Whether A Trademark Registration Will in All Cases Provide a Complete Defence to A Trade Mark Infringement Action

CASE TITLE: DIKE GEO MOTORS LTD & ANOR v. ALLIED SIGNAL INC & ANOR (2024) LPELR-61780(SC)
JUDGMENT DATE: 23RD FEBRUARY, 2024
PRACTICE AREA: INTELLECTUAL PROPERTY
LEAD JUDGMENT: HELEN MORONKEJI OGUNWUMIJU, J.S.C.

SUMMARY OF JUDGMENT:

INTRODUCTION:
This appeal borders on Trademark Infringement.

FACTS:
This is an appeal against the judgment of the Court of Appeal sitting in Lagos, delivered on May 5, 2006. The appeal to the Court of Appeal was from the decision of D.D. Abutu J of the Federal High Court, sitting in Lagos, delivered on April 13, 1999.

The 1st Plaintiff at the trial Court is an American company. It was formerly named “Allied Corporation. ” It is the owner of various trademarks described as “Allied and Device,” “Bendix and Device,” “DBA with Parallel Line Design,” and “e5”, under which it manufactures and sells brake and clutch fluids for motor vehicles. The 2nd Plaintiff is a French company and a subsidiary of the 1st Plaintiff. It manufactures brake and clutch fluids (hereinafter referred to as “Bendix brake and clutch fluid”) under the trademarks “Bendix and Device,” “DBA with parallel lines design,” and “e5” owned by the 1st Plaintiff and has been marketing them in Nigeria for several years in distinctively designed black, red and white cans. Members of the public have come to recognize the design of the cans as indicative of their origin from the Plaintiffs. The 1st Defendant is a Nigerian company, engaged in the manufacture, importation and sale of brake and clutch fluid. The 2nd Defendant is its Chief Executive and alter ego.

Sometime in 1992, the 1st Defendant started marketing in Nigeria a clutch and brake fluid product branded as “Allied.” The design and marks on the can in which the 1st Defendant’s product was sold are imitative of the design and trademarks on the Plaintiffs’ Bendix brake and clutch fluid cans. The Plaintiffs complained that the use by the Defendants of marks and designs imitative of the marks and designs on their Bendix brake and clutch fluid cans is calculated to lead to deception and has in fact led to deception and the belief that the. Defendants’ Allied brake and clutch fluid product is the Plaintiffs’ product or originates from the same source as the Plaintiffs’ Bendix brake and clutch fluid. The Plaintiffs therefore claimed against the Defendants for infringement of the registered trademark “Allied & Device,” registered variously under No. 40189 in classes 1, No. 40188 in class 9 and No. 40186 in class 12, as well as the trademark “DBA with Parallel Lines Design, “registered under No. 49735 in class 1. The Plaintiffs also claim passing-off on the basis of the imitation on the can of the Defendants’ Allied brake and clutch fluid of the design on the Plaintiff’s Bendix brake and clutch fluid can, as well as on the basis of the use by the Defendants on their products of the 1st Plaintiff’s trademarks “e5” and “ALLIED”.

Two years and three months after the registration of the “Allied and Device” trademark, and three months after trial had commenced and samples of contending products had been tendered in evidence, the Appellants filed a motion dated January 20, 1999, praying for the dismissal of the Respondents’ claims on the ground that the claims were frivolous, vexatious and an abuse of the Court’s process. The application was supported by an affidavit sworn to by the 2nd Appellant on January 22, 1999.

The essential facts conveyed by the affidavit in support of the motion are that the “Allied and Device” trademark was registered as a trademark under No. 53200 in class 4, in favour of Dom Frank, on October 8, 1996. A copy of the certificate of registration was attached as an exhibit to the affidavit.

Attached to the affidavit as Exhibit B is a notice of opposition filed by the 1st Respondent against the application of Dom Frank to register the “Allied and Device” trademark. The notice of opposition shows that the application of Dom Frank under No. TP 18856 was published in the trademark journal on October, 1995, 5 months after this suit was instituted.

The Respondents filed, in opposition to the Appellants’ motion, a counter-affidavit sworn to by Olufemi Adesola on February 15, 1999. In the counter-affidavit, the deponent alleged that the opposition proceedings initiated against the application of Dom Frank Nigeria Limited under No. 18856 were terminated under suspicious circumstances. The deponent also brought forward the fact that the 1st Respondent has filed at the trademark registry on November 20, 1996, an application dated November 1, 1996, praying for the removal of trademark No. 53200 from the Register of Trademarks.

The learned trial Judge heard arguments for and against the application of the Appellants for the dismissal of the claim of the Respondents. He delivered a ruling on April 13, 1999, dismissing the application.

The Appellants appealed to the Court of Appeal against the ruling by filing on April 27, 1999, a notice of appeal containing two grounds of appeal. The Court of Appeal delivered its judgment on May 4, 2006, dismissing the appeal. It is against that judgment that the Appellants have further appealed to the Supreme Court.

ISSUE(S) FOR DETERMINATION:
The Court considered the following issues for determination:

1. “Whether the Court of Appeal considered the effect of the provisions of Sections 3, 4, 5(1) & (2), 20 & 38 of the Trademarks Act Cap 436 LFN 1990, on the viability of the Respondents’ claim, in their consideration of the appeal, which was the case of the Appellant.”
2. “Taking into consideration the facts and the ground of appeal filed, the sole issue for determination in this appeal is whether, by reason of events following the institution of the action, the continued prosecution of the claim of the Plaintiff became an abuse of the process of the Court?”

DECISION/HELD:
In the final analysis, the appeal was dismissed for lacking in merit.

RATIOS:
• PRACTICE AND PROCEDURE – ABUSE OF COURT/JUDICIAL PROCESS(ES) – What constitutes abuse of Court process
• INTELLECTUAL PROPERTY – TRADE MARK – Whether a trademark registration will in all cases provide a complete defence to a trade mark infringement action or a passing off action
• JURISDICTION – JURISDICTION OF THE FEDERAL HIGH COURT – Whether the Federal High Court has the jurisdiction to entertain an action for passing-off arising from an infringement of a registered trade mark
• INTELLECTUAL PROPERTY – TRADE MARK – Position of the law on the powers/functions of the Registrar of Trademarks under the Trademarks Act and options of legal recourse/remedies open to an aggrieved party stemming from the exercise of his powers
• PRACTICE AND PROCEDURE – DELAY – Attitude of Court to unnecessary delay caused by parties and their Counsel
• PRACTICE AND PROCEDURE – ABUSE OF COURT/JUDICIAL PROCESS(ES) – Whether each case must be examined on its merit to determine if there has been an abuse of Court process

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