Sunday Uzokwe V. Densy Industries Nig. Ltd & Anor (2002)

LAWGLOBAL HUB Lead Judgment Report

O. OGWUEGBU, J.S.C.

This is an appeal against the judgment of the Court of Appeal, Enugu Division delivered on 7th July, 1998 allowing the appeal of the defendants who were appellants in that court. The plaintiff instituted an action in the Federal High Court, Enugu claiming against the defendants (respondents herein) jointly and severally as follows:

“1. N5,000,000.00 (Five Million Naira) being general damages for infringement of the Registered Design No. 4464.

2. Injunction restraining the defendants, whether acting by their agents, directors, officers, servants, privies and/or otherwise however from infringing the plaintiffs copyright in the Registered Design No. 4464.”

The learned trial Judge awarded N10,000.00 damages against the defendants in favour of the plaintiff for infringement of the plaintiff’s Design No. 4464. The defendants were dissatisfied with the judgment and appealed to the Court of Appeal, Enugu Division. Their appeal succeeded and the plaintiff’s claim was dismissed. The plaintiff appealed to this court against the decision of the court below. The case of the plaintiff from his pleadings and evidence at the court of trial is that he is the registered owner of Design No. 4464 in respect of kitchen plastic container, that the design was registered on 5th March, 1991 in the name of “Sunday Innocent and Co.”, that at the time of registration, the design was new and that he is the author. It was his case that he started producing the plastic containers shortly after registration of the design and within two months of registration he discovered that his right in the design had been infringed.

At the trial, the plaintiff tendered Exhibit “1” which contains the plans and drawings of the registered design. He tendered as Exhibit “2”, the finished product from the registered design. It was part of his case that he started mass production of Exhibit “2” since 1991 and that at that time, there was no similar design or product in the market. Exhibit “5”, the similar product produced and distributed by the defendants was tendered by the plaintiff.

It was the case of the 1st defendant that the design was not new, that the plaintiff was not the creator and that the product was common, available in the market and had been produced even before the registration of the plaintiff’s design. In his amended statement of defence, the 2nd defendant denied the newness of the said design and stated that the product had been in the market long before the registration of the design by the plaintiff. It was the evidence of D.W.1 that the defendants had been producing plastic kitchen containers since 1987. As I stated earlier in this judgment, the court below reversed the judgment of the trial court and dismissed the claim of the plaintiff hence this appeal. The following four issues were distilled from the grounds of appeal and submitted by the plaintiff for determination in the appeal:

1. Whether the burden of producing the designs and drawings from which Exhibit “5” which is the infringing product still lies with the plaintiff who has produced and tendered in court Exhibit “1”, the plans and drawings from which Exhibit “2” was produced.
2. Whether the burden of proving the novelty of Exhibit “2” has not been discharged by appellant as provided by the Patents and Designs Law.
3. Did the Court of Appeal, Enugu properly apply the decision in F. O. Ajibowo & Co. Ltd. v. Western ile Mills Ltd. (1996) (sic) (1976) 7 SC 97 in the appeal before it
4. Whether the findings made by the trial court were perverse that the Court of Appeal has to interfere with the said findings. ”

The defendants in their brief identified the following two issues for determination in the appeal:-

“1. Whether the burden lies on the appellant herein to prove the novelty of the design in dispute in this suit

2. If so, whether the appellant discharged the said burden to entitle him to the registration of the said design and the reliefs claimed”.

The principal issue in this appeal is whether Exhibit “1” was new at the time of its registration. Coupled with this is the question of proof of its novelty at the said time. I will at this stage reproduce the crucial findings of the courts below which touch on the novelty and proof of the newness of the design of the plaintiff. After considering the evidence and the authorities cited by the parties, the learned trial judge observed as follows: “In the present case the plans and drawings of the plaintiff’s design are contained in the document annexed to Exhibit 1.” The shape and the size of the container including the shape and size of the bottom of the container and cover are claimed (sic). This Design was used in the production of Exhibit “2” The design used by the 1st defendant in the production of Exhibit “5” is not before me in this case. A comparison of the designs therefore cannot be made”.

Later in his judgment the learned trial judge observed:-

‘The next question to be considered is the question of whether or not the defendants can be said in this case to have infringed on the plaintiffs’ copyright in the design covered by the Certificate of Registration No. 4464. A cursory perusal of the external appearances of Exhibit 2 and Exhibit 5 reveals that the two items are similar to each other. It seems Exhibits “2” and “5” are produced from the same design and by the application of the same process.

Based on the later observation which is inconsistent with his earlier one, the learned trial Judge found for the plaintiff. The court below had this to say on the inconsistent findings of the trial court:

“The learned trial Judge, in my respectful opinion, seems to reprobate and approbate, a thing he is not entitled to do….What constitutes the design is the peculiar combination and arrangement of lines and colour which give such features. Similarity of appearance has nothing to do with its distinctiveness, speciality or peculiarity. There must be something extra which catches the eye and in a way appeals to the eye ——– A claim for an infringement of a right in a design is not made out mainly because the new design is similar to that of the appellant, more is required.”

On burden of proof of the novelty of the design, the court below held as follows: