TREBOR NIGERIA LTD (PLAINTIFFS)
v.
ASSOCIATED INDUSTRIES LTD (DEFENDANTS)
(1971) All N.L.R. 468
Division: High Court
Date of Judgment: 29th May, 1972
Case Number: SUIT NO. K/127/7
Before: Jones S.P.J.
Civil Action.
HELD:
(1) The black elephant was distinctive: there was no infringement of trade mark.
(2) In "passing-off" actions the relevant market is that in which plaintiff has established reputation.
(3) Plaintiff had established reputation in Nigeria and although the jurisdiction of the court was limited territorially to Kano State the relevant market it must consider was the whole of Nigeria, but no further.
(4) Polo mints were not sufficiently similar nor sufficiently widely marketed in Nigeria to affect plaintiffs' case.
(5) Trade custom outside Nigeria was not relevant.
(6) Reputation could be injured by passing-off even though the consumer did not know or care who manufactured the article.
(7) Get-up does not include items of utility value but can include their design and mode of use.
(8) Evidence of actual deception is not necessary.
(9) Evidence of persons who have not been deceived is of little weight while evidence that nobody is deceived is bound to be untrue because it is outside the experience of any man.
(10) Evidence of intention is not directly relevant because the issue is not whether the passing-off was intended but whether it is likely to succeed.
(11) Trade custom cannot be established when a manufacturer has a monopoly, but only when different manufacturers use similar features in the same market. The same considerations apply to the question of whether a name has become "publici juris."
(12) A judge must take the evidence into account especially as to the mentality of the average consumer but ultimately he must decide on his own view of the products whether they are likely to be confused by the average consumer of normal senses viewing them not side by side but separated by time and space.
(13) In the present case the general get-up, despite the different animal trade mark, was so similar that the average consumer would be likely to be deceived. The claim for passing-off succeeded.
(14) An injunction would be granted as prayed. Damages would be assessed by an assessor agreed by the parties, and an order for damages and costs made thereafter.
Judgment for Plaintiffs.
Cases referred to:
Distilleerderlj En Alcoholfabrick "De Papegaai" Voorlileen
Van Berckel & Co., of Van Leeuwenhoeksingle, Deflt, Holland v. Netherlands Distilleries of No. 1, Wateringscheweq, Deleft, (1927) 8 NLR. 48.
G.B. Ollivant case 6 NLR 102.
Reedaway v. Banham 1896 A.C. 199.
De Facto Works Ltd. v. Odumotun Trading Co., 1959 LLR 33.
White Hudson Co. Ltd. v. The Asian Organisation 1965 RPC. 45.
Parker Knoll Ltd. v. Knoll International Ltd. 1962 RPC 265.
F. Hoffmann-La Roche & Co. A.G. & anor. v. D.D.S.A. Pharmaceuticals Ltd. (1972) RPC 1.
J.B. Williams Co. v. H. Bronnley & Co. Ltd. 26 RPC 765.
Schweppes Ltd. v. Gibben 22 RPC 601.
John Haig & Co. Ltd. v. Forth Blending Co. Ltd. 1953 RPC 259.
Hedge v. Nicolls (1911) A.C. 693.
T. Oertli A.G. v. E.J. Bowman Ltd. 1957 RPC 388.
Re Christianson's Trade Mark 3 RPC 54.
Bryant & May v. United Match 50 RPC 12.
Singer Manufacturing Co. v. Loog 18 Ch.D 410.
Gottschalk Ltd. v. The Spruce Manufacturing Co. 1 FSC Sel. J. 42.
CIVIL ACTION
SUIT NO. K/127/7
G. Bentley (with him, J.B. Majiyagbe) for the Plaintiffs.
D. Garrick (with him, O. Quin) for the Defendants.
Jones, S.P.J.:-This is an action by Trebor (Nigeria) Ltd. the makers of Trebor Peppermints and other confectionaries against Associated Industries Limited, the makers of Minta Supermints. Plaintiffs claim that defendants have infringed their trade mark which was registered as No. 15816 on the 6th May, 1964. Exhibit 4 is a certificate of registration. It is not disputed in the evidence that while plaintiffs have been marketing Trebor Peppermints for many years and have been manufacturing them locally since 1963, defendants did not manufacture and market Minta Supermints or any other peppermint until about November, 1971. When they did, plaintiffs claim that they used a wrapper for their rolls of mints sufficiently similar to the Trebor wrapper to constitute an infringement of the trade mark. In the alternative, and this is really the substance of this case, plaintiffs claim that defendants are guilty of passing off their products as that of plaintiffs.
I can deal with the claim of infringement of trade mark very quickly. Trebor's trade mark consist of the word "Trebor" and a lion which shows up as a light grey colour on the representation attached to this certificate of registration. On the Trebor Mint roll it is a gold colour, but no claim to the exclusive use of any colour is made in the registration. The background to the trade mark is black. The remainder of the wrapper is made up of the words "extra strong" "peppermints" and "containing genuine oil of peppermint." The right to the exclusive use of those words is disclaimed in the registration. They are on a light grey background in the representation attached to the registration. This background is in fact green on the wrapper containing the roll of mints but no exclusive right to any particular colour is claimed though the whole wrapper is registered. Nowhere on defendants' mints is a lion or a golden animal or the word "Trebor" or any word similar to the word "Trebor". Instead an animal which is clearly an elephant and is printed in black appears six times together with the word "Minta". The descriptive wording is similar but is not the same and I cannot find any reasonable possibility of confusing the two trade marks. (I use the word "trade mark" as well for the defendants black elephant and the word "Minta" as for the plaintiffs gold lion and the word "Trebor" although there is no evidence that the elephant and "Minta" are in fact registered trade marks. However there is both defence evidence and the evidence of 1 P.W. that defendant parent company P.Z. Ltd. has for some years used and become associated with an elephant as a trade mark on many of the goods which it manufactures and markets though D.W.1 qualifies this association by limiting it to "the trade," "the distributor" and "P.Z.'s own customers", and I am inclined to think this nearer actuality).
Added to this there is evidence on both sides that these marks are referred to by a wide section of the public in the North of Nigeria as "Maizaki" and "Maigiwa", "Zaki" and "Giwa" meaning in Hausa respectively lion and elephant. There is no suggestion that the two marks are lumped together in a generic term such as "animal" or "wild beast", in the same way as the term "bird" was used to describe both trade marks one of which was a parrot and the other a toucan in the case Distilleerderij En Alcoholfabriek "De Papegaai" Voorlileen Van Barckel & Co., of Van Leeuwenhoeksingle, Deflt, Holland v. Netherlands Distilleries of No. 1 Wateringscheweq, Deleft, Holland (1927) 8 NLR. 48 or as in G.B. Ollivant & Co. Ltd. v. John Christian & Co. 6 NLR. 102 in which two differently armed men on horseback were known generally in the market as "Maidoki" (Horseman). I find therefore that the claim of infringement of trade mark fails.
The claim for damages for passing-off cannot be so easily decided. The principle was clearly stated by Lord Halsbury L.C. in Reedaway v. Banham (1896) A.C. 199 at 204 when he said,
"For myself, I believe the principle of law may be very plainly stated and that is, that nobody has any right to represent his goods as the goods of somebody else."
The plaintiffs originally drew the attention of the defendants to their belief that the label under which the defendants intended to market their brand of peppermints was by reason of colour and size likely to result in the passing-off of defendants product as that of plaintiffs in a letter dated 24th March, 1971, a copy of which has been admitted in evidence as Exh. 6. The main defence to this claim is contained in defendants' reply to that letter. This is Exh. 7. In this defendants averred that despite similarity of colour the two wrappers are quite distinctive and that they honestly believed that there was no likelihood of any similarities in the wrapper leading to any confusion between the two brands in the public mind. The claim and defence extend beyond the wrapper itself and include the size of tablets: size of roll, the materials used for packing both the rolls and the packets, the methods used for packing, the quantities and the general get-up of packaging at every stage of distribution.
Paragraph 14 of the amended statement of defence contains a defence which goes to plaintiff's right to bring this action. This states:-
"That plaintiffs are barred by laches and acquiescence from maintaining this action because they have allowed without complaint the sale of a mint known as 'Polo' since 1965 which mint is sold in a get-up similar to that of plaintiffs."
Defendants have not pressed this point. Mr Garrick for defendants did not raise it in cross-examination of plaintiffs' main witness, the Chief Executive of Trebor Nigeria Ltd., Mr Cubin, 1 P.W.; nor did he mention it in his address to the court. This may have been because it was one of the last points dealt with by 1 P.W. at the end of the examination in-chief and Mr Garrick may well have thought that that evidence dealt adequately with this defence. This is what 1 P.W. said:-
"We have taken no proceeding against Polo because they are sold in rolls which can be clearly distinguished from Trebor. The wrapper contains no gold colouring and the green, white and black are in different colour weights. The rolls are in different sizes and they are sold in a display carton instead of our polythene bag. I have not seen Polo being sold widely in Nigeria. They are sold mainly in supermarkets. They are displayed thus (here witness demonstrated a box with the lid folded back). One of the main reasons Polo does not sell widely is its high price, and the tablet is too small. The centre hole is taken as not good value for money and the flavour is too mellow. It is no threat to our sales."
Exhibit 22 is a roll of Polo mints with one mint missing. It is slightly smaller than the Trebor roll and the word Polo is printed in very large letters with the "O" in white so that it immediately strikes the eye. Plaintiffs' failure to bring a passing-off action against the maker of "Polo" mints has in my view been completely justified. They are not guilty of laches or acquiescence.
I now come to the main body of the claim. This case has been well presented by Mr Bentley for plaintiffs and Mr Garrick for defendants.
At the end of the case both Counsel addressed me helpfully and at length. Many of the cases cited were common to both addresses. In particular, the case De Facto Works Ltd. v. Odumotun Trading Co. 1959 LLR. 33. In that case, in a carefully considered judgment, Coker J (as he then was) discussed the principles on which in a passing-off action the issue of likelihood of deception can be resolved. It seems to me that there is little necessity to go beyond the dicta in that case in considering the law applicable to present case. Nevertheless, I would not be doing justice to the full arguments and authorities submitted by both Counsel if I were to fail to consider further relevant cases which they have brought to my attention.
The detailed complaint of plaintiffs is contained in paragraphs 3 to 10 inclusive of the statement of claim. These paragraphs read as follows:
3. For upwards of twenty years peppermint tablets manufactured or sold by the plaintiffs and their predecessors have been sold in cylindrical rolls bearing a distinctive label in substantially the form of the said Trade Mark, the said label being printed in a combination of the colours, white, black, green and gold, and which combination of colours together with the picture of a lion have become distinctive of the get-up and general lay out of the plaintiffs said product.
4. The said rolls each containing 16 tablets also contain aluminium foil as packaging material and are marketed in packs of twelve divided into two layers by a strip of thick cardboard or thick paper all contained within a polythene cover or bag, and 32 of such packs are contained within one carton.
5. The plaintiffs and their predecessors have in Nigeria manufactured and sold very large quantities and by reason of the matters averred in paragraphs three and four hereof the said carton roll label and pack have become very well known and distinctive of the peppermint tablets of the plaintiffs and none other.
6. The said peppermint tablets are known widely in Kano State as "Minti Mai Zaiki" or "Trebor Minti Mai Zaki" or "Minti Trebor" or "Minti Trebor Mai Zaki."
7. The defendants are a company incorporated in Nigeria and having their Registered Office at Aba, East Central State and have since the month of November 1971 carried on business there, at and elsewhere in Nigeria as manufacturers of and dealers in peppermint tablets.
8. The defendants have since the registration of the said Trade Mark-the registration of which has been well known to them at all material times-and before the issue of this Writ put upon the market and sold in Kano State peppermint tablets not of the plaintiffs manufacture or merchandise in boxes, packs and rolls and with labels which are a colourable and deceptive imitation of the said well known boxes, packs, rolls and labels of the plaintiffs and in particular:-
(a) The cartons of the defendants hold 32 packs-the same number as do the cartons of the plaintiffs.
(b) The packs are wrappers of polythene, each containing twelve rolls divided into two layers of six rolls, as are the plaintiff's packs-and the two packs are identical in shape and size and the same use is made of the polythene container.
(c) The rolls of peppermint tablets manufactured and sold by the defendants are of the same shape, dimensions and quantity of tablets as those of the plaintiffs, and identical use is made by the defendants of aluminium foil.
(d) The defendants have used the same combination of colours as have the plaintiffs, which fact Solicitors acting on behalf of the defendants have admitted by a letter dated the 29th day of June 1971 addressed to the plaintiffs Solicitors.
(e) The defendants label bears the picture of an animal printed in virtually the same size and a similar pose to that of the animal depicted on the plaintiff's label.
(f) The printing on the defendants label is in the same colour combination as that on the plaintiff's label.
9. By reason of the matters averred to in Paragraph 8 hereof the defendants' said product has become known in Kano State as "Minti Mai Giwa" or "Minti Mai Giwa Trebor" or "Minti Trebor Mai Giwa" or "The New Trebor".
10. The use by the defendants of their said boxes, packs, rolls and labels in connection with peppermint tablets not of the plaintiffs manufacture or merchandise is an infringement of the plaintiffs said Registered Trade Mark and is calculated to lead and has in fact lead to deception and to the belief that the defendants peppermint tablets are the peppermint tablets of the plaintiffs manufacture and is further calculated to cause and must have caused peppermint tablets not of the plaintiffs manufacture or merchandise to be passed off as and for the peppermint tablets of the plaintiffs and the plaintiffs have and will suffer damage.
The allegations in paragraph 8 have been substantiated in evidence and are not denied in defendants' evidence except to the extent that it is not admitted that the animals depicted on the two wrappers are similar or that the colour combinations are the same.
The exhibits are before me. These consist of a polythene bag of 12 rolls Trebor mints Exh. 1; a cardboard carton of Trebor Peppermints containing 32 such bags, Exh. 2; a quarter of a roll of Trebor mints Exh. 3; this quarter has been put in evidence because this is the way many petty traders sell these mints (evidence of 1 P.W. which I believe). Then there is a bag of 12 rolls of Minta Supermints, defendant's product, Exh. 5; and a cardboard carton of Minta Supermints containing 32 such bags, Exh. 10; a single roll of "Minta Supermints" Exh. 14; and a single roll of Trebor peppermints Exh. 15; a cardboard divider used in the Trebor polythene bags Exh. 16; and one used in the Minta polythene bags, Exh. 17. Some other brands of peppermints put in by defendants through 1 P.W. for comparison with the open packet of Trebor mints, Exh. 18: they are: Exh. 19 an open packet of Minta; Exh.20, an open packet of Trebor mints made in U.K.; Exh.21, an open roll of Carton mints; Exh.22, an open roll of Polo mints; Exh.23, an open roll of Sharps mints. These were put in to show that the colours white and green are common to the trade and that the colour green is widely associated with mint products. This was conceded by 1 P.W. and he also conceded that all these Exhs.18-23 use aluminium foil and that Exhs.21-22 use black while Exh. 21 also uses gold. This witness also conceded that the colour green used on the Minta wrapper is a different shade from that on the Trebor wrapper and the black elephant on Minta makes a striking impact against the green on Exh. 14.
Exhibits 24-30 inclusive are photographs of peppermints for sale on counters in Kano market. The significance of these photographs is that three of them, that is to say, Exhs. 24, 25, 27 show clearly Minta and Trebor stacked together. In fact it is clear that this represents two stalls only, Exhs. 24 and 27 being photographs of the same stalls. These photographs also show other products such as Cafenol and Kettle tea where each brand is stacked separately. This is significant because there is a strong preponderance of evidence-for example, the evidence of 9 D.W., Mrs Sabina Thomas, the trader who came from Ebute Metta to give evidence-that it is usual to stack products and brands separately to avoid confusion and to make the job of the store-holder easier. Exh. 31 is a packet of Vival peppermints.
Exhibit 32 is a carton containing a large number of brands of peppermints. Its main significance is the preponderance of the use of the colours white, green and black. Exhibit 33 is a carton containing a number of brands of mint flavoured sweets. Again the colour green is preponderant.
Exhibit 34 consists of eight small packs of blue, the substance used in washing white cloth materials. These are six different brands and the six small packs are almost identical in size and shape. They are identical in colour and they are distinguished only by their different labels. The colour is explainable by the writing "Ultramarine Blue" on the label of five of them.
Similarly, Exhs. 38-49 inclusive consist of tins of tomato paste. These tins are not of identical sizes but they are very similar. All but Exh. 38 which is a white-metal tin are of yellow metal (Exh. 39 and 42 have a white metal base). The labels are painted on them and the basic colour of them all is red. Except for Exhs. 39, 40 and 44 gold is also used. In Exh. 39 alone silver lettering is used. Exh. 39 was produced by the 9 D.W. Mrs Thomas as a tin of P.Z. Ltd. tomato paste, that is to say the product of the defendants. I hesitate to place weight on a fact not averted to in the evidence, but I cannot help noting in passing that by the silver lettering, defendants have clearly chosen to distinguish their product from those of their competitors in the tomato paste market. Exhibits 40 and 44 make use of white and green instead of metallic colour.
The position of the defendants with regard to the Exh. 34 and Exhs. 38-40 is firstly that there are two groups of products containing many different brands. The get-up of each brand within each group is extremely similar and yet there is evidence that the customers are not confused (9 D.W., Mrs Thomas). Mr Bentley has submitted that this is quite a different matter. He says that the public have known the similarities in the tomato paste tin of old and looks specially for a distinguishing mark. The brands are also stacked separately. On both these points he has the support of 9 D.W., Mrs Thomas. The same argument would apply to the boxes of "blue".
Secondly these brands of tomato paste and blue are examples of trade custom. In this respect the defence would have me say that they are comparable with Exhs. 32 and 33. These two Exhs. show a vast number of peppermint-flavoured products all using the colour green and all using the colour white except for "Aero peppermints bar" and "Tobler mint chocolate bar" and "Mintola chocolate peppermint cream." Exhibit 33 contains nine rolls of peppermints none of which is made in Nigeria. Two of these are "Trebor" mints and of these two, the one marked No.3 alone according to the unrebutted evidence of Mr Williams, 3 P.W., has been on sale in Nigeria. Mr Bentley submits that the condition of the market outside Nigeria is not relevant to this action.
He has cited the case of White Hudson Co. Ltd. v. The Asian Organisation 1965 RPC 45. That case went to the Privy Council. It was a matter of passing off sweets in a red-coloured wrapper in Singapore. Lord Guest said this:
"An attempt was made by the defence to show that the red-coloured wrappers were common to the trade, this attempt fails as it was clear on the evidence that prior to 1953 no wrapper similar to that used on the plaintiffs sweets had ever been used whether medicated or otherwise in Singapore and from 1953 to 1958 the plaintiffs sweets were the only sweets so wrapped which were sold in Singapore."
Lord Guest also delivered a judgment in Parker Knoll Ltd. v. Knoll International Ltd. 1962 RPC 265. He said there, at p. 288 that appellants, Knoll International Ltd., claimed the right to sell furniture in England under the trade names "Knoll" and "Knoll International"
"in virtue of the fact that their name was Knoll International and that their furniture had for a number of years been sold in other countries under the trade marks.. These considerations are, in my opinion, irrelevant in deciding the legitimate scope of the appellants' trading activities in this country" (my italics).
In the present case between at the latest 1963 and to the end of 1971 plaintiff's peppermints were virtually the only peppermints on the market in Nigeria using the type of wrapper which can be seen in Exh. 15. As I have already mentioned, I consider the very limited market of "Polo mints" to have no practical significance. In De Facto Works v. The Odumotun Trading Co. (above), the territorial limitations of such an action was similarly stressed. I therefore accept Mr Bentley's submission that proof of a trade custom outside Nigeria is not relevant to the question whether there is a likelihood of defendant's products being mistaken for that of plaintiffs in Nigeria.
I think it is reasonable for me to consider the market in the whole of Nigeria. However, it has to be remembered that it is in Kano State that the acts complained of were done and are being done and that the territorial jurisdiction of this Court is limited to Kano State. It might therefore be said that in considering passing off I should limit the market to Kano State. I have not been addressed on this point, but I think I can give a firm opinion that to so limit the market would be wrong. The issue is basically a factual and practical matter. People come and go from State to State. Advertising is not confined to State limits. Newspapers and television and radio have regional and national coverage. The market I am considering is the practical market. By that I mean the market in the framework of which sales are affected. I am not concerned with the state of affairs in Australia or Alaska, but I am concerned with market which extends beyond Kano State. It has been suggested by the evidence of 2 D.W. that I should consider the whole of West Africa to be within my terms of reference. I do not think that can be correct. I do not think the Kano public has any practical connection with the peppermint market in Ghana or Guinea. The relevant market for practical purposes is Nigeria. And because that is the practical market, that is in my view the relevant market in this case.
It is, then, clear that in deciding this, the relevant market is the market in which the goods which might be so mistaken are sold. There may be many other markets where there would be no possibility of confusion. It is extremely unlikely in the light of Exhs. 32 and 33 that plaintiffs would even contemplate bringing this action in Europe. That is beside the point. Trade custom may be used as a defence only when certain things are common to two or more manufacturers. Clearly it cannot arise out of a monopoly and for practical purposes and for the purposes of this action plaintiffs have enjoyed a virtual monopoly for this product in Nigeria, the only relevant market. This monopoly situation prevents the establishment of any trade custom in peppermints in Nigeria. Indeed it is more likely to establish reputation (see Hoffman-La R<