Michael Oredolapo Onayemi V. Lutfallah Bouari (1954)

LawGlobal Hub Judgment Report – West African Court of Appeal

Trade Marks—Design registered as trade mark—Cloth of that design sold by another—Suit by owner of trade mark for infringement of his trade mark—Trade Marks Ordinance, section 2.
Practice and Procedure—Close of case—Interim judgment giving defendant time to apply on matter not raised in case—Finaljudgment covering new matter.
Appeals in Civil Cases—W.A.C.A. Rules, 1950, rule 36—Judgment on appeal that ought to have been given below.

Facts

The above rule empowers the Court of Appeal “to give any judgment and make any order that ought to have been made, and to make such further or other order as the case may require, etc.”.

The plaintiff (above appellant) had ordered artificial silk brocade to be made in England according to a certain design. The firm receiving the order registered the design in England in its own name in 1944, and the copyright in it expired in 1949.

The plaintiff registered the design in Nigeria as a trade mark in respect of artificial silk brocade in 1945 (the registration would be in force for fourteen years) thereby thinking he would have a monopoly in the sale of brocade with that design.

He sued the respondent for infringement of his trade mark, alleging that the defendant had been selling in Nigeria artificial silk brocade bearing the same design. (The design was not identical but the differences were not such as would be distinguished by an illiterate person; they are immaterial to the decision.)

The defendant pleaded that he had not infringed any trade mark and asserted his right to go on selling; his counsel submitted that although the plaintiff had exclusive right to the trade mark, other people could use the pattern.

From the evidence of traders in textiles it appeared that a trade mark was not repeated all over a piece of cloth, and that a trade mark normally appeared on the face of a piece of cloth and bore the proprietor’s name.

“Trade mark” is defined in section 2 of the Trade Marks Ordinance (Cap 217), as meaning “a mark used or proposed to be used upon or in connection with goods for the purposes of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with or offering for sale”.

The trial Judge gave, at the close of the case for both sides, what was called an interim judgment pointing out that the action was for infringement of trade mark and not a passing-off action, and that a trade mark usually appeared on the outside fold of a piece of cloth whilst this was rather a design woven into and appearing all over the cloth; and (for a certain reason which need not be gone into here) the Judge gave the defendant time to apply for expunging the trade mark from the Register, adding that if the defendant did not apply within that time, the plaintiff was at liberty to move for judgment in his favour.

The defendant applied as intimated to him, and the Judge gave a final judgment
ordering the plaintiff’s trade mark to be expunged and dismissing the plaintiff’s claim. The plaintiff appealed.

In his appeal the plaintiff complained that the defendant’s application ought not to have been entertained as the defendant Had never raised the issue of the validity of the registration in his pleadings and had never applied during the trial for a rectification of the Register. It was also argued for the plaintiff that the Judge erred in not entering judgment for him at the close of the case for both sides.

Held

(1) The design appearing on the brocade sold by the defendant could not be said to be a use of a trade mark within the meaning of section 2 of the Trade Marks Ordinance (Cap. 217), merely because the same pictorial representation was registered as a trade mark in respect of artificial brocade.

(2) The defence not having been amended and the issue that the trade mark was invalid not having been raised, all the proceedings after the “interim” judgment would be set aside as void; but as the action was for infringement of the plaintiff’s trade mark, the proper judgment at that stage was a judgment dismissing the action, and this was a proper case for applying rule 36 of the West African Court of Appeal Rules of 1950.

Judgment of Court below set aside; judgment dismissing the action entered.