Ayman Enterprises Limited Vs Akuma Industries Limited & Ors (2003)

LAWGLOBAL HUB Lead Judgment Report

A. KALGO, J.S.C.

The appellant who was the plaintiff instituted this action against the respondents as defendants in the Federal High Court, Lagos. In the writ of summons issued on the 26th of June, 1996, the plaintiff/appellant claimed for:-

“1. A perpetual injunction restraining the defendants and each of those upon whose behalf the defendants are sued, whether acting by themselves, their servants, assigns or privies or otherwise howsoever, from doing the following acts or any of them, that is to say:-

(i) Passing-off or attempting to pass-off or causing, enabling or assisting others to pass-off wigs and hair attachments not the plaintiff’s manufacture or merchandise as and for the goods of the plaintiff by the user or in connection therewith in the course of trade of the Trade Mark “ORIGINAL QUEENS” or adopting the distinctive get-up, logo, packaging or label design, identical in all essentials details to that of the plaintiffs “NEW QUEEN” or any colourable imitation thereof without duly distinguishing such packaging from that of the plaintiff or by any other means.

(ii) Manufacturing, importing, selling or offering for sale or supplying wigs and hair attachments in any package of Get-Up bearing the name “ORIGINAL QUEENS” or any other words so closely resembling the plaintiff’s Trade Mark “NEW QUEEN” applied for and accepted under TP 24575/95 in class 26, as to be calculated to lead to the belief that the wigs and hair attachment not of the plaintiff’s manufacture are products of the plaintiff.

(iii) Infringing the copyright in the artistic work of the plaintiff’s Trade Mark “NEW QUEEN”, it’s Get-up, logo package and distinctive label.

2. Delivery up for destruction upon oath of all wigs and hair attachments in packages and/or Get-up not of the plaintiff’s manufacture or merchandise yet bearing the Trade Mark “ORIGINAL QUEENS” identical to the plaintiff’s Trade Mark “NEW QUEEN” and sold in the plaintiff’s distinctive Get-up; all moulds, raw materials, printing blocks and other materials in the possession, custody or control of the 1st defendant, their servants, agents, or privies or any of them, the use of which would be in breach of the INJUNCTION prayed for and verification upon oath that the 1st defendant have no such articles in their possession, custody or control.
3. An order that the defendant and each of those upon whose behalf the defendants are sued whether acting by themselves, their servants, agents or privies or any of them do make and serve upon the plaintiff an affidavit disclosing when, to whom and in what quantities they have sold, sent or supplied, purchased or received any such wigs and hair attachment aforesaid, exhibiting true copies of all documents in their possession, power or custody or relating to the facts and matters therein disclosed and payment of all sums found upon making such an affidavit.
4. The sum of N30,000.00 as damages against the defendants jointly and severally for passing-off their fake/counterfeit “ORIGINAL QUEENS” wig and hair attachments as and for the plaintiff’s “NEW QUEEN” wigs and hair attachment and for infringing the Copyright in the artistic work of the plaintiff’s Trade Mark, its Get-up, logo, package and distinctive label”.

At the time of filing the writ of summons, the appellant also filed two motions; one ex-parte Anton-Piller application and the other motion on notice, each containing 9 prayers. On 1st July, 1996, the learned trial Judge Sanyaolu, J., heard the ex-parte application and granted all the prayers thereof pending the determination of the motion on notice which was fixed for hearing on 25th July, 1996. On the 9th of July, 1996, the appellant executed the Anton-Piller order by seizing the offending goods from the defendants/respondents. On the 12th of July, 1996, the respondents filed a motion on notice praying the trial court to set aside, discharge or vacate all the orders made on the ex-parte Anton Piller application. On the 27th of July, 1996, learned trial Judge ordered that both the appellant’s motion on notice for interlocutory injunction and the respondents’ motion to set aside the Anton-Piller orders be consolidated and heard together.

After hearing legal arguments from the learned counsel for the parties on the consolidated applications, the learned trial Judge delivered a considered ruling on the 28th of November, 1996 in which he dismissed the respondents’ application to set aside and granted the appellant’s motion for interlocutory injunction pending the determination of the suit. The respondents were dissatisfied with the ruling and appealed to the Court of Appeal. The appeal was heard and in its judgment delivered on the 6th of July, 1999, the Court of Appeal allowed the appeal and set aside the ruling of the learned trial Judge. The appellant then appealed to this court from the decision of the Court of Appeal and the respondents also cross-appealed.

Both parties filed and exchanged their respective briefs as required by the rules of this court. The appellant in his brief identified the following issues for determination of this court in the appeal:-

“1. Whether the Court of Appeal rightly applied the provisions of the Trade Marks Act (supra), on the classification and specification of goods and whether the classification of goods in the 3rd Schedule of the Trade Marks Act, 1965 is relevant to the specification of goods in the trade mark applications for “NEW QUEEN Collection and Device” and “Queens & Device”

2. Whether the Court of Appeal rightly applied the provision of the Trade Marks Act, Cap. 436, Laws of the Federation of Nigeria, 1990 in apportioning to the respondents’ Trade Mark application “Queens & Device” in class 3 reserved for “Cosmetic” goods and the appellant’s trade mark application “New Queen Collection & Device” in class 26 reserved for “Braids” equal “equities” and holding that both applications were at par.
3. Whether the issue of non-disclosure raised by the court below was material to the weighing-in operation in deciding whether to continue or discharge the Anton Piller and other interim injunctive orders granted by the learned trial Judge.
4. Whether the court below was right in interfering with the exercise of discretion by the learned trial Judge in the way it did when the said exercise was not perverse or the result of an improper exercise of judicial discretion and whether the said Anton Piller and other interim injunction orders were so abrasive in nature as to have the effect of taking the wind out of the case.
5. Whether the appellant fulfilled the conditions which ought to be met before a grant of an interlocutory injunction and whether the lower court was correct in holding that the interlocutory orders made by the learned trial Judge were so all embracing they ought not to have been made and that they had the effect of terminating the whole and entire case thereby setting aside the same.
6. Whether an appellate court can rightly consider and make findings on an issue specifically reserved by the trial court for the substantive hearing.
7. Whether it is right for a Judge to concur in a consequential order never granted by the lead judgment purported to be concurred in”

The respondents in their joint brief, formulated only 3 issues which they say encompass both the main appeal and the cross-appeal. The issues read:-

“(1) Whether the Federal High Court has jurisdiction to entertain a claim for damages for “passing-off’ of an unregistered trade mark: Ground of appeal in the notice of cross-appeal.

(2) Whether the Court of Appeal was right in discharging the ex-parte Anton Piller Order made by the Federal High Court on 1st July, 1996: Grounds 2, 3,4 and 7 of the amended notice of Appeal.

(3) Whether the Court of Appeal was right in law in setting aside the order of interlocutory injunction made by the Federal High Court on 28th November, 1999: Grounds 1, 5, 6, 8 and 9 of the amended notice of appeal.”