Alliance Intl Ltd V. Saam Kolo Intl Enterprises Ltd (2022)

LAWGLOBAL HUB Lead Judgment Report

EMMANUEL AKOMAYE AGIM, J.S.C.

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in paragraph 17 of the Amended Statement of Claim by the Plaintiff/Respondent is not its claim as to damages that have superceded the claim made on the writ of summons?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”

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.