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Mohammed Lawal Garba
Helen Moronkeji Ogunwumiju
Ibrahim Mohammed Musa Saulawa
Adamu Jauro
Justices, Supreme Court
SC.181/2009
Between
1. INTERNATIONAL TOBACCO NIGERIA LIMITED
2. OLOLADE OGUNNIYI
3. RONKE OGUNNIYI
APPELLANTS
4. JOHANN WILHELM VON. EICKEN GMBH INTERESTED
PARTY/APPELLANT
And
1. BRITISH AMERICAN TOBACCO NIGERIA LIMITED
2. BENSON & HEDGES (OVERSEAS) LIMITED RESPONDENTS
(Lead Judgement delivered by Honourable Mohammed
Lawal Garba, JSC)
Facts
The 1st Appellant is the distributor of the “Tradition” brand of
cigarette, manufactured by the Interested Party, in Nigeria.
The 1st Respondent on the other hand is the distributor of the
“Benson and Hedges” cigarette brand, manufactured by the
2nd Respondent. The Respondents instituted an action against
the 1st – 3rd Appellant before the Federal High Court, in which
they claimed that the colour “gold” in the packaging of the
Tradition cigarette constituted part of the 2nd Respondent’s
registered trademark on its “Benson and Hedges” cigarette
brand and this infringed the Respondents’ exclusive right to
the registered trademark.
The trial court in its judgement held that the colour “gold”
constituted part of the 2nd Respondent’s registered
trademarks No. 607222, and which by reason of long or
extensive use of the “Benson and Hedges” gold coloured pack
had also become distinctive or synonymous with the Benson
and Hedges cigarette brand; and as the proprietors, their right
to the exclusive use of the trademark had been infringed upon
by the Appellants’ “Tradition” cigarette.
In an appeal filed against this decision at the Court of Appeal,
the Court of Appeal affirmed the findings of the trial court.
Dissatisfied, the Interested Party (Appellant), who did not
participate in the proceedings before the trial court, appealed
to the Supreme Court as an interested party, pursuant to the
leave of court granted to it.
Issue for Determination
The Supreme Court considered the following issue, in its
determination of the appeal:Whether the Court of Appeal was right when it upheld the
findings of the trial court that the colour “gold” constituted part
of the Respondents’ trademarks on their “Benson & Hedges”
cigarette brand, and the sale of the Appellants’ “Tradition”
cigarette brand packaged in a gold-coloured pack infringed the
Respondents’ trademarks.
Arguments
Counsel for the Appellant argued that by Section 16 of the
Trademarks Act, in order for a colour or colours in which the
representation of a trademark appears, to be deemed as
having been registered as part of the trademark, the
trademark must have been limited to the particular colour or
colours. He argued that, in so far as there is no statement of
colour limitation on any of the copies of the certificates of
registration of the Respondents’ trademarks, or in the extracts
of the register of trademarks admitted in evidence at trial,
neither the Trademark No. 60722 or any other trademark
claimed by the Respondents was limited to the colour “gold”,
or to any other colour, and so the colour “gold” was not
registered as part of what was registered in any of the said
trademark registrations. In further argument, he posited that
where there is no evidence that a trademark is limited to the
colour in which it was registered, the colour cannot be deemed
to be part of what was registered, and if any component of a
registered trademark is not deemed as what was registered, it
constitutes an unregistered trademark for which no action for
infringement of trademark can be sustained. He submitted
further that in an action for infringement of trademark, it is
the registered trademark in the register of trademarks that
should be compared with the alleged offending trademark,
and not the one on the product of the registered proprietor of
the trademark. Thus, in order to determine whether the
“Tradition” cigarettes in a gold coloured pack (“Exhibit F”)
constitutes an infringement of any of the registered
trademarks claimed by the Respondents, Exhibit F must be
compared to those trademarks as entered in the register of
trademarks with all the implications of such entries. He
posited that since the Trademark No. 60722 was not registered
with any colour limitation, the colour of any presentation of
the trademark is immaterial, and does not form part of the
registration, such that it cannot be compared with Exhibit F in
order to determine whether the right of its proprietor has
been infringed by the sale of Exhibit F.
In response, counsel for the Respondents submitted that one of
the prominent features of the Respondents’ registered
trademark No. 60722 on its Benson and Hedges (gold colour
label mark) includes the gold colour, and this entitles the
Respondents to exclusive use of the colour and protection
against infringement. He contended that the findings of the
lower courts were based on the evidence that the gold colour
that appeared on the Trade Marks Certificate of Registration
No. 60722 forms part of components of the Respondents’
Benson & Hedges Trademark which they adopted in packaging
the Benson & Hedges brand of cigarettes in Nigeria, and that
the gold colour of the pack as shown in the certificate has
acquired distinctiveness as a result of long registration,
commercial usage and vigorous advertising from 1973. He
argued further that from the evidence at trial, the colour
“gold” was, for all intents and purposes, part of what was
registered for the other registered trademark of Benson &
Hedges “Turn to GOLD”; hence, the colour is an important
component of the Respondents’ registered trademark, with the
gold colour pack being distinctive of the Benson & Hedges
cigarette brand.
Court’s Judgement and Rationale
In determining the appeal, the Supreme Court referred to the
provision of Section 5(1) and (2) of the Trade Marks Act
that the owner or person for who a trademark is registered and
entered in the Register of Trade Marks becomes the proprietor
of such trademarks, who is given and vested with the exclusive
right to use the trademark in relation to the goods for which it
was registered, as well as protection from unauthorised use and
infringement by other persons in relation to such goods. The
court also referred to its decision in DYKTRADE LTD v OMNIA
NIG. LTD (2000) 7 SC (PT. I) 56 that a trademark when
registered, will entitle the proprietor to use or institute an
action for any infringement of the trademark.
The Apex Court held that from the facts and evidence placed
before the trial court, the Respondents’ registered Trade Mark
No. 60722 “Benson and Hedges (gold colour label mark) and
Trade Mark No. 56629 “Benson & Hedges” (Turn to Gold slogan)
are clearly registered specifically with relation to the colour
“gold” as part and component of the trademarks, and in
addition to the brand name “Benson & Hedges”, to which the
Respondents, as proprietors, are given the right to exclusive use
thereof and protection against unauthorised use and
infringement by any other person, under Section 5(1) and (2) of
the Act; and as a limitation to colour in the trademark as
envisaged under Section 16(1) of the Act. The colour “gold” is
therefore, not just a mere decoration or embellishment, but an
essential feature of the registered trademarks which makes it
different and distinct for the Respondents to be entitled to its
exclusive use as the beneficial owners and proprietors thereof.
On the character of the Respondents’ registered trademarks,
and in considering whether the element of distinctiveness of
the Respondents’ trademark exists in relation to the gold
packaging of their “Benson & Hedges” cigarette brand, the
court relied on its decision in FERODO LTD v IBETO IND. LTD
(2004) 5 NWLR (PT. 866) 317 per Honourable Niki Tobi JSC
that the element of distinctiveness is consonant to and
predicated on some age, by way of long or extensive use. What
constitutes long or extensive use, is a question of fact. It is
certainly not the age of Methuselah. Once the trademark, by
frequent use, has acquired notoriety in the trade to the common
knowledge and common and easy identification of persons in the
trade, it will be said to have acquired the character of
distinctiveness. In other words, the trademark has no hiding
place, so much so that to the eyes of the public, people say with
chorus or union, of course, that is the trademark of XYZ, as it
identified the goods.
Further to the above, the Supreme Court upheld the findings of
the Court of Appeal thus: apart from the fact that gold colour
formed a component of the Respondents’ registered trademark,
the colour had also acquired distinctiveness ascribed to the
Respondents by virtue of their long and extensive use of the
same in the Benson & Hedges cigarettes pack since
1973. Additionally, the promotional adverts of the cigarette
brand which emphasise the gold pack and gold quality of the
cigarette, together with the gold colour and slogan displayed in
the Respondents’ trademarks certificates and Representation
of Trademark contained in the extract which the trial court
took into consideration, all buttressed the distinctiveness of
the colour “gold” to the “Benson & Hedges” cigarette brand.
In determining whether the Appellants’ “Tradition” cigarette
packaged in a gold-coloured pack infringed the Respondents’
trademarks, the court endorsed the findings of the Court of
Appeal that the criterion for determining whether or not there is
an infringement of a trademark, is that the mark complained of
must not, when compared with what is already registered, be
identical with the registered trademark as to deceive the public
or cause confusion in the course of trade – Section 5 (2) of the
Trade Marks Act. Their Lordships held that having perused the
evidence on record of the Respondents’ witnesses, one of
whom testified as a businesswoman who sells cigarettes and
another who testified as a longtime smoker of the “Benson &
Hedges” brand, there was credible and uncontroverted
evidence on the deceiving and confusing similarities of the
“Tradition” cigarettes presentation with that of the
Respondents’ “Benson & Hedges” brand of cigarettes. It follows
therefore that, no other logical conclusion can be arrived at
than the conclusion that the Appellant’s “Tradition” cigarette
pack is practically confusing and deceivingly similar to and
would be mistaken for the Respondents’’ Benson & Hedges
gold specification cigarette pack of cigarette by undiscerning
members of the public, merchants and consumers. The gold
packaging of the “Tradition” cigarette thus, infringes on the
Respondents’ registered Trademark Gold Specification Pack of
Benson & Hedges.
Appeal Dismissed.
Representation
O.F. Olukoya for the Interested Party/Appellant.
Respondents absent and unrepresented.
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