Effect of a Registered Trade Mark

CASE TITLE: FERODO LTD & ANOR v. IBETO INDUSTRIES LTD (2004) LPELR-1275(SC)

JUDGMENT DATE: 6TH FEBRUARY, 2004

PRACTICE AREA: INTELLECTUAL PROPERTY (TRADE MARK)

LEAD JUDGMENT: DAHIRU MUSDAPHER, J.S.C.

SUMMARY OF JUDGMENT:

INTRODUCTION

This appeal borders on Intellectual Property.

FACTS

This is an appeal against the judgment of the Court of Appeal, Lagos Division.

The appellants herein were the plaintiffs in the Federal High Court and the appellants at the Court of Appeal, Lagos. The claim in the Federal High Court was against the respondent herein (as the defendant) and was in the following terms:

An injunction to restrain the defendant whether acting by itself, its servants or agents or any of them, or otherwise howsoever from doing the following acts or any of them that is to say –

(i) Infringing the 1st plaintiff’s registered trade mark No. 38604.

(ii) Passing off or causing or enabling or assisting others to pass off the defendant’s UNION brake linings as and for the plaintiff’s FERODO brake linings.

(iii) Selling or offering for sale or supplying brake linings or brake pads with labels or in packages having the distinctive red, black and white package design or get up of the plaintiff’s FERODO brake linings package design or get up or so closely resembling it as to be calculated to lead to the belief that brake linings not of the plaintiff’s manufacture and merchandise are products of the plaintiffs. Delivering up for obliteration destruction of all brake linings, packages and labels containing the offending marks or being in the offending design or get up including printing blocks and other matters the use of which would be a breach of the injunction prayed for.

Damages of N1,000,000.00 exemplary or aggravated damages of N500,000.00 costs.

The learned trial Judge thus found there was no infringement of trade mark firstly because it was only FERODO that was registered as the plaintiff’s trade mark and that UNION or UNION SUPA could not in any manner amount to an infringement of FERODO. The learned trial Judge further in his judgment found that the claim of passing off also failed because red, black and white colour combinations as claimed by the plaintiffs were not distinctive to them and was common to the trade of brake linings and brake pads. He found that the plaintiffs failed to prove their claims against the defendant and he non-suited the plaintiffs for the reason given in the judgment aforesaid.

The plaintiffs felt unhappy with the decision of the trial court and appealed to the Court of Appeal. At the hearing of the appeal at the Court of Appeal, the plaintiffs abandoned the appeal as it related to the issue of passing off. The appeal was limited to the issue of infringement of the trade mark. The Court of Appeal in its judgment delivered on 17/2/1999 affirmed the decision of the trial Court and dismissed the plaintiff’s appeal.

The plaintiffs still dissatisfied with the decision of the Court of Appeal appealed to the Supreme Court.

ISSUES FOR DETERMINATION

The appeal was determined on the following issues:

1. Whether the Court of Appeal should at all have looked into the registerbility or the entitlement of the plaintiffs/appellants to exclusive use of the individual components of the trade mark registered under No. 8604?

2. If the Court of Appeal was right to have looked into the registrability of any component of trade mark No. 38604, whether the Court was right in deciding That only FERODO was registered under trade mark No. 38604.

DECISION/HELD

In the final analysis, the appeal failed and was dismissed. The decision of the Court of Appeal which affirmed the decision of the trial Court was affirmed.

RATIOS:

• INTELLECTUAL PROPERTY- TRADE MARK: Essence of a trademark
• INTELLECTUAL PROPERTY- TRADE MARK: The position of the law as regards the element of distinctiveness in the law of trademarks
• INTELLECTUAL PROPERTY- TRADE MARK: Essential particulars a trade mark must consist of for it to be registrable under Part A of the register
• INTELLECTUAL PROPERTY- TRADE MARK: Circumstances where action for infringement of a registered trade mark can be maintained
• INTELLECTUAL PROPERTY- TRADE MARK: The position of the law where two marks are confusingly similar