Netherland Distillery V. J. H. Henkes Distillery (1935)
LawGlobal Hub Judgment Report – West African Court of Appeal
Decisions of Full Court, Nigeria, not binding on Divisional Court, Gold Coast or West African Court of Appeal—Opinions of deponents as to resemblance of Trade Marks not receivable in evidence—Absence of evidence that anyone was confused or deceived by resemblance—Decision of Full Court Nigeria on similar issues discussed and distinguished.
Held: Evidence insufficient to shift onus from appellant, and appeal dismissed.
The facts are sufficiently set out in the judgment.
Akiwumi for Appellants.
J. H. Coussey (with him Hammond-Laing) for Respondents. The following judgment was delivered :—
DOORLY, J.
This is an appeal by the Netherlands Distillery from a judgment of Aitken, J., in the Divisional Court at Accra whereby he refused to make any order of rectification of the Trade Marks Register by the removal from the Trade Marks Register or other alteration to the Trade Marks Nos. 2534, 2537 and 2538, registered in the name of J. H. Henkes’ Distillery, the respondents in this appeal, on the 31st July, 1930, the 1st August, 1930, and the 1st August, 1930 respectively, on the ground that none of these marks so closely resembled the Trade Mark No. 168 of the appellants as to be calculated to deceive.
The appeal has been complicated by the fact that the matters in issue in this appeal are identical with those decided in favour of the appellants by a Full Court of the Supreme Court of Nigeria on the 3rd November, 1933, and by the fact that the learned Judge from whose decision the present appeal is taken decided those matters in the sense opposite to the decision of the Nigerian Full Court.
Mr. Akiwumi for the appellants argued that Aitken, J. was Netherland bound by the decision of the Nigerian Full Court and cited a Distillery dictum of Sawrey-Cookson, J. in another case in the Full Courtv.
of Nigeria to the effect that a Judge sitting in a Divisional Court
in the Gold Coast might regard himself as bound by a decision of Henkes’ the Nigerian Full Court because the Judges of Nigeria are also Distillery. ex-officio Judges of the Supreme Court of the Gold Coast.
Doorly, J.
I cannot accept this contention. The Full Court of Nigeria was a Nigerian Court and every Judge sitting in that Court, whether he was substantively a Nigerian Judge or not, was for the purpose of the matter in hand a Nigerian Judge. The Full Court of Nigeria had no appellate or other powers in regard to any Court in the Gold Coast. It therefore follows that Aitken, J. was not bound by a decision of the Full Court of Nigeria, although it was his duty (and he fulfilled that duty) to consider very carefully any decision of the Full Court of Nigeria. The West African Court of Appeal is clearly not bound by decisions of the Full Court of Nigeria.
In the proceedings before Aitken, J. the onus of proof was admitted to be on the present appellants for the reason that Henkes had already registered these three Trade Marks and the motions were for removal or rectification.
It was necessary, therefore, if they were to succeed, for the Netherland Distillery to show that Henkes’ Trade Marks so closely resembled their Trade Mark No. 168 as to be calculated to deceive.
The evidence which they have adduced consists of :—
- an affidavit of Mr. Akiwumi, counsel for the appellants, to the effect that the Trade Marks objected to have such resemblance to the Movers Mark No. 168 as to be calculated to deceive. (Pages 2-5 of the Proceedings).
- an affidavit of Mr. Meiisert who expresses the same opinion as Mr. Akiwumi.
- the Trade Marks themselves
As to these affidavits expressing the personal opinions of the deponents, those opinions are not receivable in a Court as evidence for in Payton 4. Co. Ltd. v. Snelling, Lam pard 4. Co. Ltd. (17 R.P.C. 48 C.A.) Lord Macnaghton laid down that that was not a matter for the witness, but a matter for the Judge.
The only other point made by the appellants in their affidavits seems to be that coins t.r medals, especially gold—or silver—coloured coins or medals, together with the use of red as a colour on the labels of gin bottles is the sole privilege of the appellants.
As to this the affidavits on behalf of the respondents and the evidence of the Trade Marks Registers seem to be a complete traverse. As early as 1904 J. H. Henkes registered a Trade Mark
in this Colony (No. 55) which consisted of a label with a crown at the top, below which were two groups of medals, one consisting of two medals in obverse and reverse each slightly superimposed on the next and below that one medal in reverse and obverse, similarly superimposed. Henkes’ affidavit (page 32 of the Proceedings) deposes that this Trade Mark was registered in Great Britain in 1876, in Holland in 1881, and was in use in the Gold Coast before 1882.
In 1913 the appellants registered their Trade Mark No. 168: the principal features of which are a cluster of medals, some thirteen in number superimposed on each other in the form of the letter ” IT ” with the lower part of the curve very thick. On this lower part appear the letters ” E.K.” These medals are in gold in the register and the letters are in red, but both the gold and the red colours are admitted as added matter and there is a disclaimer of any right to the exclusive use of the added matter.
In 1923 the respondents registered a new Trade Mark which appears on page 173 of Volume 10 of the Trade Marks register, but also seems to have the number 1477. The significant part of this label is a crown below which are three medals in obverse and reverse in a circle and the middle a stork with the signature ” J. H. Henkes ” running across the figure of the bird.
In 1930 the respondents registered the three Trade Marks, which are the subject of this appeal.
No. 2534 has a crown at the top, almost, if not, identical with the crown in Nos. 55 and 1477, below which is a medal in obverse and reverse (London 1862); below that two smaller medals in obverse and reverse (Paris 1867 and Amsterdam 1866); below a gold band with ” Gold Band Geneva ” in red letters, then the name of the firm ; and below again three medals in obverse and reverse in the form of a small ” IT ” with very short sides and a broad bottom, quite dissimilar to the ” IT ” of medals in the appellants’ Trade Mark No. 168.
No. 2537 is headed by a crown identical with that in No. 2534, it has a vertical ribbon of rA running down the label and the words ” Red Ribbon Geneva ” running across the label; below two medals in obverse and reverse almost in a straight line (London 1862, Paris 1867); below one medal in obverse and reverse (Amsterdam 1866) and below that two medals in obverse and reverse (Philadelphia 1876 and Paris 1878), then the name and address of the firm.
No. 2538 has the same crown as the others, the words ” Red Ribbon ” written thrice vertically in red letters down the middle of the Bottle; below the crown the words ” Red Ribbon Geneva “, below the two medals almost in a straight line (London 1862, Paris 1867); below that one medal in obverse and reverse in a straight line (Amsterdam 1866); and below two medals in obverse and reverse almost in a straight line (Philadelphia 1876 and Paris 1878) .
It therefore appears that since 1904 J. H. Henkes have had Netherland Trade Marks in the Gold Coast which have consistently contained Distillery a crown at the top and medals thereunder.v.
J. H
This disposes of the appellants’ contention that the use of Henkel’ prize medals is his sole privilege. Further the appellant has Distillery. demonstrably no exclusive right to the use of any particular — colour.Doorly, J.
In view of the fact that the respondents had continuously used prize medals in their Trade Mark since 1904, I cannot agree that the omission from the Trade Marks now under discussion of the distinctive mark of the stork which still appears only in their 1923 Trade Mark was such as to make the three Trade Marks objected to so resemble that of the appellant as to be calculated to deceive.
Having considered the history of the respondents’ Trade Marks, I cannot agree that the alteration in Trade Marks was made for the purpose of confusing the minds of illiterate buyers into the belief that the respondents’ gin was in fact that of the appellants.
A further strong point in favour of the respondent is the fact that the appellants started these proceedings in October, 1931, his last papers were filed on the 16th March, 1935, and judgment was delivered on the 23rd March, 1935.
The Trade Marks objected to had therefore been in use for nearly five years before judgment in this case was delivered. The appellants had all that time to collect evidence of persons who had been deceived or confused by these Trade Marks and yet no such evidence is forthcoming. One instance of such deceit or confusion would be a much stronger piece of evidence than any number of opinions that deceit or confusion was likely to arise.
In the result I find that the appellant has not produced such evidence as to shift the onus from himself of proving that any of the –three labels of the respondent was or is calculated to deceive and in my opinion this appeal should be dismissed with costs.
There are several points of distinction between the case as pIesented to Aitken, J. and to this Court and the case which was presented to the Full Court of Nigeria and I think it advisable to draw attention to some of these matters. Before the Full Court the onus was on Henkes to shov, that his proposed Trade Mark was not calculated to deceive. In that case he was an applicant, in our ease be was the proprietor of the Trade Marks.
Again, the Full Bench, rightly or wrongly, heard evidence of Persons connected with the trade who expressed their opinions as to whether illiterate natives of Nigeria were likely to be deceived and in the judgment considerable stress was laid on this evidence. Heim we had no evidence of persons connected with the trade.
Finally, I cannot think that the Full Bench of Nigeria had
Distillerythe advantage which we have had of the full history of the Trade
V.Marks of J. H. Henkes.
J. H.
Henkes’Perhaps there was no history in Nigeria; but in this Colony
Distillery. the evidence of continued user of prize medals since before 1881
and the uninterrupted use of Trade Marks containing prize medals Dearly, J. since 1904 makes a most important distinction between the case
before us and that before the Full Court.
WEBBER, C.J., SIERRA LEONE.
I concur. STROTHER-STEWART, J
I concur.
