The Wholesale Colonial Trading Company V. The Ikorodu Trading Company (1944)

LawGlobal Hub Judgment Report – West African Court of Appeal

Trade Marks—Trade Marks Ordinance, s. 10, s. 13, s. 42—Registration of Trade Mark—Party aggrieved thereby.

Facts

The Wholesale Colonial Trading Company (hereafter called ” the Appellants “) sued the Ikorodu Trading Company (hereafter called ” the Respondents “) in connexion with the former’s registered trade mark ” Oridara ” and in regard to razor blades bearing the word ” Orida ” sold by the latter. And the Respondents sued the Appellants claiming that ” Oridara ” be expunged from the Register as not registrable. The two suits were consolidated and the judgment was that ” Oridara ” be expunged ; hence the appeal. It was agreed that the marks are so similar as to be confused. The words are Yoruba meaning luck and good luck.

” Orida ” blades began to come to Nigeria from Germany from about 1933 and were popular. As after the war broke out they stopped coming from there, Respondents imported blades from England bearing ” Orida ” and in a similar get-up. On 14th October, 1941, ” Oridara ” was, in spite of Respondents’ opposition, registered by Appellants as a trade mark ; they had begun getting them from England early in 1941, in a similar get-up. An application to register ” Orida ” in January, 1941, had been refused on the ground that it was not an invented word selected by Respondents.

The Appellants were bound to succeed in their suit unless Respondents succeeded in having ” Oridara ” expunged from the Register ; so the two questions were (1) whether ” Oridara ” should not have been registered, and (2) whether Respondents had a locus standi to sue for it to be expunged.

Held

that as at the time and for years before ” Oridara ” was registered there was a wide user of ” Orida ” signifying a make of blades, in view of the similarity of the two marks, ” Oridara ” would be calculated to deceive and was therefore unlawfully registered.

Held also, that as both parties were taking advantage of the abandoned German mark and their rights to use it were the same, neither had the right to stop the other from using it, as Appellants sought to do by the registration of the mark ” Oridara ; therefore Respondents were entitled to coin to Court as a party aggrieved by such registration.

The appeal is accordingly dismissed with costs assessed at 30 guineas.