Ferodo Limited & Anor. V. Ibeto Industries Limited (2004)

LAWGLOBAL HUB Lead Judgment Report

MUSDAPHER, J.S.C.

The appellants herein were the plaintiffs in the Federal High Court and the appellants at the Court of Appeal, Lagos. The claim in the Federal High Court was against the respondent herein (as the defendant) and was in the following terms:

“An injunction to restrain the defendant whether acting by itself, its servants or agents or any of them, or otherwise howsoever from doing the following acts or any of them that is to say –

(i) Infringing the 1st plaintiff’s registered trade mark No. 38604.

(ii) Passing off or causing or enabling or assisting others to pass off the defendant’s UNION brake linings as and for the plaintiffs’ FERODO brake linings.

(iii) Selling or offering for sale or supplying brake linings or brake pads with labels or in packages having the distinctive red, black and white package design or get up of the plaintiffs’ FERODO brake linings’ package design or get up or so closely resembling it as to be calculated to lead to the belief that brake linings not of the plaintiffs’ manufacture and merchandise are products of the plaintiffs.

Delivering up for obliteration destruction of all brake linings, packages and labels containing the offending marks or being in the offending design or get up including printing blocks and other matters the use of which would be a breach of the injunction prayed for.

Damages of N1,000,000.00 exemplary or aggravated damages of N500,000.00 costs.

Further or other reliefs.”

In the 2nd further amended statement of claim filed with the leave of the trial court on 3/12/1991, the above claims were repeated by the plaintiffs.

Now, the facts of the case may be put shortly thus: The first plaintiff is an English company and the second plaintiff is its Nigerian associated company. The plaintiffs are the manufacturers and sellers of the FERODO brand of brake linings for motor vehicles sold in cardboard packages registered by the first plaintiff as trade mark No. 38604 and tendered in evidence at the trial as exhibit C. They claim that the design or get up of the packages in which they sell their FERODO brake linings is distinctive to them and to their product. They also claim that they had been in the Nigerian market with their distinctive trade mark for a period for over ten years prior to the suit taken in court.

The defendant on the other hand is an indigenous Nigerian company and claims to manufacture and sell brake linings under the brand name of UNION. The plaintiffs claim that the packaging under which the defendant marketed its UNION brake lining is so similar to the plaintiffs’ packaging that it constituted an infringement of the plaintiffs’ registered trade mark No. 38604. The sale of the defendant’s brake lining also amounted to the passing off of the plaintiff’s products. The plaintiffs further allege that the Managing Director and the Marketing Manager of the second plaintiff paid a visit to the defendant’s factory in March, 1990 and were shown a package by which the defendant wanted to market their UNION brand of brake linings. The package shown was almost an exact replica of the FERODO package. The plaintiffs through the Managing Director aforesaid objected to the proposed use of the package whereupon the defendant’s Managing Director undertook not to use the package. The package shown to the plaintiffs by the defendant is exhibit E in these proceedings. While on a business trip to the eastern part of Nigeria, it was observed by the Marketing Manager of the second plaintiff, packages of the defendant’s brand of UNION brake linings in red, black and white colour combination so closely resembling the FERODO package design as to likely deceive the public have been put up for sale in the markets. The defence of the defendants was simply that the design of FERODO box was not distinctive of the plaintiffs alone. Red packaging in combination of black and white is traditional to the trade of brake linings. It was further argued that their use of the “UNION” packaging did not amount to passing off of the plaintiffs’ FERODO brand of brake linings and its use did not constitute an infringement of the plaintiffs’ trade mark No. 38604. The defendants again denied ever using as its packaging exhibit F, which the plaintiffs claimed was used by the defendant to pass off the plaintiffs’ brake linings and also to infringe the plaintiffs’ trade mark. The defendant tendered in evidence exhibit O which contained the packaging they used to market their UNION brand of brake lining. It is important to bear in mind that the plaintiffs, as agreed by them, would have no complaint against the defendant if the defendant were in fact only using exhibit O to market its merchandise. On the 28/2/1994, the learned trial Judge in part of his judgment held as follows:-

“There is no doubt in my mind that whether this court finds that the defendant marketed its products in exhibit F or O it does not infringe the registered trade mark of the plaintiffs’ No. 38604 according to exhibit D which is the certificate for use in legal proceedings from the Registrar of trade marks. What the plaintiffs registered as their trade mark is the word FERODO and in order to infringe the said trade mark, the defendant must have taken the said word in its entirety or must have a substantial portion of it. In Kerly’s Laws of Trade Marks and Trade Names, 10th edition, page 307, paragraph 1502, it was stated that in an action for infringement of

trade mark the plaintiff complains that the defendant has infringed his trade mark by taking in its entirety, or by taking a substantial portion of it, or by colourably imitating it, and he relies on his statutory title to the exclusive use of the mark in question in goods of a specified kind. The right which is given by a valid registration is the right to exclude others from the use of the trade mark, in this case. “FERODO”.