British American Tobacco (Nigeria) Limited V. Gallaher Limited (2016) LLJR-CA
LawGlobal-Hub Lead Judgment Report
ABIMBOLA OSARUGUE OBASEKI-ADEJUMO, J.C.A.
This Appeal is against the judgment of Archibong J, delivered on 28th May, 2012 in respect of the Appellant’s Dorchester Trade Mark RTM 62627 in Class 34 that it should be expunged from the Register of Trademark on ground of None use of the Trademark in Nigeria by the Appellant.
The Appellant being dissatisfied filed a Notice of Appeal dated 6th June, 2012 on five grounds.
The facts of this case is that the Respondent filed an Originating Motion on Notice dated 23rd July, 2010 for an order that the register of trademarks be rectified by the expunging therefrom the whole entry of trade mark No: 62627 from the register of trade marks.
The Appellant’s brief settled by Y. A. Kadiri, Esq. Y. M. Nwidaa Miss of Messer Jackson, Etti & Edu and is dated 12th May, 2014 and filed same date.
?The Appellant formulated 3 issues for determination thus:
“(a) Whether in view of the fact that there had been a prior pending action between the parties herein on the same issues and the same subject matter and whether in view of the rectification proceedings instituted by the Respondent at the Trademark’s
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Registry in respect of the registered trademark RTM 62627 Dorchester in class 34, the subsequent institution of the suit No: FHC/L/CS/900/2010 for the rectification of the same subject trademark amounts to an abuse of Court process.
(b) Whether the existence of pending litigation over the proprietorship of the “Dorchester” Trademark constitutes “special circumstance” precluding the Appellant from the lawful use of its registered trade mark RTM 62627 Dorchester in Class 34.
(c) Whether it was right for the Learned Trial Judge to have reached its final decision without taking into consideration the totality of the evidence canvassed by the Appellant in its Affidavit deposed to on the 6th of June, 2011 and Written Address dated 22nd February 2011 and as such has occasioned a gross miscarriage of Justice.”
?The Respondent’s brief of Argument dated and filed 22nd May, 2015 same was settled by Obatosin Ogunkeye, Esq. of Messrs Allan & Ogunkeye. Two issues were nominated for this appeal thus:
(a) “Whether the institution of the present action was an abuse of the judicial process by reason of the prior or pending existence of any proceedings before another Court or the
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Registrar of Trademarks?
(b) Whether on the evidence before the lower Court, trademark No: 62627 ought to have been ordered to be expunged from the register of trademarks?
(c) Whether the learned trial Judge failed to consider any issue raised and canvassed by the Appellant and if so whether his judgment ought for that reason, to be set aside.”
For the purpose of this appeal, I shall adopt the issue as formulated by the Appellant for the determination of this appeal.
On issue one; it is the submission of the Appellant that the lower Court erred in law when he held that the suit giving rise to the instant appeal did not constitute an abuse of Court processes.
In defining “abuse of Court/judicial process”, he referred to SARAKI v. KOTOYE (1992) 7 NWLR (Pt. 266) 156 AT 188; TOMTEE NIG. LTD v. FEDERAL HOUSING AUTHORITY [2009] 18 NWLR (Pt. 1173) PAGE 358 AT 376-377. He pointed to the Originating Processes as a determinant of a cause of action as held in OSIGWE v. PSPLS CONSORTIUM LTD [2009] 3 NWLR (Pt. 1128) 378 AT 999. He also referred to the Respondent’s suit at the lower Court vide suit no: FHC/L/CS/179/2005 British American Tobacco (Nig.) Ltd v. Gallaher Ltd &
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Anor., which is a pending suit before the lower Court. He referred to the Appellant’s Notice of originating Motion at pages 311-314 of the records of Appeal. Following a cursory look at the Originating Processes, Counsel contends that both suits possess the following similarities:
a) the same parties;
b) same subject matter, which is trademark “TM 62627 Dorchester in 34”;
c) the ultimate issue for determination in both suits is the ownership of the aforementioned subject trademark;
He referred to pages 17 & 18 of the supporting Affidavit of the Appellant’s Preliminary Objection. Learned Counsel further contends that the Respondent strangely in a swift reaction to the Appellant’s suit: FHC/L/CS/179/2005, filed an Originating Motion dated 19th October, 2007 at pages 164-166 of the record, the practice of which is unknown to law and thus an abuse of Court process. Although the Respondent sought to withdraw the latter Originating Motion, this same application had not been heard and granted before the Respondent instituted the present suit at the lower Court on the 23rd July, 2010. Counsel then submits that this action of the Respondent amounts to art abuse of
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Court process. Appellant’s Counsel while contending the incompetence or otherwise of suit FHC/L/900/2010 referred to Section 38(1) of Trademarks Act Cap T3. LFN 2006 and submits on the position of the law on how a party can contest the contents of the register of trademarks. He then submits that a party can only invoke the original jurisdiction of either the Register of Trademarks or the Court, on the same issue. He referred to Section 56 of the Trademarks Act which says if dissatisfied with the final decision of the Register the only option is to approach the Federal High Court in the Appellate jurisdiction and original jurisdiction as a Court of first instance. The Appellant contended that the Respondent’s suit is a deliberate attempt to reverse the decision of the Trademarks Registrar reached on 17th September, 2004 upholding the validity of the “Dorchester Trademark RTM 62627” based on Respondent’s application of 11th August, 2014 challenging the validity of the Appellant’s Dorchester Trademark.
He referred to pages 7 & 8 of Affidavit in support and Exhibit ‘A04’ – at pages 83, 92-99 of the Record of Appeal. He further contended that if Respondents were
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dissatisfied with the decision of Registrar of Trademarks, he had 30 days from the date of the said decision to appeal to the Federal High Court. However, the Respondent’s motion didn’t indicate that it is an appeal of the Trademarks Registrar’s decision. He referred to Order 53 Rule 1 (2) of Federal High Court (Civil Procedure) Rules 2009 which contains the procedures for such appeals, but the Respondent’s process at pages 1-2 of the Record does not reflect the provided procedures. He further submitted that the Respondent’s case rather than reflecting an appeal from the Registrar of Trademarks, it is invoking the original jurisdiction of the Federal High Court as a Court of first instance, the implication of which amounts to an abuse of Court processes. It is also the submission of counsel that that the lower Court erred in law when he held that the cause of action in FHC/L/CS/179/2001 is different from the instant suit filed by the Respondent herein. He referred to ARUBO v. AIYELERU (1993) 3 NWLR (Pt. 280) 126.
In the alternative, he contended that the suit was time barred as at the time Respondent instituted the same, if same was said to be an appeal. He
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referred to Order 53 Rule 1(2) of Federal High Court Rules 2009 as being impari materia with Order 48 Rule 2(2) of the Federal High Court (Civil Procedure Rules) 2000 which was the applicable rule as at 2004 which specifies thirty (30) days time frame. However this suit was filed 5 years 10 months and six days after the Registrar’s decision and no leave was obtained by the Respondent for this extension; as such this suit should be struck out or dismissed. He relied on UKWU & ORS v. BUNGE (1997) 8 NWLR (Pt. 518) 527 AT 562 PARA A; OKUMODI v. SOWUNMI (2004) 2 NWLR (Pt. 856) 1 AT 07; EZEANAH v. ATTA (2004) 7 NWLR (Pt. 873) 469 AT 502 PARAS. D-F; IBIGBAMI v. MILITARY GOVERNOR, EKITI STATE (2004) 4 NWLR (Pt. 863) 243 AT 246; MADUKOLU & ORS v. NKEMDILIM (1962) 2 SCNLR 341; A.G. OF LAGOS STATE v. HON. JUSTICE L. J. DOSUNMU (1989) 3 NWLR (Pt. 111) 504.
Appellant’s counsel finally submits that from the entire facts of the case, the Respondent’s action is incompetent and as such the lower Court lacked jurisdiction to hear the matter. He urged the Court to resolve issue 1 in his favour.
?The Respondent submitted in response to his issue 1 which is similar to issue
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1 under contention, that none of the previous proceedings referred to by the Appellant had the same parties nor the same subject matter or issues for determination as in the present suit. He made a distinction of both suits along the line of parties and subject matter, the second Defendant in the previous suit vide suit No: FHC/L/CS/179/2005 is not a party in this present suit and also that the subject matter of both suits are entirely different. He contended that pages 17 and, 18 of Affidavit filed by Appellant offend Section 67 and 115 of the Evidence Act 2011, on multiplicity of action, as they are both incompetent and inadmissible. He relied on NV SCHEEP v. MV “S. ARAZ” (2000) 15 NWLR (Pt. 691) 622 to the effect that an intention to proceed with the multiple suits will lead to an abuse of Court process. He said Application in the Cross Originating Motion of 19th October, 2007 in suit FHC/L/CS/179/2005 was for entirely different orders, which were brought on a different ground, while the other action carne under Section 31 of the Trademarks Act. In the alternative, he submitted that the applications were brought under Section 31 and 38 of the Trademarks Act and were
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severable and independent of each other.
On the issue of the rectification he contended that the rectification application was not decided by the Registrar’s letter of 17th September, 2004 because it can only be decided according to the provisions of Regulation 50-56 of the Trademarks Regulation as made applicable by Regulation 84 of Trademarks Regulation, and none of the procedures prescribed by the Regulations were filed. He further contended that the letter of 17th September was not meant to be a ruling but a reversal of an earlier action of the Registrar. On whether the rectification application was an abuse of Court process, he submitted that the parties in the application are different from the parties in the present application. And that the Nigerian Tobacco company has ceased to be a corporate entity on 6th November, 2010.
In conclusion he submitted that the action was not an abuse of judicial process.Appellant in reply referred to the case of ADELANI ADENEYIN v. THE EXECUTIVE GOVT. OF OSUN STATE & ORS (2011) LPELR-8814 for the submission that parties are the same, NIGERIA INTERCONTINENTAL MERCHANT BANK LTD v. UNION BANK OF NIGERIA & ORS (2004)
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12 NWLR (Pt. 888) 599. He submitted that a mere notice of discontinuance of a suit or even the fact that the suit has been discontinued does not bar same from being an abuse of Court process. He referred to ALHAJI SAADU OLUTINRIN v. ALHAJI HANAFI AGAKA & ANOR [1998] 6 NWLR (Pt. 554) 366 AT 375; OKAFOR v. A.G. ANAMBRA STATE (1991) 8 NWLR (Pt. 2001) PAGE 659; OLAWERE v. OLANREGU (1998) 1 NWLR (Pt. 534) PAGE 496 AT 457. He further relied on SARBASTINE TAR. HON (SAN)’s book on Evidence in Nigeria at 621, to argue that facts are different from opinion. He further submitted on his reply to the Respondent’s argument that the decision of the Trademarks Registrar is not a ruling, and proceeds to attempt a definition of a ‘Ruling’. He cited ALHAJI ABDULKADIR ABACHA v. KURASTIC NIGERIA LTD. (2014) LPELR-22703 CA. Counsel further contends that even if there were irregularities in the procedure adopted by the Registrar of Trademarks, the proper option available to the Respondent is to apply to the Court to review decision of the Registrar and not institute a fresh action in Court. He referred to APGA v. SENATOR CHRISTIANA ANYANWU (2014) LPELR-22182 (SC); OKAFOR v.
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A.G. ANAMBRA STATE (1991) 8 NWLR (Pt. 200) PAGE 659; OLAWERE v. OLANREWAJU (1998) 1 NWLR (Pt. 534) 436 AT 455.
I have considered the argument of the parties and I believe this issue relates to the question as to whether the Respondent’s suit leading to the instant appear constitutes an abuse of Court process. While it is the contention of the Appellant’s counsel that the suit constitutes an abuse of Court process, the Respondent’s counsel argue in opposition that the suit leading to the instant appeal is distinct from that in the earlier referenced suit, hence not an abuse of Court process.
Meanwhile, it should be noted that the argument of learned counsel for the Appellant under the extant issue is two-pronged. On one hand, counsel argued that the existence of a prior suit, that is, suit no. FHC/L/CS/179/2005 between the same parties on the same issues and subject matter renders the instant suit, Suit No. FHC/L/CS/900/2010 an abuse of Court process; on the other hand, he argued that the Suit No. FHC/L/CS/900/2010 as instituted by the Respondent is incompetent ab initio, same due to failure to comply with Order 53 Rule 1(2) of the Federal High Court (civil
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Procedure) Rules, 2009 which is impari materia with Order 48 Rule 2(2) of the Federal High Court (Civil Procedure) Rules, 2000.
?Now, as to the question of same parties, issues and subject matter, it is beyond doubt that the parties in the prior suit, suit no. FHC/L/CS/179/2005 commenced by the Appellant as well as the parties in suit no. FHC/L/CS/900/2010 instituted by the Respondent are the same. Suit No. FHC/L/CS/179/2005, British American Tobacco (Nigerian) Limited instituted the action against the present Respondent, Gallagher Limited, as the 1st Respondent and Wanoseas Nigeria Limited as the 2nd Respondent; whereas, in FHC/L/CS/900/2010, subject to appeal before us, the Respondent as Applicant sued the Appellant as Respondent. Indeed, the only difference in the two suits is Wanoseas Nigeria Limited, who was sued as the 2nd Respondent in the prior suit, FHC/L/CS/900/2010. As Appellant’s counsel rightly argued, the omission of a party or even parties in a subsequent suit is immaterial where the subject matter, as well as the issues for determination in both the prior and subsequent suit are the same. I am therefore of the firm view that the parties in the
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two suits are the same. See ADELANI ADEWOYIN v. THE EXECUTIVE, OSUN STATE & ORS (supra).As to whether the issues are the same, in FHC/L/CS/179/2005, the Appellant as Applicant sought for the following reliefs:
1. A DECLARATION that Certificate No. RTM 65022 issued to Wanoverseas Nigeria Limited, (1st Respondent herein), in respect of the Trademark No: RTM 65022 DORCHESTER in class 34 was issued in error, and as such, it is invalid and null and void ab initio.
2. A DECLARATION that the purported assignment of Trade Mark No. RTM 65022 DORCHESTER in Class 34 from the 2nd Respondent to the 1st Respondent is ineffectual, invalid and incapable of transferring any legal right or any right whatsoever to the 1st Respondent in the said trade mark.
3. A DECLARATION that Certificate of Assignment issued in favour of the 1st Respondent in relation to the Trademark No: RTM 65022 DORCHESTER in Class 34 was issued in error, and such it is, invalid and null and void ab initio.
?4. AN ORDER directing the Registrar of Trademarks to rectify the Trademarks Registrar by expunging all entries contained thereon in respect of the Assignment of the afore-mentioned trademark RTM 65022
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DORCHESTER in Class 34 in favour of the 1st Respondent therein.
5. AN ORDER directing the Registrar of Trademarks to rectify the Trademarks Registrar by revoking, removing and/or expunging all entries contained thereon in respect of the registration of trade mark no. 65022 DORCHESTER in Class 34.
6. AN ORDER that the Notice of the Order of rectification of the Trademarks register in terms of prayers 4 and 5 above be served in the prescribed manner on the Registrar of Trade marks.
7. AN ORDER directing the 2nd and 1st Respondent and Certificate of Assignment in respect of the Trade mark No. RTM 65022 DORCHESTER in Class 34 in their respective possession to the Registrar of Trademarks for destruction.
8. A PERPETUAL INJUNCTION restraining the 1st and 2nd Respondents herein, whether acting by themselves, their directors, officers, agents, privies or otherwise however from infringing or causing enabling or assisting others to infringe the Applicant’s registered trademark, No. RTM 6267 DORCHESTER in class 34.
9. AN ORDER that the cost of and incidental to, this Application be paid by the Respondents.
10. AND for such orders or further orders as this Honourable Court may
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deem fit to make in the circumstances.”
The grounds upon which the application was brought by the Appellant/Applicant are:
1. That the Applicant herein is the registered proprietor of the trade mark RTM No. 62627 Dorchester in class 34, which dates back to September, 1993 and has been renewed as and when due, and remains valid and subsisting on the Trade Marks Register.
2. That the trademark registration No. 65022 Dorchester issued in the name of the 2nd Respondent, was issued, in error, as it offends Section 13(1) of the Trademarks Act, 1965, by reason of its being identical with the Applicant’s registered trade mark, Dorchester No. 62627 in respect of the same goods in class 34.
3. That the issuance of Certificate of Assignment dated l6th December, 2004 in favour of the 1st Respondent in respect of the purported registered trade mark No. 65022, Dorchester in class 34 offends Section 26 (4) of the Trade marks Act, Laws of the Federation of Nigeria, 2004.
4. That further to Paragraphs 1, 2, and 3 above, no title passed from the 2nd Respondent to the 1st Respondent on the purported assignment of the 1st trademark Dorchester No. 65022 in class 34.
5. That the
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purported trademark Dorchester in class 34 is an infraction of Section 11 of the Trademarks Act, Laws of the Federation of Nigeria, 2004, by reason of its being likely to deceive or cause confusion and is therefore contrary to taw and protection in a Court of Justice.
6. That the 1st and 2nd Respondents herein are not entitled to apply to be registered as owners of the afore-mentioned offending mark, as envisaged by Section 18(1) of the Trade Marks Act, Laws of the Federation of Nigeria, 2004.
7. That the afore-mentioned offending trademark does not qualify as a trademark as defined in Section 67(1) of the Trade Marks Act, Laws of the Federation of Nigeria, 2004.”
While in suit FHC/L/CS/ 900/2010, vide an originating notice of motion dated 23rd July, 2010, the Respondent herein as Applicant sought for the following reliefs:
1. An Order that the Register of Trade Marks may be rectified by expunging therefrom the whole entry relating to the above mentioned trade mark No. 62627.
2. An Order that the costs of and incidental to this application may be paid by British American Tobacco (Nigeria) Limited.
The Application was based on the grounds reproduced below:
“1. The
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entry of the above-mentioned trade mark into the Register of Trade Marks as a registered trademark was, made without sufficient cause.
PARTICULARS
a. At the time the Registrar of Trade Marks registered the above-mentioned trade mark under No. 62627, there was no application or valid application for registration of the said trade mark pending or subsisting before the Registrar.
b. The applicant that applied for the registration of the above-mentioned registered trade mark No. 62627 was not the true proprietor of the trade mark at the time it filed the application to register the said trade mark.
2. Up to the date, one month prior to the date of this application, for a continuous period of not less than five years there has been no bona fide use by British American Tobacco (Nigeria) Limited of Trade Mark No. 62627 in connection with those goods in respect of which it is registered.”
From the above reproduced reliefs and grounds upon which the reliefs sought by both parties in the respective suits are based, it is obvious that the subject matter of the two suits is the trademark ‘DORCHESTER’, which is registered in class 34 of the Trade mark Register under two
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distinct Trademark No. that is, No. 62627 and 65022 respectively. While the Appellant as Applicant in suit no. FHC/L/CS/179/2005 is seeking the removal of the Respondent’s Trademark No. 65022 from the Trademark Register on the ground, inter alia, that it was issued in error, as it infringes its registered trademark No. 62627; the Respondent as Applicant in Suit No. FHC/L/CS/900/2010 (being appealed against) sought for the removal of the Appellant’s Trademark No. 62627 on the ground, inter alia, that the Appellant was not the true proprietor of the Trademark and for non use of the trademark for a period of not less than five years up to one month prior to the date of the application.
?While I agree with the Appellant’s counsel that the issue and subject matter of both suits are the same, I am however unable to reach the conclusion that suit no. FHC/L/CS/900/2010 constitutes an abuse of Court process having regard to the facts and circumstances leading to the filing of the suit. It remains undisputed that at the relevant time in suit no. FHC/L/CS/179/2005, the Respondent had filed a cross-originating motion dated 19th October, 2007 which was subsequently withdrawn
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by the Respondent consequent upon an objection by the Appellant and same struck out by Nyako J. It is apparent from the Affidavit is support of the motion for withdrawal of the Respondent’s cross-originating motion as well as the preliminary objection filed by the Appellant that the cross-originating motion cannot be sustainable having regard to the fact that there is no provision made for that procedure under the Rules of the lower Court. See pages 168 to 178 of the record. Therefore, the striking out order of Nyako J. was proper in the circumstances. Perhaps, the only option left for the Respondent was to file another action wherein the reliefs being sought can be granted by the Court. This is because the reliefs sought by the respective applicants to each suit are at best in favour of each Applicant. As earlier noted, although both suit relates to the trademark ‘DORCHESTER’ class 34, it is obvious due to contrasting claim by the both parties to the proprietorship of the trademark that the issue in FHC/L/CS/179/2005 relates to trademark No. 65022, the issue in FHC/L/CS/900/2010. Indeed, the success or otherwise the Appellant in FHC/L/CS/179/2005 does not bar
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the Respondent in prosecuting its claim in FHC/L/CS/900/2010 so much more that the grounds upon which the respective applications were brought differs. Put differently, I am of the firm view that a successful grant of the reliefs sought by the Appellant in FHC/L/CS/179/2005 cannot be a bar to the Respondent’s suit in FHC/L/CS/900/2010.
The argument by the Appellant’s counsels to the effect that the filing of suit no. FHC/L/CS/900/2010 while the cross-originating motion in suit no. FHC/L/CS/179/2005 was still pending as the motion for withdrawal had not been heard and decided upon by the Court, is misconceived. It is apparent to all parties to the suit that, by filing the notice to withdraw cross originating motion, the Respondent had indicated an intention not to continue or proceed with the suit as per the cross-originating motion which was otherwise incompetent, and by filing the suit no. FHC/L/CS/900/2010, the Respondent exercised its right of action to obtain reliefs which it would not have otherwise been able to seek for in suit no. FHC/L/CS/179/2005 even if it successfully defended the suit as it cannot competently ‘counter claim’ as it were in that
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suit.
The foregoing is however not the end of this instant issue as the Appellant’s counsel had also argued with respect to the incompetence of FHC/L/CS/900/2010 for failure to comply with Order 48 Rule 2(2) of the Federal High Court (Civil Procedure) Rules, 2000. Appellant’s counsel had argued that the Respondent’s suit as filed is incompetent, being an appeal against the decision of the Registrar of trademark vide the letter dated 17th September, 2004 on the Respondent’s rectification application and that it is an abuse of Court process for the Respondent to file suit no FHC/L/CS/900/2010. On the other hand, Respondent’s counsel contends that there was no decision by the Registrar of Trademarks on its rectification application as there was no compliance with the relevant provisions of the Trade Marks Regulations. With respect to rectification applications, Regulation 83 states:
1. An application to the Registrar under any of the Sections 31, 32, 38 or 39 for the making, removing or of any entry in the register shall be made on Form 27 and shall be accompanied by a statement setting out fully in the nature of the applicant’s interest, the facts upon which he
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bases his case and relief which he seeks.
2. Where the application is made by a person who is not the registered proprietor of the trade mark in question it shall be accompanied by two unstamped copies of the application and two copies of the statement, and the Registrar will forthwith send these copies to the registered proprietor at his trade or business address as entered in the register and if an address for service different therefrom is entered in the register, at that address also.”
Regulation 84 provides:
“Upon such application being made and copy thereof transmitted to the registered proprietor, if necessary, the provisions of regularities 50 to 59 of these Regulations shall apply with the necessary modifications to the further proceedings thereon; but the Registrar shall not rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counter-statement and in any case of doubt any party may apply to the Registrar for directions.”
It is instructive to state that Regulations 50 to 59 contains provisions relating to the procedure to be adopted in the hearing and determination of the application for rectification made pursuant
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to Regulation 83. Regulation 50 relates to filing of counter-statement; Regulation 51 is with respect to evidence in support of opposition; Regulation 52 relates to evidence in support of application; Regulation 53 provides evidence in reply by the opponent; Regulation 54 provides for further evidence to be called upon obtaining leave of the Registrar; Regulation 55 is in relation to exhibits to be tendered before the Registrar; Regulation 56 provides for hearing of arguments by the Registrar; Regulation 57 relates to extension of time in opposition proceedings; Regulation 58 and Regulation 59 relates to security for costs as well as costs in uncontested cases respectively.
?The question then is whether the above provisions of the Trademarks Regulation were complied with in the instant appeal. It is beyond dispute that the Respondent indeed filed Form 27 as well as a Statement of Case pursuant to Regulation 83. See pages 90 to 99 of the records of appeal. However, there is nothing on record indicating compliance with the provision of Regulations 50 to 59 outlined above. Contrary to the contention of the Appellant’s counsel, the letter of 17th September, 2004 does
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not constitute any decision of the Registrar of Trade Marks with respect to the application for rectification filed by the Respondent. Perhaps, as it is evident on the face of the letter, it was written by the Registrar of Trademarks to undo and/correct a mistake he had earlier made consequent upon the letter dated written by the Appellant’s solicitor on 15th September, 2004. For ease of reference the letter which is headed “RE: WITHDRAWAL OF CERTIFICATE OF REGISTRATION – DORCHESTER RTM 62627 IN CLASS 34” at page 103 of the records of appeal reads:
With reference to your letter of 15th September, 2004 in reply to my letter of 14th September, 2004 addressed to you Client, I hereby state as follows:-
1. That my letter of 14th September, 2004 addressed to your Client was based on information received relating to the registration of the mark ? DORCHESTER in Class 34.
?2. That the file of Nigerian Tobacco Co. Plc was not available to me at the time the letter was sent to your Client.3. Now that the file is in my possession and the facts relating to the registration of the mark “DORCHESTER” are now at best known to me. I hereby write to withdraw or cancel my
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letter of 14th September, 2004.
4. The onus of proof is upon those who are contesting that the certificate of registration of DORCHESTER 62627 was issued in error.
5. The inconvenience caused you by my letter of 14th September, 2004 addressed to your client is regretted.Signed”
As the Respondent’s counsel rightly argued, the above reproduced content of the letter of 17th September, 2004 was merely a reversal by the Registrar of an earlier preemptory action, by withdrawing the Appellant’s registered trademark, upon receiving the rectification application filed by the Respondent. A fortiori, the Registrar vide the letter expressly stated that the onus of proof is upon the Respondent who was contesting that the Appellant’s certificate of registration of DORCHESTER 62627 was issued in error. This presupposes the pendency of the rectification application. Furthermore, while it remains undisputed that by the filing of the rectification application before the Registrar, the Respondent brought itself within the jurisdiction of the Registrar of Trademarks, there must be evidence on record to show that the provision of Regulations 50 to 59 of the Trademarks Regulations
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were complied with before a valid decision can be said to have been reached by the Registrar of the Trademarks. Most importantly, there is nothing on record showing that hearing was conducted before the Registrar. I am therefore unable to hold that the content of the letter of 17th September, 2004 constitutes the decision of the Registrar of Trade Marks on the Respondent’s rectification. The only conclusion apparent is that, having not given any decision thereon, the rectification application vide form 27 filed on 11th August, 2004 remains pending before the Registrar of Trademarks.
Now, despite the pendency of the rectification application before the Registrar of Trade Marks, can the Respondent competently bring FHC/L/CS/900/2010? I have earlier enumerated suit no. FHC/L/CS/900/2010 was brought on the ground that the Appellant was not the true proprietor/owner of trade mark ‘DORCHESTER’ with respect to trademark No. 62627 and on the further ground of non-use pursuant to Section 31 of the Trademark Act. Meanwhile, the rectification application was filed by the Respondent principally on the ground that Nigerian Tobacco company Plc, the predecessor of the
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Appellant was not the true proprietor and/or owner of trademark ‘DORCHESTER’ with respect to trade mark No. 62627. Respondent’s counsel had argued that since the rectification application was not filed against the Appellant, that is, British American Tobacco (Nigeria) Limited, but against Nigerian Tobacco company, suit no. FHC/L/CS/900/2010 does not constitute abuse of Court process since they are against different parties. I believe this argument is not only misconceived, it also shows that counsel does not appreciate the essence of the Respondent’s suit against the Appellant. A perusal of the Respondent’s originating Notice of Motion as well as the Affidavit in Support reveals that the Appellants is indeed a successor of Nigerian Tobacco Company, who registered trademark ‘DORCHESTER’ in class 34 and in whose favour trade mark no. 62627 was issued and the basis upon which the Respondent filed both the rectification application as well as suit no FHC/L/CS/900/2010. See also pages 116 to 118 for evidence of assignment of trademark, order of the Federal High Court dated sanctioning the scheme of arrangement between Nigerian Tobacco Company Plc and the
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Appellant.
Meanwhile, whichever way one looks at it, there is ample evidence to show that, the ground upon which the Respondent filed the rectification application (which is still pending) before the Registrar of Trademark is similar to one of the grounds upon which suit no FHC/L/CS/900/2010 principally under Section 38, save for the additional ground of non-use pursuant to Section 31 of the Act.
Section 31 (1) of the Act states:
“subject to this and the next following section, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on an application made by any person concerned to the Court or, at the option of the applicant and subject to Section 56 of this Act, to the Registrar on either of the grounds set out in Sub-Section (2) of this section.”
Meanwhile, Section 38 provides:
1. “Any Person concerned who alleges –
a. That any entry has not been inserted in, or has been omitted from, the register; or
b. That any entry has been made in the register without sufficient cause; or
c. That any entry wrongly remains on the register; or
d. That any error or defect exists in any entry on the register,
?may
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apply in the prescribed manner to the Court or, at the option of the applicant and subject to Section 56 of this Act, to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as the Tribunal thinks fit.”
Section 56 of the Act provides thus:
“Where, under any of the foregoing provisions of this Act, an applicant has an option to make an application either to the Court or to the Registrar –
a. If an action concerning the trade mark in question is pending, the application must be made to the Court;
b. If in any other case the application is made to the Registrar, he may, at any stage of proceedings, refer the application to the Court, or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.”
As earlier discussed, the rectification application filed by the Respondent was based on one of the grounds contained in Section 38 of the Act and that application is still pending. While that section is unambiguous with respect to the fact that an applicant has an option of applying either to the Court or the Registrar, I believe where an applicant elects one of the two options available
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to it, it must stick to that option till the Tribunal, that is, the Court or Registrar, make such order for making, expunging or varying the entry as the Tribunal thinks fit. An applicant is not at liberty to file an application before the Registrar on one ground without pursuing same till completion and subsequently turn around by approaching the Court for virtually the same reliefs sought before the Tribunal, albeit, on a distinct ground. This, to me, is splitting of cause of action, hence an abuse of Court processes. It is instructive to say here that it was the Respondent (Applicant at the lower Court) that elected to initially approach the Registrar of Trademarks asking for the removal of the Appellant’s trademark ‘DORCHESTER’ No. 62627 under class 34 on the ground that the Appellant is not the true owner of same. While it may be conceded that the ground of non-use vide Section 31 of the Act, being the additional or further ground upon which suit no. FHC/L/CS/900/2010 was brought may not have arisen as at the time the rectification application was filed before the Registrar of Trademarks, one would have expected that the Respondent’s rectification
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application pending before the Registrar will be amended to incorporate the fresh ground of non-use and not for the Respondent to file the action leading to the instant appeal at the lower Court.
Section 56(a) indeed provides that where an action in respect of a trade mark in question is pending before a Court, an application thereon must be made to the Court; but where no action is pending and such application is made to the Registrar, it is only the Registrar that has a discretion to refer the application to the Court before hearing the parties and in the case where parties have been heard and the Registrar has determined the question between them, the only option available is to appeal to the Court. Ipso facto, Section 31 , 38 and 56 of the Act while conferring original jurisdiction on the Court and the Registrar with respect to matters provided thereunder, also confers appellate jurisdiction on the Court. Therefore, while the activation of the jurisdiction of the Court forecloses an applicant from applying to the Registrar for the same reliefs, in an action pending before a Registrar, only the latter can refer such application before it to the Court. Put
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differently, the activation of the jurisdiction of the Registrar as Tribunal recognized under the Act forecloses an applicant’s access to the Court while the application is pending before the Registrar. See Section 56 (supra). Where an application pending before the Registrar, it is only the latter that may refer such application to the Court. This was not done in the instant case.
In ALHAJI MADI MOHAMMED ABUBAKAR v. BEBEJI OIL & ALLIED PRODUCTS LTD & ORS (2007) 18 NWLR (Pt. 1066) 319; (2007) LPELR-55 (SC), 62 to 68, paras E-D, the Supreme Court, per OGBUAGU, JSC held:
There is abuse of process of Court where the process of the Court has not been used bona fide and properly, the circumstances in which abuse of Court process can arise has been said to include the following:-
(a) instituting a multiplicity of actions on the same subject matter against the same opponent on the same issues or multiplicity of actions on the same matter between the same parties simultaneously in different Courts even where there exists a right to begin that action;
(b) instituting different actions between the same parties simultaneously in different Courts even though on
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different grounds;
(c) Where two similar processes are used in respect of the exercise of the same right; for example, a cross-appeal and a respondent’s notice; (d) Where an application for adjournment is sought by a party to an action to bring an application to Court for leave to raise issue of fact already decided by Courts below; (e) Where there is no iota of law supporting a court process or where it is premised on frivolity or reckless. The abuses lies in the inconvenience and inequities involved in the aims and purpose of the action.”
I must say that it is an abuse of Court process for the Respondent to file an action in Court on similar ground as those contained in its rectification application before the Registrar, albeit with an additional ground. In SARAKI v. KOTOYE (1992) LPELR-3016 (SC), 33-34, paras. C-A, the Apex Court, per KARIBI-WHYTE, JSC, held:
?”It is recognized that the abuse of the process may lie in both a proper or improper use of the judicial process in litigation. But the employment of judicial process to the irritation and annoyance of his opponent, and the efficient and effective administration of justice. This will arise in instituting
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a multiplicity of actions on the same subject matter against the same opponent on the same issues… Thus the multiplicity of actions on the same matter between the same parties even where there exists a right to bring the action is regarded as an abuse.The abuse lie in the multiplicity and manner of the exercise of the right, rather than the exercise of the right, per se.
The abuse consists in the intention purpose, and aim of the person exercising the right to harass, irritate and annoy the adversary, and interfere with the administration of justice; such as instituting different actions between the same parties simultaneously in different Courts, even though in different grounds.” (Underline mine).
For the purpose of the Trade mark Act, and without prejudice to Section 56(a), any application before the Registrar of Trademarks is deemed to be an application before the Court or at best, a Tribunal, which upon hearing and decision made, is subject to appeal to the Federal High Court. Therefore, where as in the instant case, an applicant files an application for the removal or revocation of the trademark of a registered owner on one ground before the Registrar, such
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an applicant cannot file similar application for removal of the trademark on another ground before the Court. This is improper and is at best an abuse of Court process. Thus, this Court has a duty in such situation to interfere to stop an abuse of its process. See OKAFOR & ORS v. A.G. & COMMISSIONER FOR JUSTICE & ORS [1991] 6 NWLR (Pt. 200) 659; AGWASIM v. OJICHIE [2004] 4 SC (Pt. II) 160. I hereby hold that the Respondent’s Originating Motion in suit no. FHC/L/CS/900/2010 dated 23rd July, 2010 amounts to an abuse of Court process and same is hereby struck out.
In view of the foregoing, the learned trial judge erred when he failed to hold that suit no. FHC/L/CS/900/2010 filed, by the Respondent leading to this appeal does not amount to an abuse of Court process.Issue one is resolved in favour of the Appellant.In this respect and having regard to the incompetence of the Originating motion that I had already struck out, I believe it will amount to an exercise in futility for us to consider the remaining issues in this appeal as they have become mere issues of academic relevance. They have lost their probative relevance.
On the whole, the Appellant’s
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appeal is meritorious and hereby allowed. The decision or ARCHIBONG J., of the Federal High Court, Lagos Division delivered on 28th May, 2012 is hereby set aside. Cost of N50,000.00 is awarded in favour of the Appellant.
Other Citations: (2016)LCN/8651(CA)
