The Procter And Gamble Company V. Global Soap And Detergent Industries Ltd & Anor (2012)

LawGlobal-Hub Lead Judgment Report – COURT OF APPEAL

HELEN MORONKEJI OGUNWUMIJU, J.C.A. (Delivering the Leading Judgment)

This is an appeal against the Judgment of Honourable Justice Abdullahi Mustapha sitting at the Federal High Court, Lagos Judicial Division delivered on the 17th day of December 2007.

This Appeal relates to the ownership of a Trade Mark. Sequel to the futile attempt of the Appellant to register the trade mark, “Ariel and Atomium Device” after having initially registered the trade mark “Ariel”, the Appellant as Plaintiff instituted Suit No: FHC/L/CS/777/98 at the Federal High Court, Lagos Division, challenging the registration of the 1st Respondent’s trade mark, “Ariel Automatic”. The Plaintiffs suit is subject of this Appeal.

To get a better understanding of the facts which led to this appeal, it is best to set out the undisputed facts as gleaned from pages 741-751 of the record and set out in the judgment of the trial court.

The Plaintiff, now Appellant filed a suit at the trial court on the 17th of July 1998 claiming as follows:

1. A declaration that the Plaintiff, being the earlier registered proprietor since 3rd December 1969 of the Trade Mark “ARIEL” in respect of goods/products listed in Class 3 as No. 21233 of the Trade Marks Register in Nigeria, and also being the proprietor of over 500 identical trademarks some with additional suffixes spanning over 150 countries since 1921, is entitled to the exclusive use of the said Trade Mark in relation to goods of the said class.
2. A declaration that the Plaintiff having applied to register its Trade Mark “ARIEL Atomium Design under No. TP 9505 in respect of goods/products Registration by the Registrar of Trade Marks in 1991 and the Plaintiff also being the proprietor of several identical trademarks spanning over 50 countries is entitled to the exclusive use of the Trade Mark in relation to goods of the said class.
3. A declaration that the 1st Defendant’s act in procuring the registration of the trademark “ARIEL Automatic” and Atomium device, with the inscriptions “New improved”, in the same class and with identical ‘get up’ as the Plaintiffs earlier used and registered Marks knowing that the Plaintiff’s mark and products were registered and extensively used worldwide is deceitful, and an infringement on the Plaintiff’s Trade Mark as registered in Class 3 of the Trade Mark Register.
4. An order compelling the Registrar of Trade Marks (2nd Defendant herein) to rectify the Register of Trade Marks by expunging/striking out the 1st Defendant’s Trade Mark “Ariel Automatic” and Atomium device listed in Class 3 as No. 45673 of the Trade Marks Register as the registration of the mark was unlawful, contrary to law, and is a deceitful duplication of an earlier registered mark and likely to cause confusion.
5. An injunction perpetually restraining the 1st Defendant by itself and or through its servants, agents, subsidiaries or any person or persons connected with it or acting under its authority from using or attempting to use the Plaintiffs trademark similar to or identical to the Plaintiffs said Trade Mark(s).

The 1st Defendant in their amended statement of defence and counter-claim dated 24th April 2006, counter claimed as follows:

a. An order of this Honourable Court on the second defendant to rectify the trade mark ARIEL simpliciter registered as No. 21233 in favour of the Plaintiff by expunging the same therefrom on the ground that the said trade mark has been wrongfully remaining on the register of trade mark.

b. Perpetual injunction restraining the Plaintiff, its servants, agents, subsidiaries or any person or persons connected with it or acting under its authority from registering or attempting to register ARIEL with or without Atomium, Atomia, or Automatic as trade mark in Nigeria; and also perpetual injunction restraining the second defendant from accepting the same from the Plaintiff, its servant, agents, subsidiaries or any person or persons connected with it or acting under the authority for registration as a trade mark in Nigeria.

In proof of their case, the Plaintiff called one witness through whom 19 documents were tendered and admitted in evidence as Exhibits and put in evidence one document through DW1. The Defendant in proof of their defence and counter claim also called one witness through whom 10 documents were tendered and admitted in evidence as Exhibits.

The Exhibits put forth by the Plaintiff are as follows:

1. Power of Attorney dated 1/7/2004 (Exhibit A)
2. Power of Attorney dated 2/7/2004 (Exhibit A.1)
3. Record of Data Base for Trade Mark ARIEL Page 16 of which contains particulars of Registration in Germany (Exhibit B)
4. Certificate of Registration of ARIEL Trade Mark in Nigeria No. 21233 (Exhibit B.1)
5. Certificate of Renewal of registration of the Trade mark ARIEL in 1976 (Exhibit B.2)
6. Certificate of renewal of Registration of the Trade Mark ARIEL in 1990 (Exhibit B.3)
7. Sachet of the Plaintiffs ARIEL detergent (Exhibit C)
8. Magazine picture of ARIEL AUTOMATIC (Exhibit C.1)
9. Copy of TIME MAGAZINE of 12/4/1984 (Exhibit C.2)
10. Copy of TIME MAGAZINE of 26/3/1984 (Exhibit C.3)
11. Carton of ARIEL and Device (Exhibit C.4)
12. Poster of ARIEL and Device (Exhibit C.5)
13. Certified copy of Certificate of registration of ARIEL dated 27/3/85 in the name of the 1st defendant (Exhibit D)
14. Certificate of Reward of registration of trade mark No.46673 (Exhibit D.1)
15. The 1st Defendant’s product NEW GLOBAL ARIEL (Exhibit E)
16. 1st Defendant’s product ARIEL DETERGENT POWDER (Exhibit E.1)
17. The Book “Jewel of Nigeria Commerce” (Exhibit E.2)
18. Acceptance Form for Atomium Design (Exhibit 8.40
19. NAFDAC Certificate of registration No. 020757 in respect of ARIEL POWER DETERGENT dated 8/5/1998 issued to Procter and Gamble Nigeria Limited (Exhibit 8.5)
20. Certificate of registration of ARIEL Automatic tendered by the Plaintiff through DW1 during cross examination.

The Exhibits put forth by the 1st Defendant are:

1. Trademarks Journal No. 24 Vol. 14 of August 1988 (Exhibit F)
2. Product of the 1st Defendant i.e. NEW GLOBAL ARIEL (Exhibit G)
3. Way bills and Sales Invoices which the 1st Defendant used in selling and distributing its products (Exhibit G.1)
4. Trade Mark Journal No.1 Vol. 3 of 4/1/2000 P. 125 wherein Plaintiff applied to register Atomism as a trade mark (Exhibit H)
5. Copy of the opposition filed by 1st Defendant Agent against registration sought by the Plaintiff of Atomium Device (Exhibit H.1)
6. Trade Marks Journal No. 1 Vol. 1 of 10/6/2002 Page 43 wherein Plaintiff applied to register Atomium with AERIAL as a Trade Mark on 15/7 /98 (Exhibit H.2)
7. Copy of 1st Defendant opposition to registration of Exhibit H.2 filed by the 1st Defendant (Exhibit H.3)
8. Copy of Trade Marks Journal No. 5 Vol. 5 of November 2002 Page 44 wherein Plaintiff applied to register Atomium Device (Exhibit H.4)
9. Copy of opposition to registration of Exhibit H.4 by 1st Defendant (Exhibit H.5)
10. Fax letter dated 26/2/02 from the Regional Manager West & East Africa of Procter & Gamble addressed to DOYIN INDUSTRIES for the attention of Prince Dr. Samuel Adedoyin. – Exhibit J.

The Plaintiffs case is that it is the proprietor of the trade mark ARIEL which it invented since 1921 and that the mark is associated with Atomium Device in respect of detergents, bleaching preparations and other substances for laundry use manufactured and sold worldwide. It has registered over 600 different ARIEL related marks in 120 countries including Nigeria. It has extensively advertised goods branded with the ARIEL mark in the International press including Nigeria and by way of circulars to the trade magazines. It registered ARIEL as a trade mark in Nigeria in December 1969 as evidenced by the Certificate of Registration No. RTM 21233 of 3rd December 1959 (Exhibit B.1).The registration was duly renewed at due dates in 1976 and 1991 respectively (Exhibits B2 and B3).

As the registered Proprietor of the ARIEL trade mark, the plaintiff is said to have used the trade mark since 1969 to date in relation to goods indicating a connection in the course of trade between the goods and itself as proprietor within and outside Nigeria as buttressed by Exhibits C, C1, C2, C3, C4 and C5.

The Plaintiff, in order to further secure its trade marks, applied in 1990 for the registration of Atomium Device which it regularly used in association with its ARIEL trade mark. The 2nd Defendant issued to the Plaintiff an acknowledgment and Acceptance form under No. TP 9509 indicating the acceptance of its application. (Exhibit 84)