Fast moving Consumer goods (FMCG) giants, OK Foods Limited and Cadbury UK Limited have gone to court to decide who has the rights to a trademark.
OK Foods Limited, a unit of Olam Foods International and makers of a wide range of confectionary products including Top Mint Candy sweet has filed a N260 million suit in a Lagos court against Cadbury UK Limited, owners of TomTom Candy sweets over threats emanating from the use of generic trade dresses, colours and shapes in the production of Top Mint Candy sweet.
Joined as co-defendants in the legal tussle are Cadbury Nigeria Plc as well as the Nigerian Registrar of Trade Marks.
According to the claim filed before a Federal High Court in Lagos by Peter Shobiye, Attorney for the plaintiff OK Foods, it alleges that the plaintiff applied for the registration of the trademark Top Mint on the 15th of April 2005 and was issued the certificate of Trade Mark RTM 73440 by the Registrar of Trademark. And for over 13 years, Top Mint had been a popular brand with Nigerian consumers and it is strongly associated with menthols flavoured candy.
The label and trade dress was also approved and registered by the National Agency for Food and Drug Administration and Control (NAFDAC).
However the plaintiff claim that it has been consistently harassed, threatened and intimidated by Cadbury UK Limited through a series of letters alleging that its Top Mint shape, design, and colours are confusingly similar and infringing on its TomTom and demanded that it should immediately cease further manufacturing, promotion, marketing and offering for sale of its Top Mint menthol flavoured candy, alleging that has the same identity and confusing similarity with TomTom.
The plaintiff contended that Top Mint is not similar nor can it be confused for TomTom nor can it be deceptively regarded as the product of the respondents.
The plaintiff averred that the respondents cannot claim sole ownership of the black and white combination in the candy/confectionery industry as the black and white colour is generically used color combination in the industry with many other manufacturers using the two combinations.
The plaintiff avers that it has suffered huge financial losses due to the threat, intimidation, harassment caused to its business by letters from the Cadbury’s solicitors threatening its business and legitimate use of its Top Mint trademark. However, the respondents have denied the entire allegation in their counterclaim.
Consequently, OK Foods while demanding for the sum of N250 million as general damages against Cadbury (UK) limited for the undue harassment and threat caused to its business and legitimate use of its Top Mint, Trade Mark is also claiming the sum of N10 million being the cost of prosecuting this legal action.
The plaintiff is also urging the court to restrain Cadbury (UK) Limited and Cadbury Nigeria Plc and their agents from harassing or preventing it from legitimate use of its Top Mint and restrain them from monopolising the use of generic trade, colours, shapes in the course of trade.
The plaintiff is also urging the court to order Cadbury (UK) limited to issue a written letter of apology to it within 7 days of the date of judgment.
However, Cadbury (UK) Limited and Cadbury Nigeria Plc in their statement of defence filed before the court by Barrister Phoenix Unuigbe stated that Cadbury (UK) limited was the registered proprietor of the TomTom with trademark registration 248430516449327 at the Trademark registry and that Cadbury Nigeria Plc had exclusively manufactured and had been associated with TomTom brand since 1970.
The defendant denied that Top Mint Candy was distinctive and not confusingly similar to any other brands of candy in the market as in September 2018, they discovered that the candy Top Mint was being sold in the market with a similar black and white stripes as its Tom Tom strong menthol candy.
Consequently, they instructed their solicitors in Nigeria to write a cease and desist letters to the plaintiff but denied that the letters amounted to harassment, threats, and intimidation.
The defendants, by way of counterclaim contended that the plaintiff was trading on their goodwill of the TomTom brand by adopting black and white colour patterns of its TomTom strong Menthol Candy.
He, therefore, urged the court to restrain the plaintiff from further copying the black and white colour and pattern of the TomTom which constitutes passing off.
The defendant is also urging the court to order the plaintiff to pay them the sum of N5 million as general damages and interest on same from January 2019 at the rate of 21% per annum until judgment is passed and thereafter at the rate of 20% per annum and N10 million as cost of defending the suit.
Justice Oluremi Oguntoyinbo of the Federal High Court, Lagos has set July 21 for hearing on the case.
OLUFIKAYO OWOEYE
