Dike Geo Motors Limited & Anor v. Allied Signal Inc & Anor

This is an appeal against the judgment of the Court of Appeal sitting in Lagos, delivered on 4th May, 2006. The appeal to the Court of Appeal was from the decision of D.D. Abutu J of the Federal High Court, sitting in Lagos, delivered on 13th April, 1999.

Abutu J. had dismissed the interlocutory application of the present Appellants by which they sought an order dismissing the claims of the present Respondents on the ground that the claims are frivolous, vexatious and constitute an abuse of the process of the Court.

On appeal to the Court of Appeal, the decision of Abutu J was upheld and the appeal was dismissed. It is against that decision of the Court of Appeal that the Appellants have further appealed to the Supreme Court.

The facts that led to this appeal are as follows:
The important portions of the pleadings by the Respondent at the trial Court are set out as follows:
a. The 1st Plaintiff is an American company. It was formerly named “Allied Corporation. ” It is the owner of various trade marks described as “Allied and device”, “Bendix and device”, “DBA

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with parallel lines design” and “e5” under which it manufactures and sells brake and clutch fluids for motor vehicles.
b. The 2nd Plaintiff is a French company and a subsidiary of the 1st Plaintiff. It manufactures brake and clutch fluids (hereinafter referred to as “Bendix brake and clutch fluid”) under the trademarks “Bendix and device”, “DBA with parallel lines design” and “e5” owned by the 1st Plaintiff and has been marketing them in Nigeria for several years in distinctively designed black, red and white cans. Members of the public have come to recognize the design of the cans as indicative of their origin from the Plaintiffs.
c. The 1st Defendant is a Nigerian company, engaged in the manufacture, importation and sale of brake and clutch fluid. The 2nd Defendant is its Chief Executive and alter ego.
d. Sometime in 1992, the 1st Defendant started marketing in Nigeria a clutch and brake fluid product branded as “Allied”. The design and marks on the can in which the 1st Defendant’s product was sold are imitative of the design and trademarks on the Plaintiffs’ Bendix brake and clutch fluid cans.
e, The Plaintiffs complain that the

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use by the Defendants of marks and design imitative of the marks and designs on their Bendix brake and clutch fluids cans is calculated to lead and has in fact led to deception and the belief that the. Defendants’ Allied brake and clutch fluid product is the Plaintiffs’ product or originates from the same source as the Plaintiffs’ Bendix brake and clutch fluid.
f. The Plaintiffs therefore claimed against the Defendants for infringement of the registered trade mark “Allied & device” registered variously under No.40189 in classes 1, under No. 40188 in class 9 and under No. 40186 in class 12 as well as the infringement of the trademark “DBA with parallel Lines Design “registered under No. 49735 in class 1. The Plaintiffs also claim for passing-off on the basis of the imitation on the can of the Defendants’ Allied brake and clutch fluid of the design on the Plaintiff’s Bendix brake and clutch fluid can as well as on the basis of the use by the Defendants on their products of the 1st Plaintiff’s trade mark “e5” and “ALLIED”.

The essential facts pleaded in the statement of defence of the present Appellants filed on 12th March, 1996 are as follows:<br< p=”” style=”box-sizing: inherit; margin: 0px; padding: 0px; scrollbar-color: var(–thumbBG) var(–scrollbarBG);”>

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a. That the 1st defendant does not manufacture, but only sells “Allied” brand of brake and clutch fluid.
b. That the 1st defendant purchases the Allied brake and clutch fluid it sells from Dom Frank Nigeria Limited (hereinafter referred to as “Dom Frank”) who are the canners of the product and owners of the trademarks and the design (hereinafter referred to as “Allied and Device”) on the can of the product.
c. That “Allied and Device” trade mark is registered in class 4 in favour of Dom Frank under No. TP 188856.
d. That adoption by Dom Frank of its Allied and Device registered trade mark on the can of “Allied” brand of brake and clutch fluid does not infringe any of the Plaintiffs’ trademarks and has not led to any possibility of deception or the belief that “Allied” brand of brake and clutch fluid is the product of the Plaintiffs or otherwise connected to the Plaintiffs in the course of trade.

Two years and three months, after the registration of the “Allied and Device” trade mark, and three months after trial had commenced and samples of contending products had been tendered in evidence, the Appellants filed a motion dated

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20th January, 1999 praying for the dismissal of the Respondents’ claims on the ground that the claims were frivolous, vexatious and an abuse of the Court’s process. The application was supported by an affidavit sworn to by the 2nd Appellant on 22nd January, 1999.

The essential facts conveyed by the affidavit in support of the motion are that the “Allied and Device” trade mark was registered as a trade mark under No. 53200 in class 4, in favour of Dom Frank on the 8th October, 1996. A copy of the certificate of registration was attached as an exhibit to the affidavit.

Attached to the affidavit as Exhibit B is a notice of opposition filed by the 1st Respondent against the application of Dom Frank to register the “Allied and Device” trade mark. The notice of opposition shows that the application of Dom Frank under No. TP 18856 was published in the trade mark journal of 30th October, 1995, 5 months after this suit was instituted.

The Respondents filed in opposition to the Appellants’ motion a counter-affidavit sworn to by Olufemi Adesola on 15th February, 1999.

In the counter-affidavit, the deponent alleged that the opposition proceedings

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initiated against the application of Dom Frank Nigeria Limited under No. 18856 was terminated under suspicious circumstances. The deponent also brought forward the fact that the 1st Respondent has filed at the trademark registry on 20th November, 1996 an application dated 1st November, 1996 praying for the removal of trademark No. 53200 from the Register of Trademarks.

The learned trial Judge heard arguments for and against the application of the Appellants for the dismissal of the claim of the Respondents. He delivered a ruling on 13th April, 1999, dismissing the application.

The Appellants appealed to the Court of Appeal against the ruling by filing on the 27th of April, 1999 a notice of appeal containing two grounds of appeal. The Court of Appeal delivered its judgment on 4th May, 2006 dismissing the appeal. It is against that judgment that the Appellants have further appealed to this Court by filing a notice of appeal dated the 16th day of May, 2006. The notice of appeal contains only one ground of appeal but with twelve numbered paragraphs of particulars of error.

The Appellants in their brief settled by Femi Oboro, Esq settled a

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sole issue for determination as follows:
Whether the Court of Appeal considered the effect of the provisions of Sections 3, 4, 5(1)&(2), 20 & 38 of the Trademarks Act Cap 436 LFN 1990, on the viability of the Respondents’ claim, in their consideration of the appeal, which was the case of the Appellant.

In the Respondents’ brief settled by Obatosin Ogunkeye, Esq, a sole issue was also identified as stated below:
Taking into consideration the facts and the ground of appeal filed, the sole issue for determination in this appeal is whether by reason of events following the institution of the action, the continued prosecution of the claim of the Plaintiff became an abuse of the process of the Court?

I need to rehash the history of this interlocutory appeal here. The Appeal by motion on notice dated 20/1/1999 pursuant to Or 33 R 1 of the Rules of the Federal High Court sought an order dismissing the suit on the ground that the action was frivolous and an abuse of Court process. Hon. Justice Abutu of the Federal High Court held as follows on Page 3 of the Record:
“The statement of claim dated 23rd February, 1996 and filed

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on the 23rd of February, 1996, in this case, shows that the action in this case is a claim for the infringement of the Plaintiffs’ trademark and for the passing off of the goods of the Plaintiffs. The case of the Defendants/Applicants in this application is that the action is frivolous, vexatious and an abuse of Court process, An action is frivolous when it is based on trifles, trivialities and is lacking in seriousness of purpose and an action is vexatious when it is brought on insufficient grounds and the motive or intention of the Plaintiff is merely to annoy and vex the Defendant. See SODIPO v. LEMMIN-KAINEN O. Y. & ANOR. (1992) 8 NWLR (PT,258) 299 at 242. An action which is an abuse of Court process is an irregular, unusual and precipitate action commenced for the sake of action qua litigation merely to annoy and irritate the adversary and to waste valuable litigation time. See SODIPO v. LEMMIN-KAINEN O. Y. & ANOR (SUPRA) at page 242 and SARAKI & ANOR v. KOTOYE (1992) 9 NWLR (PT. 264) 156. Invariably an action which is frivolous, vexatious and an abuse of Court process has no legal justifiable focus. It is a sham.
The present action

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certainly is not frivolous, vexatious and an abuse of Court process. The contention of the learned Counsel for the Defendants in this case appears to be hinged on the belief that the Defendants have a valid legal defence to the Plaintiff’s claim. The fact that the Defendants have a valid legal defence to the claim does not make the action frivolous, vexatious and an abuse of Court process. The defence is founded on the registration and use of the trademark. This is a matter that can be established at the hearing. I have carefully perused the statement of claim and am of the firm view that the action is not frivolous, vexatious and an abuse of Court process.”

At the Court below, it was held at page 120 of the Record after considering the arguments of Counsel and the decision of the trial Court as follows:
“From the evidence proffered by the Appellants in their application to the lower Court, the above finding is unassailable and cannot be faulted. Whatever defence the Appellants might have to the claims of the Respondent as disclosed in their Statement of Defence which they filed, cannot render the action an abuse of the Court process in the

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circumstances of the matter. The Appellants, instead of the lower Court, were under a gross misapprehension of the provisions of particularly Sections 5, 6 and 20 of Cap. 436 to have filed the motion for dismissal of the Respondents’ claim on the ground they did when they had filed a statement of defence and trial had commenced.”

My Lords, the action before the Federal High Court in simple terms sought two major reliefs namely:
i. Trademark infringement of 5 of the Respondent’s Trademarks (3 Allied and Device TM’s in classes 1, 9 & 12; Bendix and device and a trade mark known as e5).
ii. Passing off by the Appellants of the Respondents’ Bendix packaging and Trade Dress.

Appellants made the following argument in support of these reliefs in their joint Appellants brief as to why the Court of Appeal was wrong. That there is no reasonable cause of action because the Respondents’ trademarks are in different classes (1, 9 & 12) from the Appellants trademark which is class 4.

The pith of the case put forward both at the Courts below by the Appellants is premised on the following facts:
That the trademark in question was

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registered in the name of Domfrank Nigeria Limited as owner, under No. 52300 in claim 4.
That the Respondents had initiated and participated in opposition proceedings to the registration of the trade mark in the name of Domfrank Nigeria Limited.

The submissions for the Appellants on the issue for determination are that in law, an action for infringement presupposes that the Defendants, presently the Appellants alleged to have infringed the Respondents as Plaintiffs’ trademark do not have legal rights to the trade mark in question. Where the Defendant has a right to the trade mark, he should make an application for registration upon which the action for infringement would be stayed. SECTIONS 5, 6 AND 20 OF THE TRADEMARKS ACT, CAP. 436, LFN 1990 (hereinafter to be called Cap. 430) as well as Atkins Court forms, 2nd Edition, Volume 38, 1978 issue, paragraph 24 at page 128 were relied on. According to Counsel for the Appellants, Cap. 436 does not contemplate the infringement action and the application for registration to co-exist in respect of the same trade mark. It was contended that since the Respondents initiated and participated in the

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opposition proceedings that culminated in the registration of the trade mark in the name of Domfrank, its action for infringement against the Appellants, was not viable. It was argued that under Section 13(2) of Cap. 436, it is permitted to use two identical registered trade marks independently and each party claims bona fide. The case of ELECKTROTECHISCHE FABRIK SCHMIDT & CO. OTHERWISE DAIMON-WERKE GMBA v. BATERIA SLANY NARDONI PODNIC (1972) ALL NLR 143 was cited by Counsel who maintained that the Respondents’ claims, were for the reasons given by them, unsustainable against the Appellants. He also referred to the cases of SARAKI v. KOTOYE (1992) 9 NWLR (PT.264) 158 at 188 and NV SCHEEP v. MV “SARAZ” (2001) FWLR (PT. 34) 543 at 589-90 on the concept of abuse of judicial process and insisted that the Respondents’ claim before the lower Court was not viable and was an abuse of the process of the Court.

Counsel submitted that the action before the Federal High Court for trademark infringement became an abuse of Court process the moment, the Appellants’ privy (Messrs Domfrank) accomplished registration of its mark Allied & Device RTM 53200 in Class

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4. Put differently, the Appellants are saying that trademark registration is a complete defence to a trademark infringement action and therefore the Respondents’ action ought to abate in limine and therefore the Appellants’ motion to strike out the suit at the Federal High Court ought to have been upheld by the Court of trial and the Court of Appeal. The Appellants argued that because the Respondents did not appeal against the decision of the Trademarks Registrar and thereafter sought to amend their claim to include rectification while recognizing the compromised and precarious state of the claim, the claim became otiose and the Respondents should have abandoned the claim at the trial. Counsel argued that the Court of first instance lacked jurisdiction to entertain the proceedings regarding the tort of passing off based on the case of AYMAN v. AKUMA (2003) 13 NWLR Pt. 836 Pg. 22 where the Apex Court held that the Federal High Court (FHC) can only entertain a passing-off action flowing from a registered trademark and not a case of passing off simpliciter where the mark is unregistered and the right to relief finds its root.

Again, put differently,

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the Appellants are asserting that the Federal High Court cannot inquire into the passing off claims brought by the Respondents to the extent that the passing-off claim pertains to an unregistered trademark.

The Supreme Court in AYMAN ENTERPRISES LIMITED v. AKUMA INDUSTRIES LIMITED (2003) 44 WRN 44 at Pg. 60-61 per Kalgo JSC, stated issues relevant in an infringement action as thus:
“it is common ground that a plaintiff in an action for infringement must establish his title as a proprietor or a registered user entitled to sue. He must then prove that the defendant has acted or threatened to act in such a way as to infringe the right conferred upon him by the registration of the trade mark under the Act.”

Since it was common ground in the opposition proceedings that the Applicant for registration of the trade mark ‘Allied & Device, ‘e5′, red, black and white colour get-up’, had sought the registration of same for application to brake and clutch fluid and other goods in class 4, the Appellants argued that it would be scandalous, vexatious and abuse of the process of Court, for the Respondents to proceed with this infringement action

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commenced before the opposition proceedings initiated and concluded before the Registrar of trademarks, in respect of the same subject matter of the suit herein because of the provisions of Section 5(4) of the Trademarks Act and the principle of injuria sine damno. The remedy available to the Respondents would be under Sections 21(1)(2) & 38 of the Trademarks Act Cap 436 LFN 1990, which is a rectification action against Domfrank Nigeria Limited, privies to the Appellants as proprietor of the trademarks the subject matter of the suit.

For the Respondents, it was submitted in the brief settled by Obatosin Ogunkeye, Esq that by virtue of Section 56(9) of Cap.436, the proceedings before the Court below could not be unviable by reason of any proceedings before the Registrar of Trade Marks. That Section 13(2) of Cap. 436 and Atkins Court Forms only give the Court the discretion to stay proceedings in an infringement action where a Defendant applies for registration as a concurrent user of the trade mark in dispute if he believes he is so entitled to do so. That the facts of the different cases cited by the Appellant are different from the circumstances of

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this case and so, the above position does not apply here.

In addition, it was argued for the Respondents that the claims before the lower Court were for infringement and passing off of the trademark which was registered only in class 1 under registration No. 49735. That the trade mark registered in the name of Domfrank Nigeria Limited with Registration No. 53200 was for goods in class 4 and the two (2) are different, making the claims of the Respondents viable.

Furthermore, it was submitted that the claim for passing off remains viable and to be decided by the Court below as the registration of a trade mark does not give the right to use it to deceive.

Learned Respondents’ Counsel substantially argued that the registration of a trademark is not a complete defence to an action for trade mark infringement. This is so, particularly if the registered trademark was capable of deceiving or where it was deployed in aid of passing off. Counsel also argued that the decision in AYMAN v. AKUMA (supra) was per incuriam on the basis that prior to the time the decision was handed down, the jurisdiction of the Federal High Court had been extended to cover

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the Tort of passing-off simpliciter in common law as well as any Federal Act which touched on the issue had been extended by reason of Decree 60 of 1993.

Learned Respondents’ Counsel submitted that until the Court of first instance determines whether class 4 is an appropriate class at trial, the Court is not in a position to reach a determination that there is no reasonable cause of action at common law.

OPINION
As stated before, this is an interlocutory appeal against the judgment of the Court of Appeal which confirmed the ruling of the trial High Court to the effect that this action as constituted was not an abuse of Court process. What constitutes an abuse of Court process is not capable of definitive demonstration. It would depend on the facts of each case and is in fact of infinite variety. The term “abuse of Court process” is generally applied to proceedings that are wanting in bonafide, frivolous, oppressive or vexatious. It may also mean the improper use of the Court process which involves malice, deliberateness and desire to misuse or pervert the process of the Court or system of administration of justice to the annoyance or

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embarrassment and irritation of an opponent.
See UWEMEDIMO v. MOBIL PRODUCING NIG UNLIMITED (2022) 2 NWLR (Pt. 1813) 53 (SC); SHERIFF v. PDP (2017) 14 NWLR (Pt. 1585) 212; NWOSU v. PDP (2018) 14 NWLR (Pt. 1640) 532; OGBORU & ANOR V. UDUAGHAN & ORS; (2013)13 NWLR (Pt. 1370)33; ADESANOYE v. ADEWOLE (2000) 9 NWLR (Pt. 127) 671.

I am inclined to agree with the argument of the Respondents in paragraph 6.2.7 of the Respondents’ brief to the effect that as BRAKE AND CLUTCH FLUID are not amongst the goods specifically named in the list of goods or description of goods under class 4 in the 4th Schedule of the Trademarks Act, the contention of the Appellants that they have a right, by virtue of registration, to use their “Allied and Device” trademark in connection with brake and clutch on the one hand, and the Respondents’ claim on the other hand that the use of that trademark in connection with brake and clutch fluid is an infringement of their trademarks registered in classes 1, 9 and 12 constitutes the determination of the class into which brake and clutch fluid falls into a fact in issue before the trial Court. Until that issue is determined,

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it cannot be determined whether or not the Appellants have infringed any of the Respondents’ trademarks. Evidence has to be led to enable the Court to understand the nature of the goods being sold by the Appellants so as to determine whether it falls within the description of any of the description of goods listed in class 4. The Appellants assert that under Section 13(2) of the Trade Marks Act, it is permitted to use two identical registered trade marks independently and each party can claim bonafide. The case of ELECKTROTECHISCHE FABRIK SCHMIDT & CO. OTHERWISE DAIMON-WERKE GMBA v. BATERIA SLANY NARDONI PODNIC (SUPRA). Honest concurrent use of an identical or similar trade mark, by two separate proprietors may occur where cogent and compelling evidence has been led to show the extent of use, sales, how long sales have been going on; were the sales in fact honest? The attempt of the Appellant to rely on honest concurrent use as a basis to assert abuse of Court process is misconceived and premature. Honest Concurrent Use must be proved by cogent and relevant evidence and cannot be established on the basis of an objection taken in limine which is what the

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Appellant is seeking to do here. The proposition can be found in Keriy’s ‘LAW OF TRADE MARKS & TRADE NAMES’ 12th Edition Page 314, Paragraph 15 – 50 where the learned Authors posit as follows: ‘The Courts may refuse to interfere to protect the use of a defective trademark or to assist a trader who is using his mark for the purpose of a fraudulent trade. This principle was well established in the Court of Chancery, and the maxim ex turpi causa non oritur actio is a rule of law’. An additional authority on the same point is the Indian case of N.R. DONGRE AND ORS. VS. WHIRLPOOL CORPORATION AND ANOR 1996 VIAD (SC) 710 where the Supreme Court of India observed that the concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. The Supreme Court of India held that “We see no reason why a registered owner of a trademark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do.”
It therefore follows based on these authorities

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cited, that a trademark registration may not in all cases provide a complete defence to a trade mark infringement action or a passing off action. I have to agree that the mere fact that the Appellants’ “Allied and Device” trademark became registered after the institution of the present suit, does not inescapably doom the claims for infringement of trademark in this suit to failure.

The claim of the Respondents is however not limited to infringement of trademark alone. The Respondents claim as well for passing-off. In respect of the claim for passing-off, the Respondents had submitted before this Court that the mere fact of registration of trademark No. 53200 does not constitute a defence to the claim for passing-off. It has been held that registration of a trademark does not give the owner of the trademark the right to use the trad mark so as to deceive the public into believing that the goods of the owner of the trademark are the goods of some other person.

My Lords, it is important to settle the issue of the jurisdiction of the Federal High Court in relation to the subject matter of the dispute when the cause of action arose in 1995. It

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is important to delve into and settle this tangential but pivotal issue so that the issue of jurisdiction in this case with its chequered history can be resolved on the merit once and for all.
My Lords, the decision of this Court in AYMAN ENTERPRISES LIMITED v. AKUMA INDUSTRIES LIMITED (supra) and the facts therein are that the Appellant in that case sued the Respondent for passing off goods AS and FOR goods of the Appellant or adopting the distinctive get-up, logo, package or label design of the Appellants and infringement of copyright in the artistic work of the Appellants’ trademark. The Respondents filed an application for the Court to vacate all the orders made exparte which was heard together with the pending application for interlocutory injunction. The application seeking to vacate the exparte orders was refused and the application for interlocutory injunction was granted. On appeal to the Court of Appeal, the appeal was allowed and the Court of Appeal set aside the orders made, the Appellant appealed to the Supreme Court and the Respondents cross-appealed, challenging the jurisdiction of the Federal High Court to entertain claims for damages for

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‘passing off’ of an unregistered trademark. This Court held that the federal enactment the Court is concerned with is principally the provisions of the Trade Marks Act 1965 Cap 436 Laws of the Federation of Nigeria 1990. Section 3 of it provides that no person shall be entitled to institute any action to prevent or recover damages for the infringement of an unregistered trademark. The Court also held that the effect of the judgment in PATKUM INDUSTRIES v. NIGER SHOES (1998) 5 NWLR Pt. 93 Pg. 138 is that the Federal High Court will only have jurisdiction to entertain an action for passing off arising from an infringement of a registered mark and the action must have arisen in relation to a federal enactment.
My Lords, the provision of SECTION 2 OF THE TRADE MARKS ACT, 1938 OF ENGLAND, (which is virtually identical to Section 3 of our own Trade Marks Act) has been interpreted to mean that the registration of a trade mark will not be a defence to a claim of passing-off. Thus, Waller J. in ELI LILLY & CO. LTD v. CHELSEA DRUG CHEMICAL CO. LTD (1966) 83 RPC 14 at 18 said:
“Secondly, having regard to Section 2 of the Trademarks Act, 1938, the

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fact that the defendant is using a registered trade mark is no defence to an action in passing-off”
Having said that, it is important, in the circumstances of this case, to look into the issue of the jurisdiction of the Federal High Court to try this case. Jurisdiction is determined by the extant law conferring jurisdiction on a particular Court when the cause of action arises. The Federal High Court exercises appellate jurisdiction over issues of trademark. In NULEC INDUSTRIES PLC V. DYSON TECHNOLOGIES LTD & ANOR (2022) LPELR-57866(SC) (PP. 30-31 PARAS. C) the Court held thus:
“It is, also, the position of the law is that any party seeking to invoke the jurisdiction of the Federal High Court in relation to the registration of trademarks, objection to its registration, removal or revocation thereof, must first have sought remedy from the Registrar of Trademark, before proceeding to the Federal High Court.
Section 56(a) of the Trademarks Act provides that any application before the Registrar of Trademarks is deemed to be an application before the Court or, at best, a Tribunal which, upon hearing and making a decision, is subject to appeal to

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the Federal High Court. In other words, the Federal High Court has appellate jurisdiction with respect to the matters aforementioned. It thus does not have original jurisdiction in relation thereto.”
Ironically, the Appellants have not contended in their Appellants’ brief that registration of their trade mark is a complete defence to a claim for passing-off which is the 2nd head of claim. The response of the Appellants to the issue of continued viability of the claim of passing-off is to challenge the jurisdiction of the Federal High Court to entertain the claim of passing-off. The objection to jurisdiction is contained in paragraphs 5.5.1 to 5.5.4 of the Appellants’ brief of argument. There, the Appellants drew attention to paragraphs of the statement of claim in which the Respondents claimed damages for passing-off related to the imitation of certain of the Respondents’ unregistered trademarks and the design of the can of their Bendix brake and clutch fluid. In support of this objection to jurisdiction, the Appellants relied principally on the decision of this Court in AYMAN ENTERPRISES LIMITED v. AKUMA INDUSTRIES LIMITED & ORS (2003) 13 NWLR Pt.836

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Pg 22; (2003) 44 WRN 44.
Learned Respondents Counsel’s answer to the Appellants’ argument on this point is that AYMAN v. AKUMA was decided per incuriam and this Court is hereby urged to depart from it and hold that the Federal High Court has jurisdiction to adjudicate over the claims of passing-off related to the imitation of unregistered trademarks.
My Lords, it is important to note that the jurisdiction conferred on the Federal High Court by SECTION 251 OF THE 1999 CONSTITUTION OF THE FEDERAL REPUBLIC OF NIGERIA is in addition to any other jurisdiction which might be conferred on the Court by an Act of the National Assembly. Therefore, the jurisdiction of the Federal High Court is not limited to that prescribed in the Constitution.
By virtue of the provisions of SECTION 315 OF THE 1999 CONSTITUTION which deems existing laws in respect of matters within the legislative authority of the National Assembly to be Acts of the National Assembly, the Federal High Court Act 1973 is an Act of the National Assembly. Consequently, any jurisdiction conferred upon the Federal High Court by that Act, which is wider than the jurisdiction conferred upon

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the Court by the Constitution but not in conflict with same shall be validly conferred on the Court. Hence in AYMAN v. AKUMA’s case, this Court did not take into consideration, the jurisdiction conferred by the Federal High Court Act 1973 on the Federal High Court before reaching its decision.
The Respondents have urged this Court to depart from AYMAN v. AKUMA as the decision was reached per incuriam. It is apt to note that AYMAN v. AKUMA was decided with reference to the provision of SECTION 230(1)(f) OF THE 1979 CONSTITUTION as amended by Decree 107 of 1993 and SECTION 7 OF THE FEDERAL HIGH COURT ACT, 1973. The provisions of SECTION 230(1) OF THE 1979 CONSTITUTION (as altered) by Decree 107 of 1993, and SECTION 251(1) OF THE 1999 CONSTITUTION being virtually identical, the decision in AYMAN v. AKUMA regarding the interpretation of SECTION 230(1)(F) OF THE 1979 CONSTITUTION is applicable in the interpretation of SECTION 251(1)(F) OF THE 1999 CONSTITUTION.
A little historical adventure into how Section 7 of the Federal High Court Act, 1973 was promulgated and amended and the correct text applicable to the cause of action is most relevant to

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determine this point in issue. Section 7 of the Federal High Court Act, 1973 was amended by the Federal High Court (Amendment) Decree 1991 (Decree No.60). Though the decree was promulgated on 30th December, 1991, it was suspended two days later by the Federal High Court (Amendment) Decree 1992 (Decree No. 16), promulgated on 1st January, 1992. Subsequently, on 25th August 1993, by Statutory Instrument No. 9 of 1993, 26th August 1993 was appointed as the date on which the Federal High Court (Amendment) Decree 1991 shall come into force.
This Court in its decision in SHELL PETROLEUM DEVELOPMENT CO. (NIG) LTD v. ISAIAH (2001) 11 NWLR (Pt. 723) 168 per Ogwuegbu JSC at Pg. 182, recognized the fact of the amendment of the Federal High Court Act 1973 by the Federal High Court (Amendment) Decree 1991 and applied the amended provisions.
Section 7 of the Federal High Court Act, which this Court considered in AYMAN v. AKUMA (supra), had been radically altered by the amendments introduced by the Federal High Court (Amendment) Decree of 1991. The jurisdiction of the Court was significantly widened. Whereas, no mention was made of “passing-off” in the provisions

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of Section 7 of the 1973 Act, considered by this Court in AYMAN v. AKUMA (supra), in the amendment introduced by the 1991 Amendment Decree, there were provisions concerning passing-off, which are similar to the provisions of Section 230(1)(f) of the 1979 Constitution as amended, which was interpreted and applied in AYMAN v. AKUMA.
Section 7(1)(f) of the Federal High Court Act, as amended by the provisions of Decree No. 60 of 1991 provides as follows:
“7(1). The Court shall to the exclusion of any other Court have original jurisdiction to try civil causes and matters connected with or pertaining to;
(f). any Federal enactment or common law relating to copyright, patents, designs, trade marks and passing-off, industrial designs and merchandise marks, business names and commercial industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards” (emphasis supplied)
An immediately noticeable difference between Section 230 (1)(f) of the 1979 Constitution as amended and Section 7(1)(f) of the Federal High Court Act 1973 as amended by Decree No. 60 of 1991 is that the words “or common law” appears after

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the words “Federal enactment” in the amendment to the 1973 Act.
The insertion of the phrase “or common law” makes it obvious that it was the intention of the legislature at the time the 1991 amendment Decree was promulgated that the jurisdiction of the Federal High Court in respect of actions for passing-off should not be limited to actions arising from Federal enactments relating to trade marks or passing-off, but should extend to common law actions for passing-off as well.
Whatever the intention of the legislature might have been, if it was not reflected in the letters of the law, the Court cannot give effect to it. The words of the Constitution and Decree No. 60 of 1991 are unambiguous. The Court is therefore bound to give full effect to them. Therefore, since 26th August, 1993, the Federal High Court had acquired jurisdiction in respect of claims in passing-off founded on common law principles, as well as arising from any Federal enactment relating to trademarks and passing-off.
Consequently, the Federal High Court has jurisdiction to hear and determine the claim for passing-off contained in the statement of claim filed by the

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Respondents whether or not that claim arises from the infringement of a registered or unregistered trademark.

Having established the jurisdiction of the Federal High Court and its extension to common law Principles of Trademark, I think it is important to set out albeit briefly the powers of the Trademarks Registrar under the Trademarks Act Cap T13 Laws of the Federation and how the Registrar’s decisions can be challenged at the Federal High Court.
The Registrar of Trademarks (‘The Registrar’) under the Trademarks Act Cap T13 Laws of the Federation, 2004 is a statutory office clothed with immense powers and responsibilities under the Trademarks Act hereinafter called the (TMA). The Registrar is the central cog in the grant and administration of trademarks in Nigeria, exercising the power to superintend over the registration process of a trademark, from filing to examination to registration and deploying quasi-judicial powers in several instances.
The significance of this position lies in the fact that trademarks are a business tool which producers and manufacturers of goods and services deploy in placing goods and services in streams

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of commerce based on which they enjoy the benefit of goodwill which is continued patronage and the source of ultimate economic prosperity.
The vast powers of the Registrar mean that recourse must exist for the benefit of parties affected adversely by the Registrar’s decisions, particularly since those powers are deployed in several instances in a quasi-judicial manner and the significant pecuniary consequences of the Registrar’s decision.
The powers and functions of the Registrar include the following:
(i) Control, custody and management of the Trademark Register (“the Register”);- Section 21(1)&(2) of the TMA
(ii) Acceptance and/or Refusal of trademark applications and registration of worthy trademarks;- Sections 18-24 of the TMA
(iii) Superintending over opposition proceedings;
(iv) Determining validity or priority as between competing trademark applications in cases of honest concurrent use;- Section 13(2) of the TMA
(v) The determination and delimitation of the extent of use of a trademark;- Section 18(2) of the TMA. See Commentaries and Analysis on Nigeria’s Trade Marks Act by Mark Mordi, SAN published by

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Verbatim Communications at pages 148- 157
(vi) Publication of the Trademark Journal;
(vii) Suing or intervening in proceedings regarding trademark matters in the public interest; and
(viii) Making references to the Federal High Court under Section 56(2) TMA.
The TMA by Section 18 provides the following instances for the challenge of the decisions of the Registrar by an adversely affected party namely:
(i) An appeal to the Federal High Court against a decision refusing a trademark application;- Section 18(5)
(ii) An appeal to the Federal High Court against a decision of the Registrar in opposition proceedings;- Section 21(1) of the TMA
(iii) An appeal to the Federal High Court against a decision of the Registrar granting an order of cancellation for non-use of a mark;- Section 31(1) of the TMA
(iv) Rectification proceedings brought before the Federal High Court requiring the Registrar to amend the Trademark Register;- Sections 38 & 39 of the TMA
(v) An appeal/ application to the Federal High Court on the basis of an order or directive or exercise of the powers of the Registrar not covered by (i) –

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(iv) above; and
(vi) Administrative law remedies such as Mandamus, Certiorari, for possible infractions of the TMA by the Registrar for which the TMA has provided no specific right of appeal.
These remedies can be activated pursuant to Section 6(6)(b) and Section 251 of the 1999 CFRN.
The Registrar is statutorily empowered pursuant to Section 18(4) of the TMA to accept or refuse a trademark application. Where he elects to refuse an application, a right of appeal is vested in the party who has suffered the refusal pursuant to Section 18(4) of the TMA.
When the Registrar accepts a trademark application, the next step in the registration process is that the mark must be published by the Registrar in the trademark journal. This is to put the whole world on notice of the trademark’s prospective application, thus, any existing proprietor who considers a mark in the journal as being confusingly similar is afforded ample opportunity to object to the prospective proprietor under the aegis of opposition proceedings presided over by the Registrar after due consideration of the evidence and the representations of the parties.

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See Commentaries and Analysis on Nigeria’s Trade Marks Act (Supra) at pages 163-167 on the opposition process.
A party, if dissatisfied with the decision of the Registrar within the context of an opposition, has a right of an appeal conferred on him pursuant to Section 21(1) of the TMA exercisable within 30 days of the decision being handed down by the Registrar. The exercise of the right is usually by way of a Notice of Originating Motion, pursuant to Order 53 of the Federal High Court Rules and the proceedings before the Federal High Court is usually a re-hearing. See again Commentaries and Analysis on Nigeria’s Trade Marks Act (supra) at pages 173-179 on the process and circumstances under which the appeal will be heard by the Federal High Court.
A proprietor of a mark registered but not deployed in the marketplace may forfeit his right to use the mark if the period of non-use exceeds five years. Premised on an application by an adverse party’s intent of using the unused mark; the order for cancellation is usually preceded by a hearing before the Registrar, who makes a determination after representations by the Proprietor. A party dissatisfied with the Registrar’s

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decision cancelling or in some cases refusing to cancel a registration can appeal to the Federal High Court pursuant to Section 31(1) of the TMA.
Rectification Proceedings may be brought by an interested person who takes a view that the Registrar has installed in the Register a proprietor that ought not to be on the register usually by reason of bad faith or the absence of true proprietorship and that the proprietor ought to be struck off from the Register. Rectification may also be deployed when the Registrar has made an entry without sufficient cause, or a wrong, erroneous or defective entry has been made in the Register.
The significance of the analysis of the powers of the Registrar and options of legal recourse open to an aggrieved party stemming from the exercise of his powers is that in the instant case, even if the Registrar had granted the Appellant’s privy the use of the Mark as it did, the Respondent always retained a right of recourse to the Federal High Court against the allegedly wrong decision either by way of an appeal under Section 56 of the TMA, Rectification Proceedings under Section 38 TMA or by way of an action for trademark

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Infringement as the Respondent did in this case.
This would mean that the instant action before the Federal High Court would survive the adverse decision of the Trade Mark Registrar conferring the Trade Mark in dispute on the Appellant’s Privy DomFrank and therefore the Appellants’ argument that the action ought to abate in limine upon the DomFrank trademark registration would fail.
The reasoning set out in the immediate past paragraph would also mean that the Appellants’ contention that the Respondents’ proceedings for trade mark infringement amounted to an abuse of process the moment registration of the Appellants mark was accomplished must also fail. Firstly because the law recognises, that a party dissatisfied with a decision of the Registrar (whether he participated in the opposition proceedings or not) , may either:-
(a) appeal pursuant to Section 20(4) TMA; or
(b) commence rectification proceedings pursuant to Section 38 of the TMA; or
(c) bring a trade mark infringement action before the Federal High Court. Please See Commentaries and Analysis on Nigeria’s Trade Marks Act (Supra) at pages 360 – 364.
Secondly,

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the action could not become unsustainable and therefore, an abuse of process merely because of the registration of the Mark by the Appellants privy DomFrank. This is because, to the extent that the Respondent asserts that the Appellant is trading wrongfully or deceitfully with a registered trademark, the party asserting injury has to have a right of legal recourse or remedy against the offending party that is the Appellant in this case. This can only be done within the context of the extant trademark/ passing off action.
The power of the Court to restrain the use of a trademark used to trade deceitfully is settled. See Kerly’s LAW OF TRADE MARKS & TRADE NAMES’, 12th Edition Page 314, Paragraph 15 – 50 where the learned Authors posit as follows: The Courts may refuse to interfere to protect the use of a defective trade mark or to assist a trader who is using his mark for the purpose of a fraudulent trade.

This action was initiated as per suit No: FHC/L/CS/591/95, nearly thirty (30) years ago. The judgment of this Court in this interlocutory appeal has not settled the merit of the claims between the parties. To put more perspective on the

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unconscionable delay this appeal has experienced, let me set out the views of Garba JCA (as he then was) on the matter at Pg. 121-122 of the Record as contained in the judgment of the Court below:
“Before ending this short judgment I am constrained by the facts and circumstances of this appeal to observe that on the pretext of exercising their constitutional right of appeal, the Appellants have deliberately stalled and even attempted to frustrate the claims of the Respondents before the lower Court now for seven (7) years. As indicated at the beginning of this judgment, the ruling on the Appellants’ motion was delivered on 13/4/99 and the Notice of Appeal was filed on 288/4/99. However, from the records of the appeal, it took the Appellants more than three (3) years to compile the record of appeal and apply for a departure from the Rules of Court to use them for the appeal on 17/10/02. This was prompted by the application of the Respondents for the dismissal of the appeal for want of diligent prosecution filed on 21/7/00. After the grant of the Appellants’ motion for departure filed on 17/10/02, they again abandoned the appeal until the Respondents

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again filed a motion on 23/1/04 for the dismissal of the appeal for want of diligent prosecution. The Appellants’ then filed a motion for enlargement of time to file Appellants’ brief on the 25/6/04 which was granted on 29/6/04. In their now proven character, the Appellants did not file their Reply brief within the prescribed period, after the Respondents filed their Respondents’ brief on 8/9/04. They applied for an extension of time to do so by a motion filed on 29/11/04. The appeal on an interlocutory decision was eventually heard and now judgment was delivered in the year 2006; about seven (7) years after it was filed by the Appellants who from the above chronicle of events were responsible for the deliberate and unnecessary delay. I would like to say that the exercise of the right of appeal particularly in respect of interlocutory decisions such as the one in the present appeal must be viewed, considered and treated in line with another fundamental constitutional right of a party to the determination of his civil rights and obligations within a reasonable time by a Court as guaranteed in Section 36(1) of the 1999 Constitution of the Federal Republic of Nigeria.

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The right to appeal provided in Sections 241 and 242 should not be allowed to overshadow and render ineffective, the fundamental right guaranteed under Section 36(1). That the substantive case before the lower Court had to lie comatose for seven years awaiting the outcome of the present appeal before it could be determined on the merits cannot be justified in view of the constitutional provisions. Counsel cannot escape blame of most for the unnecessary, expensive and avoidable delay in this regard.”
I could not have put the circumstances of this appeal better than as elucidated by my learned brother at the Court below. To make matters worse, this appeal was left “hanging” in this Court since the Appellants’ transmitted record on 9/11/2006. Sadly, both Counsels involved had been Counsels in this matter from the trial Court. This form of practice is highly deprecated. This appeal has no merit.

This case is sent back to the Federal High Court to be expeditiously tried on the merit.

I award the cost of Two Million Naira against both Appellants in favour of both Respondents. Appeal Dismissed.