Virgin Enterprises Ltd V. Richday Beverages Nig. Ltd (2009)

LawGlobal-Hub Lead Judgment Report

REGINA OBIAGELI NWODO, J.C.A.

The Plaintiff in the High Court commenced a suit by writ of summons and statement of claim dated 29 October 2003 praying for the following reliefs under paragraph 12 of the statement of claim:

(a) An injunction to restrain the Defendant, whether by its directors, officers, 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 Plaintiffs registered trade mark No. 55476, by using the word VIRGIN in connection with the production, and sale of bottled water not of the Plaintiff manufacture or merchandise.

ii. Passing off or attempting to pass off or causing or enabling others to pass off bottled water branded as VIRGIN, not produced by the Plaintiff as and for a product of the Plaintiff.

(b) Obliteration upon oath of the word VIRGIN or any colourable imitation thereof upon all articles or labels the use of which bearing the word VIRGIN would be a breach of the first injunction prayed for and verification upon oath that the Defendant no longer has in its possession custody or control articles so marked.

(c) An inquiry as to damages.

(d) Costs.”

Briefly the facts as stated in the pleadings are as follows. The Appellant is a company incorporated in the United Kingdom and having its registered office at 120, Campden Hill London, England. He is also a member of a group of companies described as “The Virgin group of Companies” founded by Sir Richard Branson with names starting or incorporating the word “Virgin”. The Appellant is the registered proprietor of the trade mark “VIRGIN” registered under No. 55476 in Class 32 in respect of Beer, ale, porter, mineral, aerated waters and other non alcoholic drinks, syrups and other preparation for making beverages. The Appellant and other companies in the Virgin group of companies have extensively used and advertised the trade mark VIRGIN in many countries including several other trade marks incorporating the word VIRGIN including diverse commercial endeavours such as operation of Virgin Atlantic airline and manufacture and marketing of “Virgin Cola”. The Appellant have also adopted the red colour as their colour with the trade mark “VIRGIN” used in colour red or white colour against a red background. The Defendant/Respondent is a company incorporated in Nigeria, the producer and marketer of bottled water branded as “Virgin Table Water”. The Respondent since the registration of the Appellant’s trade mark has produced and placed in the market table water bearing a label containing the word Virgin. The Respondent had applied in 1999 to the Federal Ministry of Commerce and Tourism for registration of “VIRGIN” table water “bottled” as a trade mark and was issued with acceptance letter. The Respondent registered the Virgin water “Bottled” with NAFDAC and has been selling the product all over the country since 1999.

The Appellant grouse is that the word “VIRGIN” is the most prominent and distinctive word on the label of the Respondents product as it is printed in red, thus positioning prominence of the word “VIRGIN” in the label which indicates that it is used as the trade mark of the product and that the use of the word “VIRGIN” in connection with bottled water not of the Plaintiffs manufacture is an infringement of the Plaintiffs registered trade mark and calculated to lead to deception and to the belief that the Respondents bottled water is the product of the Plaintiff and have caused the bottled water of the Appellants merchandise to be passed off as and for a product of the Appellant and that they have suffered and will suffer damages.

Consequent on which they filed the suit in the lower court.

Pleadings were filed and exchanged. The Plaintiff called one witness that testified as PW1 and the Defendant also called one witness the D.W.J. The two learned counsels addressed the court on 31st January 2005. The trial judge delivered a considered judgment on 15th April 2005 held:

“It is my view that the Plaintiff has failed to established that the Defendant’s bottled table water is calculated to deceive the purchase to believe that they are buying the virgin table water of the Plaintiff and I hold that the Defendant’s virgin bottled table water does not infringe the Plaintiffs registered trade mark. And in the absence of any threat or possibility that infringement will be commenced, continued or repeated, this court will not interfere with the manufacture and sell of the Defendant’s virgin bottled Table Water.

Consequently, the Plaintiffs claims are accordingly dismissed”