Omnia (Nig) Ltd V. Dyktrade (2007)

LAWGLOBAL HUB Lead Judgment Report

M. MUKHTAR, J.S.C

This is an appeal from the decision of the Court of Appeal Lagos Division, which dismissed the appeal of the defendant/appellant who appealed to it, not being happy with the judgment of the Federal High Court, holden at Lagos. The parties are both limited liabitity companies. Sometime in 1989 the plaintiff initiated a trading venture with an Italian company to manufacture grinding stones for the washing of terrazzo floors. The plaintiff adopted the trade mark ‘SUPER ROCKET’ for the grinding stones which it registered in Nigeria under No. 51136 in class 19 with effect from 10th October, 1991 and the trade mark was inscribed on all the grinding stones ordered and supplied, to the plaintiff. The plaintiff has in the course of the trading venture sold substantial quantities of ‘super Rocket’ grinding stones all over Nigeria and has acquired substantial reputation and good within the trade mark. In December 1992 the defendant imported consignment of grinding stones branded ‘Super Rocket’ and distributed and sold them. It again imported another set of grinding stones branded ‘Super Rocket, but plaintiff obtained an Anton Pitler order against the defendant. The use of the trade mark ‘Super Rocket’ by the defendant has infringed the plaintiffs registered trade mark ‘Super Rocket’ No. 51136, and was thereby passing off its grinding stones as and for the plaintiff’s products. Consequently, the plaintiff’s sales have declined, and it has suffered loss and damage. The plaintiff thus claimed the following reliefs:

“1. An injunction to restrain the defendant whether by itself, its Directors, officers or any of them or otherwise howsoever from doing the following acts, or any of them, that is to say:-

(a) Infringing the plaintiff’s trade mark ‘SUPER ROCKET’, registered under No. 51136 in class 19.

(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 stones not of the plaintiff’s manufacture or merchandise are the products of the plaintiff.

2. Delivery up for destruction of all grinding stones bearing the offending mark ‘SUPER ROCKET’ in the possession, custody or control of the defendant.
3. Damages of N1,000,000.00 or an account of profits. .
4. Costs.”

On being served with the plaintiff’s statement of claim, rather than file the statement of defence, the defendant filed a motion on notice for the following orders:-

“1. An order striking out paragraphs 4,5,9,11,16, 21(1)(a) of the plaintiff’s statement of claim dated 3rd of June, 1997.

2. Striking out the statement of claim/entire claim of the plaintiff.
3. Dismissing the entire suit with cost against the plaintiff on the ground that:-

(a) The plaintiff has no Locus standi; and

(b) Its claim discloses no reasonable possible cause of action.”

The affidavit in support of the motion have the following salient facts: –

“2. That pursuant to an application by the plaintiff dated the 25th Aprit, 1997, this Honourable Court on the 5th of May, 1997 granted an order to set down the suit for mention and consequently, ordered pleadings to be filed. i.e., the plaintiff is to file and serve its statement of claim within 30 days and defendant to file and serve its defense within 7 days after service of statement of claim.

3. That paragraph 4, 5, 9, 11, 16 and 21(1)(a) of the 13 statement of claim in so far as they lay claim to an alleged registration of a trademark in favour of the plaintiff are in direct material conflict with the particulars of claim dated the 2nd of March, 1993.
4. Further to the conflict indicated in paragraph 3 above, the statement of claim directly contradicts all relevant material affidavit evidence in support of various motions filed by the plaintiff in this suit, all of which are matters contained in the courts (sic) records, that nothing other than a mere application for registration of a trade mark is pending before the trade mark registry and not a registered trade mark as alleged in all the offending paragraphs aforementioned.
5. The rights if any in law of the plaintiff in the trade mark in dispute were considered by the Court of Appeal in refusing the plaintiff’s appeal and claim for injunction. it was not and has never been the plaintiff’s case, in the said appeal No. CA/L/202/93, or in the Federal High Court that it possessed a registered trade mark on the name “Super Rocket” or as alleged in all the above referred paragraphs.
6. That this bold attempt to introduce new issues into this suit by filing a statement of claim as in the said referred paragraphs is not only procedurally irregular but in bad faith and highly prejudicial to the interest of justice.
7. That the said offending paragraphs of the statement of claim ought to be stricken from the entire body of claim, as it is a gross abuse of the courts process.
8. That well apart from the offending stated paragraphs, the plaintiff has no Locus standi to bring or maintain the present action nor does its statement of claim contain or even disclose a reasonable cause of action or raise a triable issue upon which the Honourable Court can be called upon to adjudicate at all.
9. That consequently the entire statement of claim is incompetent, ought to be struck out in its entirety and the suit dismissed with cost against the plaintiff.”

The application was moved and Jinadu, J. of the Federal High Court dismissed the application, having found as follows: “It is by operation of law in section 22(2) of the Trade Marks Act that the subsequent registration of the Trade Mark was related back to the date of the application for registration which was 10/1 0/91. There is therefore no doubt in my mind that the plaintiff has the locus standi to institute this action and also that there is reasonable cause of action in this matter.” The defendant was not happy with the dismissal of his application, so he appealed to the Court of Appeal on grounds of appeal. Briefs of argument were exchanged by learned counsel pursuant to the rules of this court. The briefs of argument which included an appellant’s reply brief were adopted at the hearing of the appeal. Three issues for determination were distitled from the grounds of appeal in the appellant’s brief of argument. These issues are:-

I. Whether the Court of Appeal was right in holding that Federal High Court has jurisdiction to entertain a claim instituted upon an unregistered trade mark