Elecktrotechnische Fabrik Schmidt and Co. v. Bateria Slany Narodni Podnic (1972)

LawGlobal-Hub Lead Judgment Report

G.B. A. COKER, J.S.C.

This appeal is sequel to an application by the appellants, Elektrotechnische Fabrik Schmidt & Co. otherwise Daimon-Werke GMBA to the High Court, Lagos, for “an order that trade mark No. 9636 be expunged from the register of trade marks”. The application was directed against the respondents, Bateria Slamy Narodni Podnic. At the date of the motion the said respondents were, as they still are, the registered proprietors of trade mark No. 9636.

The application is supported by an affidavit filed on behalf of the appellants stating, inter alia, that although both the appellants and the respondents were companies originally founded and owned by the same person, yet after World War II the respondents’ company, which was based in Switzerland, was nationalised by the government of that country;

that the appellants were the registered proprietors of the trade mark “DAIMAN & DEVICE” which was registered as No. 4578 in the register of trade marks as far back as 1936; but that in 1958 the respondents’ company, which had then ceased to be a part of the appellants’ company, obtained registration of the trade mark “DAIMON” under trade mark No. 9636.

The respondents resisted the application and filed a counter-affidavit denying virtually all the facts deposed to in the affidavit in support of the appellants’ motion and stating that the respondents were always an independent company, that they duly applied for and obtained the registration of their trade mark when they did so and that the mark had been registered as No. 9636 in their favour.

In course of time the parties applied for and obtained an order for pleadings to be filed and delivered. The appellants’ statement of claim repeats more or less the facts deposed to in the affidavit accompanying their application and avers in effect that in or about the year 1936 the appellants were registered as the proprietors of the trade mark “DAIMON & DEVICE” as No. 4578 in Class 8 in respect of electric dry elements and batteries, incandescent lamps and lanterns and casings or carrying devices for dry batteries and incandescent lamps; and that in the year 1959 the respondents also obtained the registration of the trade mark “DAIMON” as No. 9636 in Class 5 of the register in respect of galvanic monocells and cases for electric torches. The statement of claim finally avers in the concluding paragraphs as follows:

“10. The trade mark registered by the defendants is identical with or otherwise so nearly resembling that of the plaintiffs as to be calculated to deceive.

11. By reason of such identity or resemblance the goods of the defendants are likely to be mistaken by the public as and for the goods of the plaintiffs.”

The statement of defence filed on behalf of the respondents admits the registration of the trade mark by them and pleads that they had always used the trade mark which was duly registered and used by them as far back as 1958 and that the plaintiffs were equally always aware of such user. In due course a date was fixed for the hearing of the application. On that day and before for the appellant, as well as learned counsel for the other side, were recorded as having stated as follows:”Mr Garrick: Mr Grant and I have agreed on the following points:

(i) That the two trade marks are identical

(ii) That they are in respect of the same goods or description of goods and,

(iii) That if they are used by two different companies, it is bound to lead to confusion.

Mr Grant:-I agree that the three grounds stated by Mr Garrick are the basis upon which the case will be conducted.”

Thereafter evidence was led by both parties in support of their respective averments in their pleadings. The trade mark, which is the subject-matter of the proceedings, consists of the word “DAIMON” written in black capitals and a photographic representation of it was attached to the certificate of registration which was put in evidence at the hearing of the application as exhibit 5. As stated before, it was used at any rate by the respondents as a trade mark in connection with electric torches; indeed one such torch-light and its case bearing the representation of the trade mark was produced in evidence as exhibit 27.

In a reserved judgment the learned trial judge (Caxton-Martins J.) concluded that there was no justification for disturbing the use by the respondents of the trade mark of which they are registered proprietors. He found and held that: