John Khalil Khawam And Co Vs K Chellaram And Sons (Nigeria) (1960)

LawGlobal-Hub Lead Judgment Report

ADEMOLA, C.J.F

The plaintiff in the case in the High Court of Lagos has appealed to this Court against the amount of £2,000 damages awarded him in a claim by him for £50,000 damages for the infringement by the defendant company of his Registered Design on textile piece goods bearing his Registered Design No. 459477. The defendant company also filed a cross-appeal against the judgment of the learned trial Judge. The relief sought in the cross-appeal is that the judgment of the learned trial Judge be set aside or in the alternative that damages awarded be reduced to nominal damages. The plaintiff/appellant is a trader in textile goods and an importer of textile goods from Japan and other countries. The defendant/respondent, a big trading house in Nigeria, trades in various goods including textile goods and is also an importer of goods from Japan and other countries. The plaintiff, among other designs, designed a pattern from the African ‘lie and dye” design, with typical “motifs” common to the Nigeria “adire” cloths designed with herringbone stripes, stars and repetition of circles peculiar to many “adire” clothes but with peculiar arrangements of the motifs which made it original

The plaintiff having made this design, on the 4th January 1957, registered it in the Manchester Branch of the Design Registry of the Patent Office in Manchester in accordance with the provisions of the Registered Design Act, 1949 and obtained a certificate granting him a monopoly of the design for 5 years with a right of renewal for another 10 years.

During the month of January 1957, he imported into Nigeria from Japan 1,000 pieces of the material which he sold at 50s a piece of ten yards making a profit of 15s per piece. By the end of that year he had imported 9,841 pieces in all. About the month of November, 1957, the defendant/respondent company had imported into Nigeria cloth of a similar design but inferior in quality which was selling at 38s per piece. The plaintiff/appellant was forced to drop his selling price from 50s to 43s per piece and later to 34s per piece to compete with the intruder into his market. The defendant/respondent company asserting, as it did, that the design is an open design in Japan, placed on order with Gosho Company, the same company in Japan which printed the plaintiff/appellant’s design, the same design on inferior materials. The goods were shipped to Nigeria and sold at a wholesale price of 38s per piece of ten yards. The plaintiff/appellant as the registered proprietor of the design promptly called the attention of the defendant/respondent company to the infringement of his design and later instituted an action in the High Court of Lagos for an injunction to restrain the defendant/respondent from selling the particular textile goods; he claimed damages for the infringement and also claimed the delivery up of the goods with the defendant/respondent company for destruction. Judgment was entered in his favour in terms of the writ but with £2,000 damages.

The plaintiff is dissatisfied with the damages awarded in his favour and has appealed. The ground of appeal argued is mainly directed on principles to be followed in awarding damages.

On the other hand, the defendant/respondent company filed a cross-appeal and the grounds of appeal filed and argued are as follows:

1. “That the learned trial Judge misdirected himself on the evidence before him in holding that the design was new or original.

2. That the learned trial Judge misdirected himself on the evidence in holding that the defendant was not an innocent infringer.

3. That the learned trial Judge erred in law in awarding general damages against the defendant being an innocent infringer.

4. In the alternative the damages awarded against the defendant were excessive.”

It seems convenient, and I shall deal first with the cross appeal.

Mr. Bickersteth, arguing the cross-appeal, abandoned the first ground. Arguing the 2nd and 3rd grounds together, he submitted that although the learned trial Judge in his judgment referred to section 9 of the Registered Design Act 1949 and also to section 3 of the United Kingdom Designs (Protection) Ordinance, Cap.221, he failed, however, to apply the statutory tests that it would be sufficient for the defendants to rely on either section 9 of the English Act or section 3 of the local Ordinance. Section 9 (1) of the Registered Design Act 1949 reads:

9  (1)     “In proceedings for the infringement of copyright in a registered design damages shall not be awarded against a defendant who proves that at the date of the Infringement he was not aware, and had no reasonable ground for supposing, that the design was registered; and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the marking of an article with the word “registered” or any abbreviation thereof, of any word or words expressing or implying that the design applied to the article has been registered, unless the number of the design accompanied the word or words of the abbreviation in question.”

and section 3 of the United Kingdom Designs (Protection) Ordinance, Cap. 221, reads:-