Bell Sons & Co Vs Godwin Aka & Anor (1972)
B. A. COKER, J.S.C.
This appeal concerns the ruling of the High Court, Lagos (Caxton-Martins J.) given on the 27th April, 1967, whereby the application of the respondents to register a trade mark No. 173091 in Class 3 in the Register of Trade Marks was granted. On the 2nd March, 1967 and by virtue of an application of that date, the present respondents, as applicants, applied to the High Court, Lagos, for “an order pursuant to section 19(2) of the Trade Marks Act that, notwithstanding the opposition by the objectors to the registration of the trade mark No. 173091 in Class 3, the registration be proceeded with by the Registrar of Trade Marks”.
The application is supported by an affidavit stating in effect that the application for registration of their trade mark was duly advertised in the Nigerian Official Gazette Extraordinary and that the objectors, now appellants, had objected to the registration on the grounds set out in the notice of objection, a copy of which is attached to the affidavit of the applicants and the material parts of which read as more follows:
“3. The applicants use their trade mark as a label on bottles in exactly the same colour combination as in Figure 2 attached.
- The applicants’ mark is in all material respects identical to our mark and clearly is intended to resemble our mark as closely as possible.
- The applicants’ mark is not adapted to distinguish the goods of the applicants from our goods and as such is not distinctive, is calculated to deceive and is not entitled to registration as a trade mark.
- Further by reason of the manner and intent of its use the applicants’ mark is not entitled to protection in a court of justice.
- We maintain therefore that the applicants’ mark is not entitled to be registered.”
At the hearing of the application, there were before the learned trial judge a facsimile of both the design of the objectors already registered in the same class and that of the applicants which was sought to be registered. In the course of his ruling, the learned trial judge expressed the results of his own detailed comparison of both marks, i.e. exhibit AMF 1 (belonging to the objectors) and exhibit AMF 2 (belonging to the applicants). The design exhibit AMF 1 consists of a label on which were written some words of advertisement for castor oil, specially orientated with matching colours of blue, etc. and containing as an inset thereon the letter ‘B’ written in block capitals and in black colour, apparently denoting the name of the proprietors, i.e. Bell Sons (Druggists) Ltd. The design proposed to be registered by the applicants, i.e. Aka Brothers, consists of the same words as in exhibit AMF 1, the same colouring and orientation but for the block capital ‘B’ the letter ‘A’ in the same size but printed in red colour has been substituted.
It is necessary to point out that exhibit AMF 1 was registered without the accompanying words of advertisement and the letter ‘B’ and the words (and the letter ‘A’) were not being proposed to be registered in exhibit AMF 1. In the course of a reserved ruling on the result of his comparison, the learned trial judge observed, inter alia, thus:
“The mark in exhibit A is printed in black type as against the red type shown in AMF 2; in the latter the brackets at the bottom of the letter ‘A’ in exhibit A are omitted. The colour in which a mark is actually used or is likely to be used has often had a material bearing upon the question of deceptive resemblance.”
The learned judge then referred to a number of authorities on the law of trade-marks and before concluding his ruling commented further as follows:
“In my view an illiterate customer is capable of knowing and distinguishing between the two letters ‘A’ and ‘B’ even when not placed side by side. . . .
So far as the educated customer is concerned, there is nothing in the letters ‘A’ and ‘B’ which can be calculated to deceive. To the illiterate customer, the impression of either ‘A’ or ‘B’ in the same or different colours, whether they are placed side by side or far apart, I find that there is no likelihood of deception.”
The learned judge then over-ruled the objection to the registration of exhibit AMF 2 and ordered that the registrar of trade marks should proceed with the registration of the mark in Class 3 “in favour of the applicants” .
The objectors have appealed against this decision to this Court and the complaint before us is that the learned trial judge was wrong in law and on the facts in concluding, as he did, that the marks were dissimilar and that exhibit AMF 2 is not likely to be mistaken for the mark of the objectors, exhibit AMF 1.
It is common ground that the trade-mark exhibit AMF 1 was registered in Class 3 of the register in respect of castor oil and other pharmaceutical products in that Class on the 19th April, 1958; it is also common ground that it is being sought now to register exhibit AMF 2 in the same Class and respect of castor oil. Before us learned counsel for the applicants contended that the words accompanying the trade-mark exhibit AMF 1 were not registered or registrable and that therefore the objectors could not complain at the appearance of these words on exhibit AMF 2 which also carries the letter ‘A’ in red colouring instead of the letter ‘B’ in black colouring appearing on the objectors’ mark. Learned counsel then referred to section 16 of the Trade Marks Act, Cap. 199 which reads as follows:
“16. If a trade mark contains parts not separately registered by the proprietor as a trade mark, or if it contains matter common to the trade or otherwise of a non-distinctive character, the Registrar or the court, in deciding whether such trade mark shall be entered or shall remain upon the register, may require, as a condition of its being upon the register, that the proprietor shall disclaim any right to the exclusive use of any part or parts of such trade mark, or all or any portion of such matter, to the exclusive use of which they hold him not to be entitled, or that he shall make such other disclaimer as they may consider needful for the purpose of defining his rights under such registration:
“Provided always that no disclaimer upon the register shall affect any rights of the proprietor of a trademark, except such as arise out of the registration of the trademark in respect of which the disclaimer is made. ”
Learned counsel then asked for a decision that when both specimens are placed side by side they must be and are different.
We are unable to agree with learned counsel for the applicants in these submissions. First of all, his arguments clearly overlook the proviso to section 16; which proviso manifestly preserves the rights of a registered proprietor to his trademark. The objectors’ trademark was registered as No. B9989 in Class 3 of Part B of the Register of Trade Marks as far back as the 19th April, 1958 barring the use or employment of the words disclaimed at registration. Surely the objectors are entitled to the protection of their trademark consisting of their design and colour combination.
Section 25 of the Trade Marks Act provides as follows:
“25. Except by order of the court or in the case of trade-marks in use before the 30th March, 1901, no trade-mark shall be registered in respect of any goods, or description of goods which is identical with one belonging to a different proprietor which is already on the register with respect to such goods or description of goods, or so nearly resembling such a trade-mark as to be calculated to deceive.”
So, the matter for decision by the court on the ruling was and is, even granted that the marks AMF 1 and AMF 2 are not identical, whether exhibit AMF 2 is “so nearly resembling exhibit AMF 1 as to be calculated to deceive”. In the course of counsels’ addresses the attention of the learned trial judge was called to a number of authorities on the meaning of the phrase appearing in the statute-” calculated to deceive”-and he seemed to have appreciated this because he dealt separately with the illiterate customer as well as the educated one. We are of the view that a trademark is to be deemed “calculated to deceive” when by the representation which it presents a customer, whether literate or not, going only by his recollection of an already registered trademark, is not unlikely to mistake one for the other. Whether a mark is potentially capable of being so mistaken for another one is a question of fact to be decided after a comparison of one with the other, and, as the learned trial judge in this case himself stated
“The ears as well as the eyes have to be employed with reference to the comparison between two marks.”
The learned trial judge in arriving at the conclusion that the marks of the parties herein are not similar, made a number of observations on matters of minor details for he observed as follows:
“The letter ‘A’ is made of two equal lines merging together at the top but separated at the bottom and with a third shorter line drawn about the middle of the first two lines and from one to the other. The letter ‘B’ is made of two curves joined together by one line drawn in front of the two curves. It is true that the likelihood of deception varies with intelligence and education of the consumers. . . .
In my view, the objectors have misconceived the position. I cannot hold that by reason of the fact that because ‘B’ follows ‘A’ just as the morning follows the night then two different letters of the alphabet, poles apart in the impression which they convey, the objectors are entitled to oppose anyone else registering a mark which is an admittedly different design from their own.
In Coca-Cola Co. of Canada Ltd. v. Pepel Cola Co. of Canada Ltd. (1942) 59 R. P. C. 127, it was held that Pepel Cola was not an infringement of Coca-Cola. In the application in hand the letters ‘A’ and ‘B’ are very clearly distinguishable not only as letters but also in the sound produced when each letter is pronounced.”
We are convinced that this is a mistaken view of the law. In his judgment the learned trial judge had directed himself to the effect that “the trade-mark is the whole thing-the whole picture on each has to be considered”. Earlier in his ruling he himself had said:
“First of all the onus is upon the applicant to show that the exhibit A is not calculated to deceive and I am not moved at all by the several points of dissimilarities enumerated by the applicants. An educated customer may quite easily appreciate the dissimilarities in the two marks but one has to direct his mind to the question whether an illiterate customer is equally placed.”
If that is so, then clearly the onus in this case is upon the applicants to show that the mark which they propose to register, i.e. AMF 2 is not so nearly resembling the mark of the objectors already registered, i.e. AMF 1 so as to be calculated to deceive customers to take one for the other.
That was the crux of the entire proceedings and we are not in any doubt that the judge not only failed to apply his own directions but also his own principles as enumerated by himself. We observe with respect to the point in issue, or rather the point of onus, that the applicants did nothing apart from producing exhibit AMF 1 and wanting it to be registered. We have already pointed out that on their faces both exhibits AMF 1 and AMF 2 contain the same words expressed to be applicable to and descriptive of castor oil, the same colour combination and orientation of design and the only difference being that exhibit AMF 1 contains the letter ‘B’ in black colour and exhibit AMF 2 contains the letter ‘A’ in red colour. In both exhibits the letters ‘A’ and ‘B’ are of the same size and character and in all lettering the size, character, print and setting are the same. The learned trial judge should have held that the applicants failed to discharge the onus placed on them by section 25 of the Trade Marks Act, Cap. 199.
With respect to the issue of application, we point out that the learned trial judge paid but little attention to the possibility of deception at which the law strikes. The law of trademarks is aimed at the subtle as well as to the obvious infraction of it and both the ears and the eyes must be together involved in the exercise of comparison. If this test is applied in the present case, we do not think that the mere substitution of the letter ‘A’ in red for the letter ‘B’ in black (but clearly retaining the size and lettering in both designs) is sufficient to dispel the confusion which may likely arise in the mind of a customer who has almost always to go by his recollection.
In In re Trade Mark of John Dewhurst & Sons Ltd. [1896] 2 Ch. 137 at p.148, Lindley, L.J. observed:
“Therefore, I think on that principle, which is an extremely far reaching one, that the comptroller is right. I think that it does not matter what the language is, or what the hieroglyphics are, if their meaning is a mere verbal description of a mark already on the register. If you have got a mark on the register applicable to cotton goods of a golden fan, you cannot have another mark called a “Golden Fan” in any language or in any hieroglyphics. That appears to me to be the real broad ground upon which we ought to decide this case.”
See also observations of the House of Lords in R. Johnston & Co. v. Archibald Orr Ewing & Co. (1882) 7 App. Cas. 219. Similarly, in the case in hand the letters sought to be employed in distinction are either incapable of performing that function or are indeed deliberately foisted upon the already registered design of the objectors for the purpose of creating deception and at the same time hiding that purpose.
We have come to the conclusion that the design exhibit AMF 2 sought to be registered by the applicants so clearly resembles that of the objectors, exhibit AMF 1, so as to be calculated to deceive and that the learned trial judge was wrong to have held otherwise.
The appeal succeeds and it is allowed. The judgment of the High Court, Lagos, in Suit No. Mj38j1967, including the order for costs, is set aside. We hereby order that the application of the applicants to register the design purporting to be trademark No. 173091 in Class 3 be dismissed and this shall be the judgment of the Court. The applicants will pay the costs of these proceedings fixed in the High Court at 20 guineas and in this Court at 51 guineas.
Other Citation: (1972) LCN/1616(SC)
