Judgment
EMMANUEL AKOMAYE AGIM, J.S.C. (Delivering the Leading Judgment): This appeal No. SC.77/2011 was commenced on 14-7-2010 when the appellant herein filed a notice of appeal against the judgment of the Court of Appeal delivered on 14-5-2010 in Appeal No. CA/L/147/2003 allowing the appeal in part by setting aside the trial Court’s order of injunction in respect of Trade Mark 42696 and awarding 5 million naira as general damages in place of the trial court’s award of 5.5 million naira as general damages in the trial Court’s judgment delivered on 21-1-2002 in Suit No. FHC/L/CS/72/1993.
Both sides have filed, exchanged and adopted their respective briefs as follows: – appellant’s brief raised four issues for determination as follows: – 1. Whether the Defendant/Appellant in possession of a Design Certificate is precluded from the use of such Design Certificate the Plaintiff/Respondent has a later Trade Mark Certificate identical to the Design Certificate of the Defendant/Appellant? (Ground 1) 2.
Whether having found that the trial Court awarded general damages more than what was claimed, the Court below was right to have made an award of N5miIIion in place of the award of N5.5milIion made by the trial court as general damages when the Plaintiff/Respondent claimed the sum of N3milIion as general damages? (Ground 2) 3. Whether the claim in paragraph 17 of the Amended Statement of Claim by the Plaintiff/Respondent is not its claim as to damages that have superceded the claim made on the writ of summons? (Ground 3) 4.
Whether from the totality of the evidence led at the trial (both oral and documentary) the Plaintiff/Respondent could be said to have established that it is the sole agent of Travelers Products and Guard Manufacturing Company of St. Louis Missouri of the United States of America in Nigeria to give it the locus to institute this suit? (Grounds 4 & 5).
The respondent’s brief raised three issues for determination as follows: – 1. Whether the Appellant’s possession of a Certificate of Design confers the right to use the Respondent Registered Trade Mark particularly where the issue nominated for adjudication by the Respondent as Plaintiff was the infringement of the Respondent Trade Mark. (Ground 1) 2. Whether the award of N5million General Damages to the Respondent by the Appellate Court was more than what the Respondent claimed in its Writ of Summons. (Grounds 2 and 3) 3.
Whether Section 5(2) of the Trade Marks Act confers the standing to sue on the Respondent whose claim was the infringement of its Trade Mark by the Appellant. (Grounds 4 & 5)
This appeal is determined on the basis of the issues raised for determination in the appellant’s brief. Let me start with issue No. 1 which asks - “Whether the Defendant/Appellant in possession of a Design Certificate is precluded from the use of such Design Certificate the Plaintiff/Respondent has a later Trade Mark Certificate identical to the Design Certificate of the Defendant/Appellant?”
I have carefully read and considered the arguments of the parties herein in their respective briefs on this issue.
The appellant’s brief indicates that the issue is distilled from ground one of this appeal which complains that the Court of Appeal erred in law when it “held inter alia; consequently, the possession of certificate of design does not confer the right to use a mark registered as trade mark”<br< p=”” style=”box-sizing: inherit; margin: 0px; padding: 0px;”></br<>
Particulars of Error (a) “By Section 19(1) of the Patents and Designs Act Cap 344 Laws of the Federation of Nigeria 1990 (now Cap P2 LFN 2004) the registration of an industrial design confers upon the registered owner the right to preclude any other person from (i) reproducing the design in the manufacture of a product; (ii) importing, selling or utilizing for commercial purposes a product reproducing the design; and (iii) holding such a product for the purpose of selling it or utilizing it for commercial purposes. (b) As at the time the alleged breach took place, the Appellant had a valid design certificate which authorized it to use the Design on its products. (c) The Appellant obtained it design certificate before the respondent applied for and obtained their trade mark certificate. (d) The Appellant lawfully used the design as covered by the Design certificate issued to it by the appropriate authority. (e) Trade mark certificate is not superior to a design certificate”.
The portion of the Court of Appeal judgment from which the holding complained against in ground one of this appeal is extracted reads thusly:- “The bone of contention now is whether by the state of pleadings and the evidence of DW1, the defendant had admitted infringing the trade mark of the plaintiff. The contention of the appellant is in the negative hence the finding of the trial Court to that effect perverse, while the respondent on the other hand contended positively hence maintaining that the finding was supportable.
In resolving this issue a consideration will be made on the legal effect or certificate or trade mark and that or design in relation to a product and its name. From the state of pleadings and the evidence, the defendant now appellant never denied the fact of producing shock protectors with the mark ‘step’ and ‘alinco’ but they contended that there was a certificate of design which covered the products, see paragraph 8 of the statement of defence and the evidence of DW1 under cross-examination at page 87 of the record.
The certificate of design relied upon by the appellant is exhibit S and S l, which registered heel protectors ‘step’ and sole protectors “step”. The contention of appellant however is that at the time of usage of the names on the products, there was a certificate of Design covering the product. The respondents on the other hand contended having Exhibits E - E2 certificates of Trade mark in respect of “step” and “Guard”.
To appreciate the issue under consideration, there is a need to visit the two concepts namely Trade Mark and the Design Certificate as earlier stated and their legal implications. What then is a Trade Mark? A trade mark is mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and ‘some person having the right either as a proprietor or registered user to use the mark.
A trade mark can also be defined as a distinctive picture which will indicate to a purchaser of an article bearing it the means of getting the same article in future by getting an article with same mark on it. See Ferodo Ltd v. Ibeto Ind. Ltd(supra), American Cyanamid Co. v. Vitality Pharmaceuticals Ltd (supra) and l. T. (Nig) Ltd v. B.A.T. Nig Ltd (supra). See also Section 67 of the Trade Marks Act. Sections 5 and 6 of the Act, provides for the legal effect of registering a trade mark.
A design on the other hand, is any combination of lines or colors or both, and any three-dimensional whether or not associated with colours if is intended by the creator to be used as a model or pattern or to be multiplied by industrial process and is not intended solely to obtain a technical result. See Section 12 of the Patents and Design Act and Densy Ind. Ltd V Uzokwe (supra). The Legal effect of registering a design is contained in Section 19 of the same Act.
The next question that comes to mind, is whether the possession of a certificate of design confers a right to use a mark registered by someone as trade mark. Learned counsel for the appellant had submitted that a certificate of Design is superior to a certificate trade mark. I must state, that of the two certificates none is superior to the other, but that they are rather issued for different purposes or they perform different functions. The certificate or trade mark protects the integrity of the product while a design certificate protects the creativity in the design of the product.
The action as constituted in the lower Court is for the infringement of a trade mark and there was no counter claim by the (defendant now appellant.
By virtue of Section 5(2) of the Trade Marks Act, the rights accruable under the Act will be deemed infringed by any person who not being the proprietor or registered user, uses a mark or nearly resembling as to be likely to deceive or cause confusion in the course of trade in relation to any goods in relation to which it is registered. Consequently, the possession of certificate of Design does not confer the right to use a mark registered as trade mark.
Consequently, the contention of the appellant that the use of the respondent’s trade mark was covered by a certificate or design is of no moment, this issue also fails”.
There is no ground of this appeal complaining against the decision of the Court of Appeal differentiating a trade mark from a design, differentiating a trade mark certificate from certificate of design and differentiating the purpose of one from the purpose of the other. By not appealing against these differentiations, the appellant accepted that part of the judgment as correct, conclusive and binding on it.
Therefore, it cannot in this appeal validly raise and argue the issue of whether it can be precluded from the use of its design certificate because the respondent later in time obtained a trade mark certificate that is identical to its design certificate.
Issue No. 1 as couched is different from the issues in the case right from the commencement of the suit at the trial Court.
The issues have always been and still are as follows - whether the respondent is the registered owner of the registered trade-marks, “STEP” and “GUARD”, whether the appellant used the said trade marks on shoes and shoe protectors produced or marketed by it and whether the respondent’s certificate of design that existed before the respondent registered the said trade-marks, entitled the appellants to used “STEP” and “GUARD” on the shoes or shoe protectors it produces or markets.
The parties in their pleadings and evidence did not join issue on whether the appellant is precluded from using its design certificate because of the respondent’s trade mark certificate. This issue never arose in the case in the pleading and evidence before the Court. The right of the appellant to use its design certificate at all times was not questioned in this case. What is questioned in this case is its right to use the registered trade-marks “STEP” and “GUARD”.
Its argument that it had the right to use the said trademarks by virtue of its design certificate because the right of the holder of a registered design is not dependent or subject to the right of the holder of a registered trademark and that the subject matter and purpose of the two can be the same even though the two have separate purposes are invalid and incompetent because it has accepted the decision of the Court of Appeal that they are different in nature, subject matter and purpose.
Learned Counsel for the appellant in the appellant’s brief expressly accepted the correctness of the decision of the Court of Appeal differentiating a trademark from a trade design and a trademark certificate from a design certificate. There is no ground of this appeal complaining against the finding of the Court of Appeal concurring with the finding of the trial Court that the “STEP” and “GUARD” are trademarks registered by the respondent and used on its shoes and shoe protectors. There is no ground of this appeal contending that they are designs and not trademarks.
This situation renders incompetent and invalid the arguments of Learned Counsel for the appellant that it was conceded by the Respondent that what was used by the Appellant in the production of the shoe protector is the design as contained in exhibits S and S 1, the design certificates, that since the Appellant was covered by a design certificate duly issued by the appropriate authority and used without any addition or subtraction by the Appellant in its products, it cannot be held to have infringed the Respondent’s trade mark which in any event was issued years after exhibits S and S 1 were issued to the Appellant, that to hold otherwise will result in the holder of a design certificate being prevented from benefiting from the rights and privileges, that though the action was for the infringement of a trademark, the possession of a design certificate is a complete defence to the action because the respondent did not prove that the design the appellant used on its products was not registered or went beyond what was registered.
In the light of the foregoing, this issue is resolved against the appellant.
Let me now determine issues Nos.2 and 3 together as both deal with the complaint against the decision of the Court of Appeal on the award of general damages by the trial Court. The two issues contend in substance that the award of 5million naira general damages affirmed by the Court of Appeal exceed the amount of 3million naira claimed for by the respondent as general damages.
I have carefully read and considered the arguments in the respective briefs on these issues.
It is obvious issues Nos.2 and 3 as couched, touch on and concern the part of the decision of the Court of Appeal that decided the relationship between paragraphs 17 and 19 of the amended statement of claim in terms of the reliefs claimed for. The exact text of the judgment reads thusly- “The contention of the appellant to the effect that paragraph 17 of the amended statement of claim represents the claim of the respondent, cannot hold water in the light of paragraph 19 which categorically stated that the plaintiffs’ claims as per its writ of summons.
The claims of the plaintiff, by virtue of paragraph 19 of the amended statement of claim are as contained in the writ of summons dated 11/3/93 reproduced above”.
Learned Counsel for the appellant argued that appellant particularized the damages claimed for in paragraph 17 of the amended statement of claim as actual loss of 500,000 naira annual profits totaling 2.5million naira for 5years and general damages of 3million naira, that the award of 5million naira as general damages exceeded the amount of 3million naira specifically claimed for in paragraph 17 of the amended statement of claim as general damages and that in the writ of summons, damages claimed for as a whole was in the sum of 5million naira.
Learned Counsel for the respondent argued in reply that the 5million naira awarded as general damages was claimed for in the writ as damages in the sum of 5million naira and is therefore not in excess of what was claimed for.
Let me now determine the merit of these arguments. It is obvious from paragraph 19 of the amended statement of claim that the reliefs claimed for by the respondent as plaintiff were as stated in the writ of Summons. In the writ of Summons, the plaintiff claimed for 5million naira as damages for the appellant’s infringement of its trademarks.
The plaintiff in paragraph 17 of the amended statement of claim provided the particulars of the 5 million naira damages it claimed for in the writ of summons by specifically itemizing the part that constitutes general damages and the part that is more specific as to the actual loss it covers as profit of N500,000.00 annually for a period of 5 years totaling 2.5 million naira and falls in the class of special damages, even though the total of the damages in paragraph 17 exceeded that in the writ by 500,000.00 naira.
Where the claim is simply for damages, it is a claim for monetary compensation for all the loss or injury suffered. Such general claim for damages clearly is a claim for general damages as it is not specific or exact as to the particular loss to be compensated or the quantum of the loss. So the claim for 5 million naira damages is general in nature and can rightly be treated as a claim for general damages.
The respondent did not leave it at that and went further to particularize the claim in paragraph 17 of the amended statement to show the part of the claim that was specific for consequential loss of a specific amount of yearly profit for a period of 5 years. That part of the damages claimed for is special damages. This explains why the respondent described the other part as general damages. The law is settled by an unending line of decisions of this Court that a claim for loss of a specific amount as profit or earning is in the class of claim for special damages.
See for example, Odumosu V ACB Ltd (1976) 11 SC 55, Uwa V ITC (1988) 12 SC(PT2) 102 AT 122-123, Attorney General of Oyo State V Fairlakes Hotel (1989) 12 SCN3 1 at 22 and UBA PIc V IBTL Ind. Ltd (2006) 19 NWLR (171013)61.
Paragraph 19 of the amended statement of claim in stating that the plaintiff’s claim is as per the writ of summons did not defeat or negate paragraph 17 therein because paragraph 17 merely particularized and itemized the claim for damages in the writ of summons, even though it exceeded the amount claimed in the writ of summons by 500,000.00 naira. The pleadings of a party in a case must be read as a whole and not in isolated patches so as to be clear on the case presented by that party. See Ugochukwu V Cooperative Bank (1996) 7 SCNJ 22 and Pan Asian African Co.
Ltd V NICON Ltd (1982) 9 SCNJ at 45. If the amended statement of claim of the respondent is read as a whole, it is glaring that its averment in paragraph 17 was meant to itemize its claim for damages. The particularization in paragraph 17 of the amended statement of claim of the items of the claim for damages supercedes the general claim for damages in the writ of summons. It is settled law that the statement of claim supercedes the writ of summons in terms of the reliefs claimed for by the plaintiff. See for example Enigbokan V A.I.I.Co Nig.
Ltd (1994) 6 NWLR (pt. 348) 1, Eya V Qudus …., Lahan V Lajoyetan (1972) SC 190 and Ogun V Akinyelu (1999) 10 NWLR (PT 624) 671. In paragraph 17 of the amended statement of claim, the plaintiff clearly stated that only 3 million naira out of the amount it claimed for as damages for infringement of its trade-marks is general in nature and that the remaining amount represent its loss of profits for 5 years.
In the light of the foregoing, I agree with the argument of Learned counsel for the appellant that the respondent claimed for the sum of 3 million naira as general damages and that the award of 5 million naira as general damages by the lower Court is in excess of what it claimed for by 2 million naira. The law has been restated in several decisions of this Court that a Court cannot give over and above what a party has claimed. It can award less than the amount claimed for, but not more than that amount.
See for example Eagles Super Pack (Nig) Ltd V ACR PLC (2006)19 NWLR (PT1013) 20, Ekpenyong V NYONG (1975) 2SC 71 at 81-82, Olurotimi V lge (1993) 8 NWLR (pt311) 257 and Awoniyi V Amoco (2000) 6SC (pt1) 103.
It is clear from the foregoing that the Court of Appeal was wrong to have affirmed the trial Court’s award of general damages beyond 3 million naira. On the basis of the settled law restated herein, the Court of Appeal was bound by law to reduce the 5.5 million naira awarded as general damages by the trial Court to the 3 million naira claimed for by the respondent as general damages. Its interference with the trial Court’s award was not enough to meet the demand of the law and the justice of the case.
The 5 million naira general damages awarded to the respondent by the Court of Appeal is hereby reduced to 3 million naira. Issues Nos 2 and 3 are resolved in favour of the appellant.
Let me now determine issue No 4 which asks-”Whether from the totality of the evidence led at the trial (both oral and documentary) the Plaintiff/Respondent could be said to have established that it is the sole agent of Travelers Products and Guard Manufacturing Company of St. Louis Missouri of the United States of America in Nigeria to give it the locus to institute this suit? (Grounds 4 & 5)”.
The part of the judgment of the Court of Appeal complained against by grounds 4 and 5 from which this issue is derived, reads thusly - “The company under this issue as earlier stated is that the plaintiff had not established by evidence that it is the agent of Guard Manufacturing Company and Travelers Products of the USA (hereinafter called the principal). The contention of the respondent is that the agency relationship is deemed admitted by virtue of having not filed an amended statement of defence to counter the newly introduced paragraphs 1 A, 1B and 1C.
A holistic perusal of the statement of defence, will however show that issues have been joined in relation to the agency relationship between the respondent and its foreign principals. The submission of the Learned senior counsel as to the admission of paragraphs 1A, 1B and 1C is of no moment and is hereby discountenanced.<br< p=”” style=”box-sizing: inherit; margin: 0px; padding: 0px;”></br<>
At the trial the plaintiff, through its PW1 and PW3 and exhibits B and D, gave evidence concerning its being the accredited sole agent of the principal as averred in the statement of claim. The appellant attacked the oral evidence of the respondents in exhibits B and D, to the effect that they do not establish any agency between the respondent and the foreign principals. I have carefully studied the two exhibits tendered namely B and D. Exhibit D is a letter from Guard Manufacturing Coy. of St Louis Missouri dated September 12th, 1988 and addressed to Mr.
Samuel Digba - Adekoya of Saam Kolo International enterprises and the last paragraph of the letter stated thus “we look forward to continuing a strong business relationship with your company --“. See also exhibits G, H. H1 and H2. The contents of the aforementioned exhibits, particularly exhibit D, have shown evidence of agency relationship between the plaintiff and its foreign principals. By way of passing, I wish to also observe that the action as constituted was for infringement of Trade-Mark The Trade-Mark Certificates, exhibits E, E1 and E2 were in the name of the plaintiff.
I therefore do not see the wisdom behind the contention that the plaintiff lacks the locus to institute the action.”
I have carefully read and considered the arguments in the respective briefs of both sides on this issue.
The substance of the appellant’s argument of issue No. 4 is that the respondent had no locus standi to institute the suit because the respondent’s evidence did not prove that it was the sole agent of Travelers Products and Guard manufacturing company of St Louis Missouri of United States of America in Nigeria.
On the other hand, the respondent argues that it has the locus standi to sue in respect of the infringement of the trade-marks because it registered the trade-marks and was issued certificates of registration in its name, which certificates are in evidence as exhibits E-E2 and that the issue before the Court is that the registered trademarks were infringed and not whether the plaintiff is the accredited sole agent of Travelers Products or Guards Manufacturing Company, USA.
Let me now determine the merits of the arguments by both sides. Exhibits E, E1 and E2 are the Certificates of Registration of the Trademarks “STEP” and “GUARD”, the subject matter of this case. The said Certificates of Registration bear numbers 49624, 49625 and 49626. The respondent’s name is on the certificates as the manufacturer and distributor of the products named therein.
So exhibits E, E1 and E2 establish that the plaintiff registered the said trade-marks as required by S.4 of the Trade-marks Act Cap T 13 Vol.15 LFN 2004 that provide that “A trade mark must be registered in respect of particular goods or classes of goods.”
By virtue of S 3 of the Trade-marks Act, this registration gave the respondent the right to bring actions to protect the trade marks it registered against infringement.
The exact text of S. 3 reads thusly- “No person shall be entitled to institute any proceedings to prevent, or to recover damages for the infringement of an unregistered trademark, but nothing in this Act shall be taken to affect the rights of action against any person for passing of goods as the goods of another person or the remedies in respect thereof.” The registration of a trademark gives the proprietor or registered user of the trademark the exclusive right to the use of the trademark and the concomitant right of action to protect that exclusive right of use by virtue of S. 5 (1) and (2) of the Trade-marks Act which provides that:- “(1).
Subject to the provisions of this section and of Sections 7 and 8 of this Act, the registration (whether before or after the commencement of this Act) of a person in Part A of the register as proprietor of a trademark (other than a certification trade mark) in respect of any goods, shall if valid, give or be deemed to have given to that person the exclusive right to the use of that trademark in relation to those goods. (2) Without prejudice to the generality of the right to the use of a trademark given by such registration as aforesaid, that right shall be deemed to be infringed by any person being the proprietor of the trademark or a registered user thereof. using it by permitted use, uses a mark identical with it or so nearly resembling it as to deceive or cause confusion, in the course of trade, in relation to any goods in which it is registered, and in such manner as to render the use of the mark taken either- (a) as being used as a trade mark;
or (b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade”.
Several decisions of this Court have restated the legal result of the registration of a trademark under the Trade-marks Act. In Ferodo Ltd and Amor Vs Ibeto Ltd (2004) 5 NWLR (Pt866) 317 this Court held that: “An action for infringement will therefore lie where a competitor uses registered trade mark in connection with proprietor’s goods for the purpose of competing them with his own goods in the same class.
See Bismag Ltd v Amblins (Chemists) ltd (1940) Ch. 667 - A Trademark can also be defined as a distinctive feature which would indicate to a purchaser of an article bearing it, the means of getting the same article in future, by getting an article with the same mark on it. A trade mark if registered gives the proprietor the exclusive right to use the trademark in marketing or selling his goods.
And without his consent, if anyone uses an identical mark or one mark so nearly resembling it as to be likely to deceive or cause confusion, will entitle the proprietor to sue for infringement of the trade mark, or to sue in action for passing off or both … Following the provisions of S. 5(2) of the Trade Marks Act, an infringement of a registered trade mark can be maintained where the Court finds that the defendant is engaged in the use of mark identical with the registered trade mark or use a mark so nearly resembling the registered trade mark, as to likely to deceive or cause confusion in the course of trade; or used in relation to any goods in respect of which it is registered or used in such a manner as to render the use of the mark to be taken as importing a reference to the goods which the Plaintiff trade mark is connected.” In Dyktrade Ltd V Omnia Nig Ltd (2000) 7SC (Pt.1) 56 this Court again held that “Trade Mark” when registered will entitle the proprietor to sue or institute an action for an infringement of the trade mark.
Registration entitles the proprietor to the exclusive use of the trademark and also the right to sue for passing off the goods of the proprietor”.
The argument of learned counsel for the appellant that the fact that exhibits E, E1 and E2 are in the name of the respondent go to no issue since it is not its case that it is the owner of the trade-marks, but rather, the agent of a disclosed principal is not correct because exhibits E, E1 and E2 show that the respondent is the registered user of the trademarks in Nigeria and therefore has the right of action to protect the right to use them exclusively by virtue of S. 3 and S. 5(1) and (2) of the Trade Marks Act.
How it acquired that right of use becomes irrelevant from the moment it registered its right to exclusively use that Trade Mark in Nigeria. The argument that the respondent’s pleading and evidence did not establish how the overseas manufacturers and suppliers appointed the respondent their sole agent for the distribution of their goods bearing the said trade-marks in Nigeria is irrelevant. Such argument would be relevant in a case challenging the validity of the registration of the trademarks.
The appellant did not file a counter-claim challenging the validity of the registration of the said trademarks.
The respondent in paragraphs 1A to 8 of its amended statement of claim averred facts showing that Traveler Products Inc of Cleveland Ohio USA and later the successor, Guard Manufacturing Co. of St. Louis Missouri USA supplied it the shoes and shoe protectors bearing the trade-marks it was distributing in Nigeria and West-Africa Sub-Region. In paragraphs 10 to 12 of the amended statement of claim, it pleaded facts showing that it subsequently registered its right to the exclusive use of the said trademarks in Nigeria.
The exact text of the said paragraphs 10 to 12 of the amended statement of claim read thusly:- 10. In June, 1990 the plaintiff formally applied for registration of the trade-marks “STEPS” and “GUARD” under the appropriate class with the registrar of Trade-Marks which application was acknowledged as: (a) For trade-mark “GUARD”-Reference No. TP8606/90/3 and TP8607/90/3 dated 20/6/90. (b) For trade-mark “STEP” - Reference No. TP8608/90/3 and TP8609/90/3 dated 20/6/90. 11. By its letters dated 21st June 1990 and Ref. No.
TP/8609/90/ to TP8609/90/5 the Federal Ministry of Trade, Trade-Marks section “ACCEPTED” the application and promised to publish same in the Trade-Marks Journal and to complete registration. 12. In 1992, the plaintiff was duly issued with the Certificate of Registration in respect of the two trademarks “GUARD” and “STEP” by the Registrar of the Trade-Marks, Federal Ministry of Trade, Abuja after the publication in the trademarks Journal”.
It is the respondent’s registration of the trademarks that gave it the right of action to protect its exclusive use of the trademarks. In the light of the foregoing, I resolve issue no.4 against the appellant.
On the whole, this appeal succeeds in part. The judgment of the Court of Appeal is affirmed except to the extent that it awards the sum of 5,000,000.00 naira as general damages for the appellant’s infringement of the respondent’s right to the exclusive use of the trade-marks, ‘STEP’ and ‘GUARD’. It is hereby ordered that the appellant shall pay to the respondent 3million as general damages for the appellant’s infringement of the respondent’s right to the exclusive use of the trade-marks, ‘STEP’ and “GUARD”.
The appellant shall pay costs of 1 million naira to the respondent.
CHIMA CENTUS NWEZE, J.S.C.: I have had the privilege of reading the draft of the leading judgment of my learned brother, Agim, JSC. I entirely agree with the reasons and conclusion.
It is now well-settled that arguments in the appellant’s brief must be covered by, or related to, the Grounds of Appeal, Bamgboye v. Olarewaju (1991) 4 NWLR (pt. 184) 132; Momodu v. Momoh (1991) 1 NWLR (pt. 169) 608, 620; Godwin v. CAC (1998) 14 NWLR (pt. 584) 162.
Notwithstanding that the lower Court, thoroughly, considered the differences between a design and a trade mark, as well as, the effect of a design certificate and a registered trade mark, the appellant herein argued, in its brief, that it had the right to use the said trademarks by virtue of its design certificate. His reason was that the right of the holder of a design certificate is not dependent or subject to the right of the holder of a registered trademark. In his submission, the subject matter and purpose of the two can be the same even though the two have separate purposes.
He, thus, rejected the findings of the lower Court on this point.
Unfortunately, these points were not related to any of the Grounds of Appeal filed before this Court. The law is well settled that where a party does not appeal against any point of law or fact, he is deemed to have conceded, Chudi Verdical Co. Ltd v. Ifesinachi Industries Ltd (2018) 16 NWLR (pt. 1646) 520, 537; Awodi v. Ajagbe (2015) 3 NWLR (pt. 1447); Anyawu v. Ogunewe (2014) 8 NWLR (pt. 1410) 437, 470; Opara v. D. S. (Nig,) Ltd (2006) 15 NWLR (pt.1002) 342; Biariko and Ors v. Edeh-Ogwuile and Ors (2001) LPELR-779 (SC).
The appellant cannot set up, argue or urge contentions that are not so related to the Grounds of Appeal. Consequently, appellant’s arguments on these points are hereby discountenanced.
On its issue 4, the appellant essentially argued that the respondent has no locus standi to institute the suit because the respondent’s evidence did not prove that it was the sole agent of Travelers Product and Guards Manufacturing company of St. Louis Missouri of United States of America, in Nigeria.
Simply put, a person who has registered a name or sign as his trademark has a proprietary right over the use of that name in that class in which it is registered. In other words, registration is prima facie evidence of title to the particular trademark and entitles the holder or proprietor of such mark to institute an action to protect its breach, Ferodo Ltd and Anor v. Ibeto Industries Ltd (2004) 5 NWLR (pt. 866) 317, 347; Dyktrade Ltd v. Omnia Nig. Ltd (2000) 7 SC (pt. 1) 56; Maersk Line v. Addide Investment Ltd, (2002) NWLR (pt.778) 317, 355.
Here, exhibits E, E1 and E2 are the Certificates of Registration of the Trademarks “STEP” and “GUARD”, the subject matter of this case. The respondent’s name is on all certificates as the manufacturer and the distributor of the products named therein. These said exhibits show that the respondent is the registered owner of the trademarks in Nigeria. He, therefore, has the sole right of action to protect the right to use them exclusively as provided under Sections 3 and 5 of the Trademark Act.
I, therefore, have no hesitation in holding that the respondent had locus standi to institute the action at the trial Court.
It is for these, and the more elaborate reasons in the leading judgment, that I too shall enter an order allowing this appeal in part. I also abide by the order as to costs.
AMINA
ADAMU AUGIE, J.S.C.: I had a preview of the lead judgment just delivered by my learned brother, Agim, JSC, and I totally agree with his reasoning and the conclusions therein.
He dealt with the issues raised in the appeal meticulously and decisively, and there is nothing that I could add that would make any difference or enhance the well-articulated points he made in the lead judgment; therefore, I adopt his reasoning as mine, and it is on that premise that I also allow this appeal in part, and I abide by the consequential orders in the lead judgment including costs.
HELEN MORONKEJI OGUNWUMIJU, J.S.C.: I have read the judgment just delivered by my learned brother EMMANUEL AKOMAYE AGIM, JSC. I agree with his Lordship’s reasoning and conclusion that the appeal succeeds in part.
This is an appeal against the judgment of the Court of Appeal, Lagos Division delivered on the 14th day of May, 2010 by, Adamu Jauro Raphael Chikwe Agbo and Adzira Gana Mshelia JJCA allowing the appeal in part, invoking Section 15 of the Court of Appeal Act and varied the Orders made by the Learned Trial Judge in the following terms: 1. The Order of perpetual injunction restraining the appellant’s use of Trade Mark No. 42696 was set aside. 2. An award of the sum of N5million as general damages in place of the N5.5million awarded by the trial Court.
The facts that led to this appeal are as follows: The Respondent as Plaintiff by a Writ of Summons and Statement of Claim dated and filed on the 11th day of March and 18th day of October, 1993, instituted this suit against the Appellant for the following reliefs: (i) A perpetual injunction restraining the Defendant whether acting by its directors, officers, distributors, servants, agents or otherwise howsoever from infringing registered trademarks No.49624 and No.49625. (ii) N5Million (Five Million Naira) only against the Defendant for damages suffered by the Plaintiff. (iii) Alternatively, at the option of the Plaintiff, an account of profit made.
However, the Plaintiff during the course of the trial Court amended its statement of claim thus: (i) Annual profits made yearly N500,000 Annual profits for 5 years N2,500,000.00 (ii) General Damages N3,000,000.00
It is the case of the Appellant that while a suit was pending before Justice Jinadu, the respondent instituted this parallel suit and in the process applied and obtained a trademark certificate in respect of “STEP AND GUARD” without waiting for the final outcome of the earlier pending suit. The Appellant further contended that it got its trademark certificates on the 9th day of April 1991 and had since enjoyed the rights and privileges conferred by such registration before the respondent.
The respondent on the other hand contended that, in June, 1990, it formally applied to the Registrar of Trademarks for registration of its two products, “STEP” and “GUARD”. Following its application, the Trademarks Office registered the products and issued Certificate of Registration for the two products in 1992. In October 1992, the Respondent discovered the imitation of one of its registered products, “STEP” shoe protector by the Appellant which gave the impression that the Appellant produced and distributed same.
The Respondent then argued that, by reason of the imitation by the Appellant, it suffered financial loss and serious setback to its reputation and trade.
At the end of trial, the trial Judge found for the Respondent and consequently granted an “order of perpetual injunction restraining the Defendant whether acting by its directors, officers, distributors, servants, agents or otherwise howsoever from infringing the Plaintiff’s registered Trademarks Nos. 49624, 49625 and 49626” and awarded the sum of “N5.5million against the Defendant in favour of the Plaintiff as general damages suffered by the Plaintiff.”
Dissatisfied with the judgment of the trial Court, the appellant filed eight Grounds of Notice of Appeal dated the 5th day of February 2002 to the Court of Appeal, Lagos Division. The Court of Appeal allowed the appeal in part, invoked Section 15 of the Court of Appeal Act and varied the Orders made by the trial Court by setting aside the order of perpetual injunction in respect of Trademark 49626 and in place of the N5.5million general damages, awarded N5million.
The Appellant has now appealed to this Court vide its Notice of Appeal dated the 14th day of July 2010 in which it raised six grounds of appeal. I wish to say a few words on issue four (4) to emphasize the point made by my Learned Brother in the lead judgment. That issue is set out below: Whether from the totality of the evidence led at the trial (both oral and documentary) the Plaintiff/Respondent could be said to have established that it is the sole agent of Travelers Products and Guard Manufacturing Company of St.
Louis Missouri of the United States of America in Nigeria to give it the locus to institute this suit? (Grounds 4 & 5)
In B.B APUGO & SONS LTD V. OHMB (2016) LPELR-40598(SC) Pages. 85-86, paras. B-A this Court per RHODES-VIVOUR, JSC held thus: “In Pacers Multi Dynamics Ltd v. M.V. Dancing Sister (2012) 1 SC (Pt. 1) P.75. I explained locus standi as follows: I said: “A person has locus standi to sue in an action if he is able to show to the satisfaction of the Court that his civil rights and obligations have been or are in danger of being infringed. There are two tests for determining if a person has locus standi. They are: 1. The action must be justiciable, and 2. There must be a dispute between the parties.
In applying the test, a liberal attitude must be adopted. Senator Adesanya v. The President of Nigeria (1981) 5 SC P. 112 lays down the rule for locus standi in civil cases, while Fawehinmi v. Akilu 1987 12 SC P.99 lays down the far more liberal rule for locus standi in criminal cases… To have locus standi, the plaintiff’s statement of claim must disclose sufficient legal interest, and show how such interest arose in the subject matter of the action.”
My Lords, the respondent, through PW1 and PW3 and via Exhibits B and D, gave evidence to disclose sufficient legal interest of its being the accredited sole agent and registered user of the trade marks in Nigeria. It therefore has a right of action to protect the right to its exclusive use.
I adopt wholly the erudite reasons given in the lead judgment for allowing the judgment in part by further reducing the award of general damages against the Appellant to Three Million Naira only (N3,000,000.00) even though the judgment of the Court of Appeal affirming the Appellant’s infringement on the Respondent’s copyright is further affirmed. I abide by all orders in the lead judgment.
TIJJANI ABUBAKAR, J.S.C.: My lord and learned brother, AGIM, JSC granted me the privilege of reading in draft the elaborate leading judgment prepared and rendered in this appeal. I endorse the reasoning and conclusion and adopt the judgment as mine, I have nothing extra to add.
I also endorse all consequential orders including the order on costs.