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JUDGMENT:
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 Plaintiff’s 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”
Halsbury’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 this
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 generally 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 a 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
regarded as 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, constitutes
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; or
f. The price of a product or
service or the manner in
which the price is
calculated.
In Halsbury’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-up 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] AII 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-up 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’s evidence
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
(H P) Ltd v Bollinger SA [1978]
R.P.C. 79
that:
“It is well settled that the
plaintiff in 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
finding 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.
(SGD)
BARBARA ACKAH-YENSU (J)
JUSTICE OF THE HIGH COURT
COUNSEL
ADZA KOJO
- PLAINTIFF
AYITEY ARMAH TETTEH
- DEFENDANT |
