could deceive illiterate Nigerians should be excluded from registration.”

We must apply that principle to the facts of this case. We bear in mind the words of Brett, L.J. (as he then was) in the case In re Worthington & Co.’s Trade Mark (1880) 14 Ch. D. 8 where he said at 15-16:

“Therefore, it seems to me that the proper construction is that where a trademark is registered, it is not merely the outline or design as printed in the advertisement in black, or black and white, which is to be protected, but that which is to be protected is the trade-mark as it may be used or will be used in the ordinary course of trade, that is, in any colour. That being so, it seems to me that the proper test is this: assume both trade-marks to be registered, and let it be supposed that each person registering is ignorant of the other’s trade-mark, would any fair use of the second be calculated to deceive I quite agree that we ought not to take into consideration an obliteration or a fraudulent alteration of the second design. The question is whether any fair use of the second would be calculated to deceive. Now, if the first may be used in any colour, so also the second if registered may be used in any colour, and, supposing the parties to be ignorant of each other’s marks, they might both with a perfectly fair intention use them of the same colour. The question would then be whether, supposing them both to be registered and supposing them both to be fairly used with the same colour, would the second be calculated to deceive any person who only used ordinary observation That brings us to a matter of fact to be considered in each particular case. The decision with regard to any two trade-marks cannot give any assistance as to what ought to be the decision with regard to any other two trade-marks. In each particular case you must do the best you can to come to a right decision as to what would be calculated to deceive, it being assumed that the two marks are not identical. Then one has to exercise one’s own eyes.”

What has to be considered, as was stated in Kerly on Trade Marks, 8th Ed., at 45 156 (1960) when referring to Bailey’s case (1935) 53 R.P.C. 136 is whether “‘there is a real tangible danger of confusion if the mark which it is sought to register should be put on the Register.”

It is clear here that in so far as the products in question are asked for by name there can be no confusion, as the applicants’ alone bears a name – “Asirire.” In the test by ear, therefore, the applicants’ trade-mark is clearly registrable.

So far as the test by eye is concerned, it is to be noted that not only is the name incorporated into the device of the applicants so that even an illiterate would appreciate that there was writing though he would not know what it meant, but more important the whole pictorial scene in the two devices is quite different, and indeed the shape of the two devices is dissimilar, the objectors’ registered trade mark being a horizontal rectangle while the applicants’ proposed trade mark is a vertical rectangle. Whilst size, unless incorporated specifically in the details of a registration, is not a factor to be considered, as a registered trade mark owner may use his device in any size, shape is one factor to be taken into consideration in determining whether registration of the applicant’s device is likely to deceive or cause confusion with the objectors’ registered device.

We cannot accept the submission of Mr. Souza that the registered device of an elephant and palm tree means that no other device incorporating in a wider overall design an elephant and palm tree could ever be used. Here the objectors’ device appears as an elephant, apparently wild, without covering, whilst the applicants’ elephant, apparently tamed, is portrayed with a man riding in a howdah on its back. Accepting, as Mr. Souza himself said, that the devices are not identical, the right test is not to place the two devices side by side but to consider, as we said in Alban Pharmacy v. Sterling Prod. Int’l. (1968 (3) ALR Comm. 311 at 316), whether – ‘the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone,” would be likely to be confused or deceived, and we think the devices are so dissimilar overall that, notwithstanding both incorporate an elephant and a palm tree, even an illiterate person with an imperfect recollection would not be confused or deceived. We think the applicants’ trade mark is quite distinctive from the objectors’ registered trade mark and, as Jessel, M.R. said in the case of In re Jelley, Son & Jones’s Application (1878) (51 L.J. Ch. 639 at 640n.; 46 L.T. at 382n.):

“I have always had regard in these cases of registration of new marks to the question of distinctiveness; that is a very different question to the question of distinction as regards old marks.”

Therefore, although the learned trial Judge applied in part some tests in coming to the conclusion that he did, we are satisfied that, notwithstanding this, he in fact came to the right conclusion in the end, and that he rightly allowed registration of the applicants’ trade mark, as it is not likely to deceive or cause confusion with the objectors’ registered trade mark. The appeal is accordingly dismissed with 34 guineas costs to the applicants, the respondents in this appeal.

Appeal dismissed.

SC.314/68