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Plaintiff has
instituted an action for the
following reliefs: "a. An
Injunction to restrain
Defendant, whether by
themselves, their agents,
servants, assigns etc, from
infringing with Plaintiff's
registered Trade Mark No. 32529
dated 5th May 2002 and also from
passing off Defendant's goods as
those of Plaintiff b. Damages
for the passing off the
Plaintiff's goods by the
Defendant and the injury to
Plaintiff's goodwill. C Delivery
up to Court for destruction of
Defendant's unsold stock of the
said offensive items. d. Any
other order as to the Court may
seem fit." Plaintiff's case is
that it is the registered
proprietor of the "HEAVEN"
mosquito coil and that its mark
"HEAVEN" is set against a yellow
background with a white bird
flying across a rainbow.
According to Plaintiff since the
registration of its mark, it had
imported and widely marketed its
HEAVEN BLACK mosquito coil such
that mosquito coils packaged
with the said name, mark, style
and colour have become very
popular with consumers and the
general public as their
favourite brand of mosquito
coil. It is Plaintiffs further
case that the Defendant has
packaged its DHOOM BLACK
mosquito coil in very similar
colour, shape and style (get up)
as if same are products of
Plaintiff and released same for
sale in the local market. It is
Plaintiff's contention that the
use by Defendant of Plaintiff's
packaging style (get up) is
calculated to deceive and
confuse the general public into
thinking/believing same to be
Plaintiff's product. In effect,
Defendant was perpetrating
unfair trade practices by its
conduct. Defendant denied
Plaintiff's claims that the
name, mark, colour and packaging
style (get up) were similar and
insisted that the decoration on
their package was completely
different from that of
Plaintiff. The Defendant further
stated that there were numerous
brands of mosquito coil on the
market which had been packaged
in square boxes with yellow
background and that their
packing style was not capable of
confusing or deceiving the
general public. The Trade Marks
Act, 2004 (Act 664) defines
Trade Mark as follows: "Meaning
of trademark 1. Trade mark means
any sign or combination of signs
capable of distinguishing the
goods or services of one
undertaking from the goods or
services of the other
undertakings including words
such as personal names, letters,
numerals and figurative
elements" Haisbury's Laws of
England, 4th Edition, Vol.48,
paragraphs 78 and 79 provide as
follows: 78. "Identical mark for
identical goods or services" A
person infringes a registered
trade mark if he uses in the
course of trade a sign which is
identical with the trademark in
relation to goods or services
which are identical with those
for which it is registered" 79.
"Identical mark for similar
goods or services; similar mark
for identical goods or services.
A person infringes a registered
mark if he uses in the course of
a trade a sign where because: 1.
The sign is identical with the
trade mark and is used in
relation to goods and services
similar to those for which the
trade mark is registered; or 2.
The sign is similar to the trade
mark and is used in relation to
goods or services identical with
or similar to those for which
the trade mark is registered,
There exists a likelihood of
confusion on the part of the
public, which includes the
likelihood of association with
the trade mark" Section 3 of the
Trade Marks Act states that the
registration of a trade mark by
any person confers an exclusive
right to the use of the trade
mark. Section 9 also provides
for the Rights conferred by
registration. Some of the
provisions under section 9 are
as follows: 9(1) A person other
than a registered owner of a
trade mark shall not use the
mark in relation to any goods or
services for which the trade
mark was registered without the
agreement of the owner. (2) The
registered owner may institute
court action against any person
who infringes a registered trade
mark by a. using a registered
mark without permission; or b.
performing acts which make it
likely that infringement may
occur. (3) No person shall
knowingly infringe the rights of
the owner of a registered trade
mark by using a trade mark in
relation to goods or services
for which the trade mark was
registered without the consent
of the owner. (4) The right of
the registered owner under is
section shall, in addition to
any other remedies, extend to
the use of a sign similar to the
registered trade mark and use in
relation to goods and services
similar to those for which the
mark has been registered where
confusion may arise in the
public. (5) Where there is use
of an identical sign for
identical goods or services, a
likelihood of confusion shall be
presumed. The position of the
law is that the claimant in an
action for infringement of a
registered mark must generalIy
establish his title to sue
either as proprietor or as an
exclusive licencee. He must then
prove that the defendant has
acted or threatens to act in
such way as to infringe the
right conferred by registration.
Per Exhibit "B", Plaintiff
proved that it is the registered
proprietor of the trademark
"HEAVEN". The claimant's title
as proprietor depends on the
existence of a valid
registration. The fact that a
person is registered as
proprietor of a mark is prima
facie evidence of the validity
of the original registration and
of any subsequent assignment or
transmission thereof. The
Plaintiff's mark is "HEAVEN"
written in black with white neon
lines on the outside and set
against a yellow background with
a white bird flying across a
rainbow. The Defendant's mark is
"DHOOM" written in a similar
black with white neon lines on
the outside and set against a
similar yellow background, but
with an eagle and thunder on the
right side. So, looking at the
two (2) marks are they so
similar as to exist the
likelihood of confusion? I must
state here that the fact that
both marks are used in relation
to goods and services identical
with or similar is an undisputed
fact. Both marks are used for
mosquito coil. It is Plaintiff's
contention that the two marks
are identical to a very large
extent. That, it is the total
effect of the marks together,
with the shape, size, style (get
up) that brings the similarity
thereby creating the likelihood
of confusion and deception.
Defendant contends that it too
has registered its trade mark
with the Registrar General's
Department and is therefore
protected under the Trade Marks
Act. From the evidence of Prince
David, Financial
Controller/Accountant of
Defendant Company (D.W.1)
however, Defendant's mark has
not as yet been registered the
process has been set in motion
but not completed Defendant's
mark therefore cannot be said to
have been registered. So, we are
now back to the question as to
whether the two marks
(Plaintiff's and Defendant's)
are "so nearly resembling' each
other that there is the
likelihood of confusion and
deception. In my opinion, the
two marks “HEAVEN" and “DHOOM"
are not so similar as to qualify
for an infringement of a trade
mark under the Trade Marks Act,
and I will so find. However,
Plaintiff herein has come to
Court seeking reliefs for
passing off. Generally speaking,
there is nothing in the Trade
Marks Act that affects a
trader's right against another
in an action for passing off. It
is not even a bar to an action
for passing off that the trade
name, get up or any other of the
badges identified with the
claimant's business, which are
alleged to have been copied or
imitated by the defendant, might
have been, but not registered as
trade marks, even though the
evidence is wholly addressed to
what may be a mark capable of
registration. Again, it is no
defence to passing off that the
defendant's mark is registered.
The law offers advantages to
those who register their trade
marks, but imposes no penalty
upon those who do not. Passing
off is increasingly being seen
as unfair competition by
misrepresentation. The consensus
is that traders should be
protected in their relationship
with one another. There is
nothing wrong with competition
but it has to be fair. Thus any
misrepresentation calculated to
give one trader the benefit of
another's goodwill is
actionable; or even more
generally that any "
misrepresentation .....
calculated to injure another in
his trade or business" is to be
regardedas passing off as per
Lord Morris in Parker-Knoll v
Knoll International [1962] RPC
265 at 278. The applicable law
in Ghana relating to the tort of
'passing off" is the Protection
Against unfair Competition Act,
2000 (Act 589). Sections 1, 2
and 3 of the said Act state as
follows: Causing confusion with
respect to another's enterprise
or its activities 1. (1) Any act
or practice, in the course of
industrial or commercial
activities that causes, or is
likely to cause, confusion with
respect to another person's
enterprise or its activities, in
particular, the products or
services offered by that
enterprise, constitute an act of
unfair competition. (2)
Confusion may, in particular, be
cause with respect of a. A
trademark, whether registered or
not; b. A trade name; c. A
business identifier other than a
trademark or trade name d. The
presentation of a product or
service; or e. A celebrity or
well-known fictional character.
Damaging another person’s
goodwill or reputation 2. (1)
Any act or practice in the
course of industrial or
commercial activities, that
damages or is likely to damage
the goodwill or reputation of
another person's enterprise or
its activities constitutes an
act of unfair competition,
whether or not the act or
practice causes confusion (2)
Damaging another person's
goodwill or reputation may, in
particular, result from the
dilution of the goodwill or
reputation attached to a. A
trademark whether registered or
not, b. A trade name c. A
business identifier other than a
trademark or a trade name; d.
The appearance of a product; e.
The presentation of a product or
service; or f A celebrity or a
well-known fictional character
Misleading the public 3. (1) any
act or practice in the course of
industrial or commercial
activities, that misleads or is
likely to mislead the public,
with respect to an enterprise or
its activities, in particular,
the products or services offered
by the enterprise, constitutes
an act of unfair competition.
(2) Misleading may arise out of
advertising or promotion and
may, in particular,occur with
respect to a. The manufacturing
process of a product; b. The
suitability of a product or
service for a particular
purpose; c. The quality or
quantity or other
characteristics of a product or
service; d. The geographical
origin of a product or service;
e. The conditions on which a
product or service is offered or
provided f. The price of a
product or service or the manner
in which the price is
calculated. In Haisbury's Law of
England,4th Edition volume 48,
paragraph 189 (page 117),
passing off is explained as
follows: 189. "Passing off any
similarity of get up or shape of
goods. Passing off may occur,
not by reason of any similarity
of trade marks or names but
because of the similarity of the
general appearance or get-up of
the goods; the similarity of
get-up may be such that passing
off is likely to occur even
though the trademarks or names
are wholly different especially
where the goods are likely to be
bought by illiterate or
uneducated persons..:' It states
further at page 118 that: "In
assessing whether or not the
get-up of the Defendant's goods
is deceptively similar to the
Plaintiff's, characteristics
which are common to the trade
should be disregarded, but the
use in combination of a number
of features which are
individually used by others in
the trade can amount to passing
off Thus, where the Defendant
adopts a feature used by the
Plaintiff which is also used by
others in the trade, so that its
use as such is unobjectionable,
the Defendant may nevertheless
have to take greater care not to
copy other features of the get-
tip of the Plaintiff's goods.
Further. where the general
appearance of the goods is
necessary similar, Defendant
needs to take greater care to
avoid adopting those features
which are distinctive to the
get-up of the Plaintiff's goods"
it is trite learning that
passing off, is concerned with
misrepresentation made by one
trader which damage the goodwill
of another trader.
Misrepresentations, damage and
goodwill are therefore the three
(3) essential elements of the
tort, and are sometimes referred
to as the “Classical Trinity".
In the case of Reckitt & Colman
Products Ltd v. Borden [1990]
All ER 873 HL the learned judges
referred to the "Classical
Trinity" in their description of
the elements of the action. Lord
Oliver put the matters a
successful claimant must prove
as follows: "First he must
establish a goodwill or
reputation attached to the goods
or services which he supplies in
the mind of the purchasing
public by association with the
identifying 'get-up', (whether
it consists simply of a brand
name or a trade description, or
the individual features of
labelling or packaging) under
which his get-Lip is recognized
by the public such that the
get-up is recognized by the
public as distinctive
specifically of the plaintiff's
goods and services. Secondly, he
must demonstrate a
misrepresentation by the
defendant to the public (whether
or not intentional) leading or
likely to lead the public to the
belief that the goods or
services offered by him are the
goods and services of the
plaintiff Thirdly, he must
demonstrate that he suffers or,
in a quia timet action, that he
is likely to suffer damage by
reason of the erroneous belief
engendered by the defendant's
misrepresentation that the
source of defendant’s goods or
services is the same, as the
source of those offered by the
plaintiff" It is well settled
(unless registered as a trade
mark) that no one has a monopoly
in his brand name or get-up,
however familiar these may be.
Passing off is a wrongful
invasion of a right of property
vested in the claimant; but the
property which is protected by
an action for passing off is not
the claimant's proprietary right
in the name or get¬up which the
defendants has misappropriated,
but the goodwill and reputation
of his business which is likely
to be harmed by the defendant's
misrepresentation. What common
law protects through passing off
actions is the goodwill between
the trader and its customers,
which the mark, get-up, in which
the goods are packaged, or a
combination of the two. The law
regards such reputation as an
incorporeal piece of property
the integrity of which the owner
IS entitled to protect. The law
will not allow such reputation
and goodwill to be taken
advantage of by another trader.
The nature of goodwill is
probably not capable of precise
definition; it is more easily
understood than defined. In-the
context of passing off, it has
been stated to represent, in
connection with any business or
business product, the value of
the attraction to customers
which name and reputation
possesses. See Reuter v Muhlens
[1953] R.P.C. 235 at 254. But in
the words of Sir Stephen Browne
P. in Scandecor Development AB v
Scandecor Marketing AB [1999]
F.S.R. 26, CA, "no one judge or
jurist has yet improved on Lord
Macnaghten's description of
goodwill". This is how goodwill
was defined in the case of
Inland Revenue Commissioners v
Mukker & Co's Margarine Ltd
[1901] AC 217 HL: "What is
goodwill? It Is a thing very
easy to describe, very difficult
to define. It is the benefit and
advantage of the good name,
reputation and connection of a
business. It is the attractive
force which brings in custom. It
is the one thing which
distinguishes an old-established
business from a new business at
its first start. The goodwill of
a business must emanate from a
particular centre or source.
However widely extended or
diffused its influence may be,
goodwill is worth nothing unless
it has power of attraction
sufficient to bring customers
home to the source from which it
emanates." In the same case,
Lord Lindley said that:
"Goodwill regarded as property
has no meaning except in
connection with some trade,
business, or calling. In that
connection I understand the word
to include whatever adds value
to a business by reason of
situation, name and reputation,
connection, introduction to old
customers, and agreed absence
from competition, or any of
these things, and there may be
others which do not occur to me.
In this wide sense, goodwill is
inseparable from the business to
which it adds value, and in my
opinion, exists where the
business is carried on. Such
business may be carried on in
one place or country or in
several, and if in several there
may be several businesses, each
having a goodwill of its own."
In a true case of passing off,
all three elements are
intertwined. It is the exclusive
reputation which provides the
necessary foundation for
misrepresentation; the
misrepresentation must be one
which causes or is likely to
cause damage to goodwill; and
damage to goodwill is the heart
of the cause of action. It has
always been the law that every
case in which passing off is
alleged turns on its own facts.
The question whether in the uses
of particular indicia results in
passing off the goods or
services is in substance a
question of fact. As per
Halsbury L.C. in Reddaway v.
Banham [1896] AC 199 at 244;
"The principle of law may be
very plainly stated that nobody
has any right to represent his
goods as the goods of somebody
else. How far the use of
particular words, signs, or
pictures, does or does not come
up to the proposition enunciated
in each particular case must
always be a question of
evidence, and the more simple
the phraseology, the more like
it is to a mere description of
the article sold, the greater
becomes the difficulty of proof,
but if the proof establishes the
fact, the legal consequences
appears to follow." The first
element in passing off is
reputation/goodwill. That is
does the Plaintiff have any
goodwill in HEAVEN' BLACK
mosquito coil to protect in
Ghana? The overriding
consideration in judging the
extent of reputation is whether
the claimant has built up
goodwill to the point where
substantial damage will be
caused to it by the acts he
complains of. P.W.1'sevidence
was as follows: Q. In paragraph
6 of your statement of claim,
you are saying that you have
imported and widely marketed
your product. That your product
has become very popular with
consumers and that your product
is the most favourite. Can you
explain this to the court? A. We
started as a very small brand
years ago with only 2
distributors. All the years, we
have built it up with almost 60
distributors nationwide. We have
placed bill boards in Accra and
in the outskirts of Kumasi, we
advertise on the TV 3 news
daily. Anybody who puts on his
television sees Heaven Black
mosquito coils. We have spent
our entire youth, me and my
brother, developing and
advertising this brand, another
person just brings an inferior
quality product and copies our
entire label and everything to
mislead the consumer, the people
who used the mosquito coils are
the poor people. They are even
illiterates. In his evidence,
P.W.1 stated that Plaintiff's
product was the number one
selling brand in the market, the
most advertised and the best
quality. All these pieces of
evidence were not challenged by
Defendant. In proof of
Plaintiff's case, P.W.1 tendered
in evidence receipts and
documents covering locations of
billboards, list of customers,
customers shop brandings and TV
adverts; Exhibits "E", "F", 'G",
and "H" series. In the light of
all that I have said about
reputation and goodwill, I will
find that Plaintiff has adduced
sufficient evidence to establish
that it has reputation and
goodwill. With regard to the
second element, i.e.
representation, the position of
the law is that selling ones
goods under the pretence that
they are the goods of another;
constitutes an invasion of
proprietary rights vested in the
plaintiff. The misrepresentation
should lead to
confusion/deception. Proof of
actual confusion is often
compelling evidence of passing
off, but such proof is not a
requirement for passing off.
Legal authorities recognized
that similarity sufficient to
result in confusion should be
enough to create a
misrepresentation that can form
the basis of a passing off
action, Legal authorities
recognized that similarity
sufficient to result in
confusion should be enough to
create a misrepresentation that
can form the basis of a passing
off action, the important factor
being whether purchasers or
consumers of the products have
been or are likely to be misled.
There are a number of dicta that
can assist in determining
similarity and likelihood of
confusion. In Pianotist. Co's
Application, Re [1906] 23 R.P.C
774 at 777, Parker J said as
follows: "You must take the two
words. You must judge them both
by their look and their sound.
You must consider the goods to
which they are to be applied.
You must consider the nature and
kind of customer who would be
likely to buy those goods. In
fact you must consider all the
surrounding circumstances, and
you must further consider what
is likely to happen if each of
those trade marks is used in a
normal way as a trade mark for
the goods of the respective
Owners of the trade marks." In
considering the question of
possible deception or confusion,
due cognizance must be given to
the fact that human recollection
is not perfect. Thus the court,
in Rysta Ltd's Application
[1943] 60 R.P.C. 87 at 108,
said: "It is the person who only
knows the one word, and has
perhaps an imperfect
recollection of it, who is
likely to be deceived or
confused. Little assistance
therefore is to be gained from a
meticulous comparison of the two
words, letter by letter and
syllable by syllable pronounced
with the clarity to be expected
from a teacher of elocution. The
court must be careful to make
allowance for imperfect
recollection and the effect of
careless pronunciation and
speech on the part not only of
the person seeking to buy under
the trade description but also
of the shop assistant
ministering to that person s
wants." Vijay Krishnan
Moolchandani, a Director of
Plaintiff Company; P.W.1'S
evidence was that Defendant had
copied the entire get up of
Plaintiff's product, the colours,
wording, and even the mistakes
they made in the wording. He
said that initially Plaintiff
wrote "manufacture" instead of
"manufactured", and this mistake
was copied by Defendant.
Defendant denies that they have
copied Defendant's get up etc
and to prove this they called
Samuel Quaynor, a trader in
mosquito coils (D.W.2) to
testify. His evidence was that
he was a wholesaler and that his
customers never got confused
between the two products. In my
view the fact that he was a
wholesaler did not help
establish definitely that
customers did not get confused
because he sold the products in
cartons; it did not reveal the
similarities between the
packaging. in any case, even
D.W.2 admitted to some
similarities in the packaging.
It is my opinion that looking at
Exhibits "C" (package of HEAVEN
BLACK mosquito coil), and
Exhibit "C1" (DHOOM BLACK
mosquito coil), the average
person might not see much
difference between them. It is
common knowledge that mosquito
coils are usually used by the
not so educated and not so
sophisticated members of the
society. One cannot therefore
expect the possible purchaser to
be meticulous and pay particular
attention to the minor
dissimilarities between the two
Packages. The Packages boxes, in
my view look quite similar.
After all a trademark to carry
out its function in a market,
recognition of it by the
relevant public has to be almost
instantaneous. The other
packages of mosquito coil
tendered in evidence, Exhibits
"D" series are not as similar to
Exhibit "C" (HEAVEN BLACK
mosquito coil) as Exhibit "C1" (DHOOM
BLACK mosquito coil) is. I will
find that Defendant's product
has been packaged in such a way
that it looks confusingly
similar to that of Plaintiff's.
The third and last ingredient in
a passing off action is damage.
The assumption is that the
claimant in a passing off action
is being prevented from selling
as many goods as he otherwise
would; while even if there was
no direct loss of sales, the
confusion between the two
suppliers puts the plaintiff's
goodwill at risk. The claimant
does not have to prove actual
damage (still less special
damage) in order to succeed in
an action of passing off.
Likelihood of damage is
sufficient. As per Lawrence J in
Motor Manufacturers' & Traders'
Insurance Society v Motor
Manufacturers' & Traders'
Insurance Co [1925] All ER 616;
"It is well established that a
court of equity will protect the
business reputation enjoyed by
any person or corporation
against tangible risk or
probability of injury, just as
it will protect any other
property of such person or
corporation against any such
risk or probability. One of the
ways in which a business
reputation may be injured is by
the appropriation by a stranger
of part of such reputation. Such
appropriation may be brought
about by the adoption of a name
which suggests that the person
or corporation enjoyed the
reputation. Damage or likelihood
of damage is the gist of all
such actions, and unless a
plaintiff can prove that his
credit or business reputation
has suffered damage or that
there is a tangible risk or
probability of his credit or
business reputation suffering
damage, no action will lie.
Buckley J also said in Bulmer
(HP) Ltd v Bollinger SA [1978]
R.P.C. 79 that: "It is well
settled that the plaintiff/n a
passing off action does not have
to prove that he has actually
suffered damage by loss of
business or in any other way. A
probability of damages is
enough, but the actual or
probable damage must be damage
to him in his trade or business,
that is to say, damage to the
goodwill in respect of that
trade or business." In his
evidence P.W.1 stated as
follows: Q: You have also said
that the practices of the
Defendant has made you to suffer
damage to your business, you
reputation and your goodwill.
What do you mean by that? A: 'My
Lord, since this product (Dhoom)
came to the market, our number
one position has fallen because
our customers are complaining
that they cannot buy our product
at a price which is for good
quality when there is a cheaper
product on the market which
looks identical like ours. And
even the sellers cannot tell the
difference, whether he is buying
the original or the fake:
because the language, colours
and everything are the same. So
the sales have dipped on the
original product. During cross
examination of Plaintiff, the
following ensued Q: the
Defendant's product has not
damaged your reputation in the
market. A. I disagree, my Lord.
It has created damage because
now it is known as the cheap
"Heaven" in the market.
Everybody refers to it as cheap
"Heaven" Q: Why do they refer to
it as cheap "Heaven"? A: My
customers, my distributors tell
me because they are saying it
looks the same from all
directions and it is available
so they call it cheap "Heaven".
D.W.2 confirmed in his evidence
that indeed Dhoom was selling
cheaper than Heaven. He said: Q:
How much were you selling the
Dhoom? A: We were selling the
Dhoom for GH˘30.00 Q: And
Heaven? A: My Lord, the Heaven
was sold for GH˘35. 00 by then
In short, if the court finds
that there is a likelihood of
confusion in the circumstances
of the case, it should
necessarily follow that the risk
of damage to the plaintiff is
inevitable. I have made a
linding that there is a
likelihood of confusion and
therefore it follows that there
is the risk of damage being
caused to Plaintiff. In
conclusion, I will opine that
all the three ingredients of a
passing off action have been
satisfied and the Plaintiff is
entitled to the reliefs being
claimed. As Lord Parmoor said in
Spalding Bros v Gamage [1915] 32
RPC 273, 'The plaintiff who
establishes a case of this
character is entitled to an
injunction and, if necessary, to
an inquiry into damages." Lord
Parmoor also stated that a tort
having been committed, the
plaintiff is entitled to such
damages as naturally flow from
defendant's unlawful act, and
there is no artificial
limitation in the case of a
passing off action. Having
established the
misrepresentation on which the
Plaintiff relies, and being in
its nature calculated to produce
damage, it is my opinion that
the Plaintiff is prima facie
entitled to both an injunction
and to an award of damages. I
accordingly make an order of
injunction to restrain Defendant
whether by themselves, their
agents, servants, assigns etc
from infringing with Plaintiff's
registered Trade Mark No. 32529
dated 5th .May 2002 and also
from passing off Defendant's
goods as those of the Plaintiff.
I will further order that the
Defendant deliver up for
destruction upon oath of all its
unsold stock of DHOOM BLACK
mosquito coils. I will award
damages of GH˘10,000.00. Costs
assessed at GH˘2,500.00. COUNSEL
ADZA KOJO PLAINTIFF AYITEY ARMAH
TETTEH DEFENDANT |
