Alban Pharmacy Limited V Sterling Products International Inc (1966)

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ADEMOLA,C.J.N. 

This is an appeal from the judgment of Adefarasin J. delivered in the High Court of Lagos on 15th September, 1965.

The appellants, a firm known as Sterling Products International Incorporated operating in Nigeria with its parent company in Broadway, New York, are the proprietors of the Trade Mark “Castoria” which is registered in Nigeria. The registration was made on 26th November, 1958 for a period of fourteen years. A sample of the product was put in evidence and marked exhibit 3. It appears that the product, a medical product in class 3, is a special laxative for children and growing children and the mark on the bottle is a tiny picture of five children with the words “Fletcher’s Castoria”.

The appellants base their objection to registration by the respondents of a pro-posed Trade Mark “Casorina” on the ground that this Trade Mark is so similar to their registered Trade Mark “Castoria” as to be calculated to deceive and that the applicants/respondents who sought to register “Casorina” have not discharged the onus that lies upon them of showing that If the proposed Trade Mark be registered, there will be no deception

The facts leading up to the application for the registration of the mark “Casorina” are briefly these. The applicants, Alban Pharmacy Limited, general merchants, on 3rd May, 1962, applied under Trade Marks Act (cap. 199) to the Registrar of Trade Marks for the registration as Trade Mark the word “Casorina” for goods in class 3 which is a medicinal product. The mark shows the device of a baby in a large picture on the bottle bearing the word “Casorina.” An objection was raised to the registration by the appellants. It would appear from the materials before the court that no attempt was made at a compromise before the two firms came to the court. In a short judgment delivered after hearing the parties and their witnesses and the address of counsel on both sides, the learned judge, inter alia, said:-

“The short point that arises for a decision is whether the use of the mark ‘Casorina’ as shown in exhibit A attached to the applicants affidavit and exhibit 1 tendered at the hearing is so identical to the mark of the respondents shown as exhibit 3 tendered in evidence so as to be calculated to deceive. No evidence was adduced on behalf of the defendants of any person who claimed to have been deceived by the product of the applicants, now sought to be registered into believing that it is that of the respondents. The two marks, exhibits 1 and 3 are so different when put side by side that the question that these are similar in picture does not at all arise. In fact the defendants’ second witness said at once that the two marks in the picture are dissimilar. The case of the defendants is that the words “Casorina” and “Castoria” when considered in complete isolation from the background on which they appear on their respective products are words of such resemblance that the former can deceive anyone into taking it for the latte. In the case in hand the suggestion is that anyone may be deceived into taking the mark of the plaintiff for that of the defendant. In my judgment this is most unlikely”.

In his penultimate paragraph the learned judge said, inter alia:-

“I have no hesitation in holding that the mark sought to be registered by the applicants is different from that already registered by the respondents and in no way resembles the marks of the respondents either in reference to the back-ground or the words of the two products. I would therefore find in favour of the applicants and will make order that the registrar of Trade Marks do proceed to register the mark of the applicants notwithstanding opposition by the respondents”.

From this judgment, Sterling Products International Incorporated have appealed. The seven grounds of appeal filed were all argued together. We see no need to set them out.

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 defendants/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 defendant. We refer to Kerly on Trade Marks, 8th edition at page 399, 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 would succeed”.

We now deal with the approach of the learned judge to the issue before him. We are of the view that the learned judge’s approach to the issue before him was clearly wrong. Putting the two marks side by side before him, looking for resemblance and looking for identical marks on the labels are certainly not the right approach to the question. As Sargant J. said In the Matter of Application for Registration of a Trade Mark by Sandow Ltd. (1914) 31 R.P.C. 196 at p. 205.

“The question is not whether If a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the per-son who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection.”

It appears to us that what the learned judge had in mind was a case of pas-sing off which must be distinguished from a claim for infringement. The rights in the present case are limited to the name registered and not the photos of babies on the bottle. In this sense registratin of a Trade Mark is narrow in scope and the rights are limited to what is registered.

The criterion is that the mark to be registered must not, when compared with what is already registered deceive the public or cause confusion. And as the learned counsel for the appellant submitted, it was necessary to compare the two trade marks not only visibly but also by sound. This is sometimes stated that the ear must be considered as well as the eye; and this is generally shown in the confusion which may arise in the course of a telephone conversation and this is a point that must be borne in mind. Thus in Magdalena Securities Ltd application (1931) 48 R.P.C. 477 at p. 487 “UCOLITE” was held by the court to be too near “COALITE” for registration.

The courts have considered on various occasions that the first syllable is the properly accented one, and the resemblance is of the utmost importance when you are to arrive at the conclusion whether the two words are likely to deceive or cause confusion. This was observed by Sargant LJ., In the Matter of London Lubricants (1920) Limited Application to Register a Trade Mark (1925) 42 R.P.C. 264 at p. 279, when he said:-

“Though I agree that if it were the only difference having regard to the way in which the English language is often slurred at the termination of words, might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far the most important for the purposes of distinction”.

and so in Capsuliod Co. Ltd’s Application (1906) 23 R P.C. 782 “TABLONES” was said to be to near “TABLOIDS”.

It seems to us that the question of the probability of deception of the word “CASTORIA” and “CASORINA” must be decided purely on the construction of the two words. Also we must consider whether having regard to the circumstances of the trade this medicinal product (both belong to the same class and are laxatives for children), and the use that may be made in practice of this proposed mark, any confusion may arise. The question is whether the applicants have satisfied us that the use of the word “CASORINA” is not likely to cause confusion in the minds of the public which use the two babies medicine.

We feel that the apprehensions of the appellants are well founded and in our view if the proposed Trade Mark “CASORINA” be registered, the syllable “CAS” will no doubt form the essential part of the name of the medicine and is likely to cause confusion in the minds of the public.

In this particular case, the end of the word ‘CASORINA” namely “RINA” in itself is not free from causing confusion with “RIA” in “CASTORIA”. As all the cases show, the court must consider the person with imperfect recollection, the incautious and the illiterate as well as those who may place an order by telephone. All these conditions, the appellants’ counsel has satisfied us that it would be wrong to allow the applicant to register this Trade Mark.

The appeal therefore succeeds and we hereby set aside the judgment and order made In the court below. It is hereby ordered that the registrar of TRADE MARK shall not register the TRADE MARK “CASORINA” and this will be the judgment of the court. There will be costs of this appeal assessed at 40 guineas, and costs in the court below assessed at 12 guineas.

Other Citation: (1966) LCN/1305(SC)