Dyktrade Ltd. V. Omnia (Nig.) Ltd. (2000)

LAWGLOBAL HUB Lead Judgment Report

BELGORE, J.S.C.

The appellant was the plaintiff in the Federal High Court and the appellant at the Court of Appeal. The claim in the Federal High Court was against the defendant (now respondent as it was in Court of Appeal) as follows:-

An injunction to restrain the defendant from:-

“(a) Infringing on the plaintiff’s trade mark “Super Rocket” applied for and accepted in Nigeria under No. TP 11933/91/5.

(b) Passing off or causing enabling or assisting others to pass off grinding stones used for the purpose of washing terrazzo floors inscribed with the trade mark “Super Rocket” not being of the plaintiff’s manufacture or merchandise as and for the goods of the plaintiff.

(c) Importing, selling or offering for sale or supplying grinding stones used for the purpose of washing terrazzo floors or any other product under the trade mark “Super Rocket” as to be calculated to lead to the belief that grinding stone not of the plaintiff’s manufacture or merchandise are the products of the plaintiff.”

Then an ex parte order was prayed for which included an injunction restraining the defendant from manufacturing, selling, offering for sale, inviting offers to acquire or distribution for the purposes of sale grinding stones used for the purpose of washing terrazzo floors inscribed with the Trade Mark “Super Rocket” but not being of the plaintiff’s manufacture or merchandise This ex parte application was granted. Concurrently filed with the ex parte application was an application on notice praying for an interlocutory injunction to, restrain the defendant from selling grinding stones branded as ‘Super Rocket’ which were imported or about to be imported by the defendant. Reacting to both the ex parte order of injunction and pending motion on notice for injunction the defendant filed an application to discharge the ex parte order and to oppose the motion on notice.

The trial Judge decided to hear the two applications together and in his ruling decided:-

1. that the plaintiff was not entitled to sue for infringement of a trade mark which had not been registered and mere acceptance by Registrar of Trade Marks of the applicant’s application has not

amounted to registration.

2. the defendant cannot be held liable for passing off because it ordered and imported goods as an agent for disclosed principals and therefore the court would not grant an application for injunction

and a suit for passing off could not be sustained.

3. as the claim for infringement was struck out the entire suit stood struck out.

Against this ruling an appeal was unsuccessfully lodged to the Court of Appeal. There is a further appeal to this court. The appellant raised the following issues for determination:

“1. Whether the plaintiff/appellant did not establish that there was a serious question to be determined at the trial, as far as its claim for infringement of trade mark was concerned such as to support its prayer for an interlocutory injunction.

2. Whether the court is obliged to consider the question of balance of convenience between the parties as the respondent did not assert in its counter-affidavit to the prayer for interlocutory injunction, whether directly or impliedly, that if the injunction sought was granted, it would suffer an injury which cannot be adequately recompensed by an award of damages under an undertaking as to damages
3. Whether the prayer in the plaintiff’s/appellant’s motion for interlocutory injunction does not amount to a prayer to restrain the respondent from passing off as well as to restrain it from trade mark infringement, and whether the plaintiff/appellant is not entitled to an interlocutory injunction as far as its claim for passing off was concerned. ”

“Trade Mark” when registered will entitle the proprietor to sue or institute an action for any infringement of the trade mark. Registration entitles the proprietor to the exclusive use of the trade mark and also the right to sue for passing off the goods of the proprietor. The Registrar of Trade Marks will register a trade mark on an application by the proprietor and after making all the searches and investigations as provided for in Trade Marks Act, Cap. 436, Laws of the Federation of Nigeria (1990) to satisfy the requirements of section 9 (1), (2) & (3) and sections 10, 11 & 12 thereof. The Act sets out clearly in sections 17, 18, 19 and 20 the procedure whereby the application for registration of a trade mark will proceed.In the instant case on appeal the only matter before the courts below is the allegation that the appellant applied for registration of the trade mark. The contention that the application was made does not mean that it is “registered”. The Act in section 22 states clearly:-

“(1) When an application for registration of a trade mark in Part A or in Part B of the register has been accepted, and either-