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:-
- 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.
- 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.
- 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.
- 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
- 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-
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be.”
Also when registered the trade mark shall be deemed as having been registered on the date the application was made. Therefore what was before the courts below was mere application and acknowledgment of the application, not what the applicant call acceptance. Acceptance of the application is when the conditions in s.22 above have been fulfilled. Up to the moment there is no evidence that the application has been accepted and by virtue of s.22 (4) the application has abated.
It is therefore clear that from the wording of the Act nobody acquires the status of the “proprietor” unless that person, in relation to the trade mark, is the owner, importer, exporter, shipper or any other person for the time being possessed of or beneficially interested in the goods to which the trade mark is applied. The appellant has not acquired any right to protect for the time being as the applicant for the purpose of the Act because all the procedure leading to acceptance had not been followed.
The word “proprietor” may be misleading, if taken literally because what is being protected is the goodwill of a business not a proprieting right as such. It is therefore clear that the right sought to be protected with injunction by the appellant has not matured and the trial court on scanty materials before it rightly refused to continue with the matter and the action was rightly struck out. Court of Appeal did the right thing. The appellant has not indicated clearly the right he wanted protected either in the interim or substantive claim. What was before the trial court was not a matter of passing off but that of breach of appellant’ s trade mark. The appellant has got no trade mark to protect.
The courts in this country must not look beyond our statute when there is no ambiguity. Trade Marks Act is very clear and the appellant has not acquired anything called “voidable registration” as held in Wellcome Foundation v. Ranboxy Mantori Nigeria Ltd. (unreported FHC/L/35/90 of 31/10/90) because nothing in the Act justifies such status for trade marks. The grant or refusal of an injunction is a discretionary power of the court and enough facts must be available in court to grant it. American Cyanamid Co. v. Ethican Ltd. (1975) 1 All E.R. 504; Kotoye v. CB.N. (1989) 1NWLR (Pt.98) 419; and Oduntan v. General Oil Ltd. (1995) 4 NWLR (Pt.387) 1 at 18 are decisions on conditions necessary to grant discretionary order of injunction. The appellant has not shown any other reasons or that he has applied and got any trade mark registered.
I therefore find no merit in this appeal and I dismiss it with N10,000.00 costs to the respondent.
SC.57/1995
