Bell Sons & Co Vs Godwin Aka & Anor (1972)

B. A. COKER, J.S.C. 

This appeal concerns the ruling of the High Court, Lagos (Caxton-Martins J.) given on the 27th April, 1967, whereby the application of the respondents to register a trade mark No. 173091 in Class 3 in the Register of Trade Marks was granted. On the 2nd March, 1967 and by virtue of an application of that date, the present respondents, as applicants, applied to the High Court, Lagos, for “an order pursuant to section 19(2) of the Trade Marks Act that, notwithstanding the opposition by the objectors to the registration of the trade mark No. 173091 in Class 3, the registration be proceeded with by the Registrar of Trade Marks”.

The application is supported by an affidavit stating in effect that the application for registration of their trade mark was duly advertised in the Nigerian Official Gazette Extraordinary and that the objectors, now appellants, had objected to the registration on the grounds set out in the notice of objection, a copy of which is attached to the affidavit of the applicants and the material parts of which read as more follows:

“3. The applicants use their trade mark as a label on bottles in exactly the same colour combination as in Figure 2 attached.

4. The applicants’ mark is in all material respects identical to our mark and clearly is intended to resemble our mark as closely as possible.
5. The applicants’ mark is not adapted to distinguish the goods of the applicants from our goods and as such is not distinctive, is calculated to deceive and is not entitled to registration as a trade mark.
6. Further by reason of the manner and intent of its use the applicants’ mark is not entitled to protection in a court of justice.
7. We maintain therefore that the applicants’ mark is not entitled to be registered.”

At the hearing of the application, there were before the learned trial judge a facsimile of both the design of the objectors already registered in the same class and that of the applicants which was sought to be registered. In the course of his ruling, the learned trial judge expressed the results of his own detailed comparison of both marks, i.e. exhibit AMF 1 (belonging to the objectors) and exhibit AMF 2 (belonging to the applicants). The design exhibit AMF 1 consists of a label on which were written some words of advertisement for castor oil, specially orientated with matching colours of blue, etc. and containing as an inset thereon the letter ‘B’ written in block capitals and in black colour, apparently denoting the name of the proprietors, i.e. Bell Sons (Druggists) Ltd. The design proposed to be registered by the applicants, i.e. Aka Brothers, consists of the same words as in exhibit AMF 1, the same colouring and orientation but for the block capital ‘B’ the letter ‘A’ in the same size but printed in red colour has been substituted.

It is necessary to point out that exhibit AMF 1 was registered without the accompanying words of advertisement and the letter ‘B’ and the words (and the letter ‘A’) were not being proposed to be registered in exhibit AMF 1. In the course of a reserved ruling on the result of his comparison, the learned trial judge observed, inter alia, thus:

“The mark in exhibit A is printed in black type as against the red type shown in AMF 2; in the latter the brackets at the bottom of the letter ‘A’ in exhibit A are omitted. The colour in which a mark is actually used or is likely to be used has often had a material bearing upon the question of deceptive resemblance.”

The learned judge then referred to a number of authorities on the law of trade-marks and before concluding his ruling commented further as follows:

“In my view an illiterate customer is capable of knowing and distinguishing between the two letters ‘A’ and ‘B’ even when not placed side by side. . . .

So far as the educated customer is concerned, there is nothing in the letters ‘A’ and ‘B’ which can be calculated to deceive. To the illiterate customer, the impression of either ‘A’ or ‘B’ in the same or different colours, whether they are placed side by side or far apart, I find that there is no likelihood of deception.”

The learned judge then over-ruled the objection to the registration of exhibit AMF 2 and ordered that the registrar of trade marks should proceed with the registration of the mark in Class 3 “in favour of the applicants” .

The objectors have appealed against this decision to this Court and the complaint before us is that the learned trial judge was wrong in law and on the facts in concluding, as he did, that the marks were dissimilar and that exhibit AMF 2 is not likely to be mistaken for the mark of the objectors, exhibit AMF 1.

It is common ground that the trade-mark exhibit AMF 1 was registered in Class 3 of the register in respect of castor oil and other pharmaceutical products in that Class on the 19th April, 1958; it is also common ground that it is being sought now to register exhibit AMF 2 in the same Class and respect of castor oil. Before us learned counsel for the applicants contended that the words accompanying the trade-mark exhibit AMF 1 were not registered or registrable and that therefore the objectors could not complain at the appearance of these words on exhibit AMF 2 which also carries the letter ‘A’ in red colouring instead of the letter ‘B’ in black colouring appearing on the objectors’ mark. Learned counsel then referred to section 16 of the Trade Marks Act, Cap. 199 which reads as follows:

“16. If a trade mark contains parts not separately registered by the proprietor as a trade mark, or if it contains matter common to the trade or otherwise of a non-distinctive character, the Registrar or the court, in deciding whether such trade mark shall be entered or shall remain upon the register, may require, as a condition of its being upon the register, that the proprietor shall disclaim any right to the exclusive use of any part or parts of such trade mark, or all or any portion of such matter, to the exclusive use of which they hold him not to be entitled, or that he shall make such other disclaimer as they may consider needful for the purpose of defining his rights under such registration:

“Provided always that no disclaimer upon the register shall affect any rights of the proprietor of a trademark, except such as arise out of the registration of the trademark in respect of which the disclaimer is made. ”