Nabisco Inc. V. Allied Biscuits Company Ltd.(1998)

LAWGLOBAL HUB Lead Judgment Report

OGWUEGBU, J.S.C.

This is an appeal against the judgment of the Court of Appeal (Lagos Division) which allowed the appeal of Allied Biscuit Co. Ltd. to that court. The proceedings originated from the applications of both parties for registration under the Trade Marks Act, 1965 (now Cap. 436, Laws of the Federation of Nigeria, 1990).

In June, 1977, the opponent (Allied Biscuits Co. Ltd) who are the respondents in this court filled an application to register “RITZ” as a trade mark after conducting searches in the Registry of Trade. The application was accepted and numbered 31795. Thereafter, Nabisco Inc., the appellants in this court, made an application for the same “RITZ” to be registered as their own trade mark. The application of the appellant was advertised in the Trade Marks Journal at the instance of the appellants (Nabisco Inc.). When the respondents noticed the advertisement they commenced opposition proceedings in the Trade Marks Registry.

When the matter came before the Registrar of Trade Marks, the learned counsel for Nabisco Inc. raised a preliminary objection contending that there was no evidence before the Registrar on which the matter could proceed. Counsel filed a counter-statement which was served on the opponents (Allied Biscuits Co. Ltd). It was the contention of the appellants before the Registrar that the respondents should have filed a statutory declaration upon receipt of their counter-statement pursuant to Regulation 51 of Trade Marks Regulation, 1967. After hearing arguments from both counsel who appeared for the parties, the Registrar upheld the objection and adjourned for hearing. At the close of hearing and after considering the evidence, the Registrar refused to register the device “RITZ” as the appellants’ trade mark.

Nabisco Inc. being dissatisfied with the decision of the Registrar appealed to the Federal High Court under section 21(1) of the Trade Marks Act, 1965 (now Cap. 436, Laws of the Federation of Nigeria, 1990). Anyaegbunam, C.J. allowed the appeal. Allied Biscuits Co. Ltd (the opponents before the Registrar) appealed to the Court of Appeal, Lagos Division against the decision of Anyaegbunam, C.J. The court below allowed the appeal, set aside the decision of Anyaegbunam, C.J. and restored the judgment of the Registrar of Trade Marks. Nabisco Incorporated appealed to this court and identified the following issues in their brief of argument as arising for determination in the appeal:

“(1)(a) Whether the Justices of the Court of Appeal were right in holding that under Regulation 52 of the Trade Marks Regulation 1967 (L.N. 70 of 1967) the Registrar of Trade Marks has a discretion after granting an application to strike out a notice of opposition for want of evidence as required under Regulation 51 of the said Trade Marks Regulations 1967;

(b) If so, whether they were also right by necessary implication that such discretion extends to granting an enlargement of time and the fixing of the matter for hearing by the Registrar suo motu in spite of the provisions of Regulation 56 of the Trade Marks Regulation 1967;

(c) Whether the learned Justices of the Court of Appeal were also right in holding that the appellants by not refusing further participation in the proceedings after upholding their application to strike out the notice of opposition have waived their right to regard the Registrar functus officio and thus by necessary implication, conferred fresh jurisdiction on the said Registrar to hear the application (Grounds 1 and 2)

2. Whether the Justices of the Court of Appeal were right in holding that an appellant who desires confirmation of the judgment of the court below on other grounds should either come by way of cross appeal or a respondent’s notice under Order 3 rule 14(1) of the Court of Appeal Rules which deals with variation of judgment. (Ground 4).
3. Whether the Justices of the Court of Appeal were right in their restoration of the ruling of the learned Registrar of Trade Marks instead of ordering a retrial having regard to all the irregularities and other circumstances they identified in the trial before the said learned Registrar of Trade Marks. (Ground 3).”

The issues formulated by the appellants are sufficient in determining this appeal and I am going to consider the appeal on those issues. It is therefore not necessary to set out the respondent’s issues for determination.

The learned counsel for the appellants referred the court to Regulations 48 to 60 of the Trade Marks Regulations, 1967 as the procedure to be followed in opposition proceedings before the Registrar and that Regulations 51, 52 and 56 are relevant to this appeal. Counsel submitted that Regulations 51 and 52 are mandatory and that the Registrar’s discretion under Regulation 52 did not go beyond not deeming as abandoned any notice of opposition which would otherwise be deemed abandoned. It was his further contention that on a proper interpretation of the Regulation, any opponent who failed to provide evidence in support of his opposition is deemed to have abandoned his opposition unless the Registrar otherwise directs and after upholding the application to strike out the notice of opposition, there was no discretion left in the Registrar under Regulation 52.

It was again contended that the Court of Appeal failed to consider the time the Registrar exercised the discretion under Regulation 52 and that no matter was pending before him when he purported to exercise the said discretion.

It was argued in the appellants’ brief that after upholding the application to strike out the notice of opposition, there was no matter before the Registrar and the grant of the said application was a final order as far as the Registrar was concerned. He thus became functus officio and the order for hearing made thereafter was a violation of Regulation 56.

It was submitted in the respondents’ brief that under Regulation 106 of the Trade Marks Regulations of 1967, the Registrar has discretionary power and before exercising the power adversely to any person, he should hear such a person if so required and that the court would not interfere with the exercise of the Registrar’s discretion unless it is clearly wrong. The court was referred to the cases of The Register a Trade Marks v. W. & G. Du Cros Ltd (1913) A.C. 624 and In re Garrett’s Application To Register a Trade Mark (1916) 1 Ch. 436.

It was also submitted on behalf of the respondents that at the time the case was fixed for hearing both parties believed and knew that the respondents had been granted time to file their statutory declaration and neither party knew that there had been an error on the record. We were urged to hold that the Registrar had the discretion to order otherwise than deeming the objection abandoned.