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Trademark infringement occurs when the offending trademark is mistaken for the authentic one

Fair comment on a matter of public interest is not actionable

INTERNATIONAL TOBACCO (NIG.) LTD. & ORS. v. OLOLADE OGUNNIYI; RONKE OGUNNIYI; JOHANN WILHELM VON. EICKEN GMBH – (Interested Party) v. BRITISH AMERICAN TOBACCO (NIG.) LTD. & ANOR.

SUPREME COURT OF NIGERIA

(KEKERE-EKUN; GARBA; OGUNWUMlJU; SAULAWA; JAURO, JJ.SC)

FACTS

British American Tobacco and Benson & Hedges (Respondents’) case at the Federal High Court was that the registered trademarks No.60722 “Benson & Hedges” (gold colour label mark) and No. 56629; “Benson & Hedges” (Tum to Gold Slogan) were clearly registered specifically with relation to the colour gold as part and the component of the trademarks to which the Respondents, as proprietors, are given the right to exclusive use and protection against unauthorized infringement under the provisions of section 5(1) and (2) of the Trade Marks Act. The Federal High Court therefore entered judgment in favour of the Respondents for the infringement of their trademark of the Gold Specification Pack of “Benson and Hedges” cigarettes by International Tobacco (Nig.) Ltd. Ololade Ogunniyi; Ronke Ogunniyi; Johann Wilhelm Von. Eicken Gmbh (the Appellants), who were the distributors of the “Tradition” brand of cigarettes manufactured by the interested Appellants. Aggrieved by the decision of the trial court, the Appellant appealed to the Court of Appeal which affirmed the decision of the trial court.

Further dissatisfied with the Court of Appeal decision, the Appellants appealed to the Supreme Court. and raised an issue for determination, to wit: Whether the sale by the Appellants of the cigarette brand as “Tradition” packaged in a gold-coloured park infringed any of the Respondents’ registered trademarks?

ARGUMENTS

The Appellants argument on this issue is that in an action for infringement of a trademark, the comparison should be made between the registered trademark as listed in the register of trademarks and the alleged offending trademark, rather than the one appearing on the product itself. Therefore, to determine if the “Tradition” cigarettes in a gold-coloured pack constitute infringement of any registered trademarks claimed by the Respondents, they must be compared to the trademarks as recorded in the register of trademarks. According to learned counsel for the Appellants, since the Respondents’ trademark was not registered with any colour limitation, the colour of any presentation of the trademark is immaterial and does not form part of the registration. As such, it cannot be compared with the “Tradition” cigarettes in a gold-coloured pack to determine infringement by the sale of the “Tradition” cigarettes. The court was urged to agree with this argument.

The Respondents’ reply to the Appellants’ argument on this issue is that the gold colour was, for all intents and purposes, part of what was registered, for the other registered trade mark of “Turn TO GOLD” would make no sense if the Respondents had not considered the gold colour as an important component of its trade mark and registered same for its gold colour pack of Benson & Hedges cigarettes. Counsel further argued that the test for ascertaining infringement is to employ two (2) senses of human being; ears and eyes to arrive at a conclusion. Thus, the question is whether a person who sees a proposed trademark in the absence of the other trademark would be liable to be deceived and to think that the trademark before him is the same as the other of which he has a general recollection. The question, according to counsel, is not whether if a person is looking at two trademarks side by side, there would be a possibility of confusion. The court was therefore urged to resolve the issue in favour of the Respondents.

DECISION OF THE COURT

In resolving the issue, the Supreme Court held that:

An essential element of a device claimed to be a trademark is that it identifies the goods of a particular merchant and distinguishes them from the goods of others. A word, symbol, shape or colour serving this purpose is said to be distinctive. In determining trademark infringement, the focus lies on the offending trademark. If a person encountering the offending trademark, in the absence of the genuine one in sight, is likely to be deceived into mistaking it for the authentic trademark based on their general recollection, then infringement may be established. In the present appeal, the “Tradition” cigarette gold-coloured pack infringed on key features, closely resembling, and appearing identical to the trademark of the Respondents’ “Benson & Hedges” brand pack in a manner that is confusing and deceptive, justifying the relief granted by the lower courts.

Issue resolved in favour of the Respondents.

This summary is fully reported at (2023) 9 CLRN in association with ALP NG & Co.

See www.clrndirect.com; www.alp.company