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By a writ of
Summons filed on 24th July 2009
the plaintiff claimed against
the defendant as follows: a) An
order of perpetual injunction
restraining forthwith the
defendant whether by himself,
his agents, distributors,
business associates or whosoever
authorized or not authorized by
them from infringing the
trademark as well as packaging
and get up" of plaintiff's
product "Saikirpa Naphthalene
Balls" b) An order that
defendant's action of importing
into and distributing an
identical product under the name
"Addo Sulley Naphthalene Balls"
is an infringement of plaintiffs
trademark and get up of their
product. c) An order for the
seizure and destruction of the
injuring goods in the possession
custody and control of the
defendant and/or in the
possession, custody or control
of defendant's agent,
distributor's agent , sellers,
servants workers assigns or
however authorized by him d) An
order for verification upon oath
that the defendant no longer has
in his custody possession
control any of the said product
as packaged in its present form
or made any order for the supply
and delivery of more of such
offensive products or to cause
more such unfair competition by
the manufacturer either now or
at a future date e) General
damages. The plaintiff's case is
that sometime in 2006 it
conducted a market survey in the
Ghanaian market as a result of
which it introduced into the
Ghanaian market Saikirpa
Naphthalene balls an aromatic
insect repellant. This product
was manufactured in China. They
tested and registered the
product with the Ghana Standards
Board, the Registrar Generals
Department and the Food and
Drugs Board. The plaintiffs were
subsequently issued with a
certificate of registration of
Trade Mark. According to the
plaintiff they spent millions of
Ghana cedis to promote the brand
and the product to make same a
household name. It is the case
of the plaintiff that sometime
In 2009 they noticed that the
defendant had introduced an
identical brand unto the market
with the name ADDO SULLEY
NAPHTALENE BALLS which had
copied the get up, character,
packaging of the plaintiff's
product thereby creating
confusion in the minds of the
unsuspecting public into
believing that their products
are the plaintiffs or related to
the plaintiffs which is clearly
a " passing off' and an act of
unfair-Competition to benefit
from the goodwill and popularity
of the plaintiff's brand. The
plaintiff's case is that the
defendant sold their product at
a cheaper price. As a result of
the defendants conduct the
plaintiff lost millions of cedis
and the defendants should thus
be restrained from further
distributing their product. The
defendants admit that in June
2009 it introduced unto the
Ghanaian market their product
ADDO SULLEY NAPHTALENE BALLS but
say that their product was
different from the plaintiff's
product in colour, weight and
size in further denying
plaintiff's claim the defendant
states that the product in issue
was the very first consignment
imported into the country and
that in any event the plaintiff
has not suffered any loss. The
following issues were set down
as the issues for trial: 1)
Whether or not the plaintiff
created designed, packaged and
introduced the product known as
SAIK1RPA NAPHTALENE BALLS unto
the Ghanaian market. 2) Whether
or not the said product has been
on the Ghanaian market since
2006 3) Whether or not the
plaintiff has registered their
trade mark and product with the
Registrar Generals as number
37,468 under clause 5. 4)
Whether or not the plaintiffs
have registered with the Food
and Drugs Board under the Food
and Drugs Law 1992 (PNDC Law
305) 5) Whether or not the
defendants have introduced a
product called ADDOSULLEY
NAPHTALENE BALLS unto the market
6) Whether or not defendants
have copied the "get up",
character, packaging and
appearance of plaintiff's
product. 7) Whether or not the
defendants are passing off their
product as that of the
plaintiffs 8) Whether or not the
conduct of the defendant is
causing confusion in the minds
of the general public leading
them to mistake defendant's
product as that of the
plaintiffs. 9) Whether or not
the plaintiff has suffered
damages and loss of profit. 10)
Whether or not the plaintiffs
are entitled to their claim. The
plaintiff company gave evidence
through its Managing Director
Suneel Murpir whilst the
defendant gave evidence through
Addo Sulley Abdul Razak the
Attorney of the defendant. The
plaintiff tendered in evidence
Exhibit A,B,C and D. Exhibit A
is the plaintiff’s product
SAIKIRPA NAPHTALENE BALLS
clearly with the design. Exhibit
B is the letter from the Food
and Drug Board approving and
issuing the registration number
FDB/C 06-12037 for a period of
three (3) years. Exhibit C and
C1 are letters from the Ghana
Standard Board showing the
result of tests and analysis
conducted on samples of
plaintiff's product whilst
Exhibit D is the certificate of
Registration of Trade Mark
issued by the Registrar of Trade
Marks. Exhibit D shows that the
plaintiffs are the legal owners
of the SAIKIRPA NAPHTALENE BALLS
product. Exhibit D also shows
the name of the product and the
combination of colour, design,
package and the get up" and the
bar code. The evidence is clear
that the plaintiff created
designed, registered and
introduced SAIKIRPA NAPHTALENE
BALLS unto the Ghanaian market
and I so find. The plaintiff
also tendered in evidence
Exhibit G which is the
defendant's product ADDO SULLEY
NAPHTALENE BALLS. The
plaintiff's case is that the
defendant was "passing off "his
product Exhibit G as those of
the plaintiff Exhibit A. In the
case of RECKITT & COLEMAN
PRODUCTS LTD VRS BORDEN (1990)
RPC 341 H.L popularly called the
"Jif Lemon case" the House of
Lords per Lord Oliver put the
matters a successful claimant in
a passing off action must prove
as follows at page 406 of the
Report: First he must establish
a goodwill or reputation
attached to the goods or service
which he supplies in the mind of
the purchasing public by
association with the identifying
"get up"(Whether it consist
simply of a brand name or a
trade description or the
individual features of labeling
or packaging) under which his
particular goods or services are
offered to the public, such that
the get-up is recognized by the
public as distinctive
specifically of the plaintiff's
goods or service. Secondly he
must demonstrate a
misrepresentation by the
defendant to the public (whether
or not intentional) leading or
likely to lead the public to
believe that the goods or
service offered by him are the
goods or services of the
plaintiff. Thirdly he must
demonstrate that he suffers or
in a quia timet action, that he
is likely to suffer damages by
reason of the erroneous belief
engendered by the defendant's
misrepresentation that the
source of the defendant's goods
or services is the same as the
source of those offered by the
plaintiff" At page 416 - 417 of
the Report Lord Jauncey stated
the principle thus: “ a man is
not to sell his own goods under
the pretence that they are the
goods of another man.
Accordingly a misrepresentation
achieving such a result is
actionable because it
constitutes an invasion of
proprietary rights vested in the
plaintiff. However it is a
prerequisite of any successful
passing off action that the
plaintiff's goods have acquired
a reputation in the market and
are known by distinguishing
feature. It is also a
prerequisite that the
misrepresentation has deceived
or is likely to deceive and that
the plaintiff is likely to
suffer damage by such deception.
Mere confusion which does not
lead to a sale is not
sufficient. It is not essential
that the defendant should
misrepresent his goods as those
of the plaintiff It is
sufficient that he misrepresents
his goods in such a way that it
is a reasonably foreseeable
consequence of the
misrepresentation that the
plaintiff's business or goodwill
will be damaged" Thus the three
(3) elements required to be
proved in a passing off action
are: i) Reputation or goodwill
by the plaintiff in his
goods/name/mark ii)
Misrepresentation by the
defendant leading to
confusion/deception of the
public and iii) Causing damage
to the plaintiff. Often the
presence of misrepresentation
has to be inferred from the
circumstances. In discussing how
misrepresentation may be proved
in a passing off action Lord
Parker in SPALDING VRS GAMAGE
(1915)32 RPC 273 stated at page
284 of the Report as follows:
The basis of a passing-off
action being a false
representation by the defendant,
it must be proved in each case
as a fact that the false
representation was made. It may
of course have been made in
express words but cases of
express misrepresentation of
this sort are rare. The more
common case is where the
representation is implied in the
use or imitation of a mark,
trade name or get up with which
the goods of another are
associated in the minds of the
public or of a particular class
of the public. In such cases the
point to be decided is whether,
having regard to all the
circumstances of the case, the
use by the defendant in
connection with the goods of the
mark, name or get-up in question
impliedly represents such goods
to be the goods of the plaintiff
or the goods of the plaintiff of
a particular class or quality,
or as is sometimes put, Whether
the defendant's use of such
mark, name or get-up is
calculated to deceive, it would
however be impossible to
enumerate or classify all the,
possible ways in which a man may
make the false representation
relied on" With regard to proof
that the product had acquired a
reputation or goodwill, it is
essential to the success of any
claim in respect of passing off
based on the use of a given
mark, get-up or other indication
of origin for the claimant to
show that this had (at the
relevant date) become by user in
this country distinctive to some
section of the public if not of
the claimants goods or business
alone at least of a defined
class of goods or business to
which those of the claimant
belong. In "TURMIX" (OERTLI VRS
BOWMAN) (1957) RPC 388 at 397
Jenkins L.J. explained proof of
reputation as follows: It is of
course essential to the success
of any claim in respect of
passing off based on the use of
a given mark or get-up that the
plaintiff should be able to show
that the disputed mark or get-up
has become by user in this
country distinctive of the
plaintiff's goods so that the
use in relation to any goods of
the kind dealt in by the
plaintiff or that mark or get-up
will be understood by the trade
and the public in this country
as meaning the goods are the
plaintiff’s goods The gist of
the action is that the plaintiff
by using and making known the
mark or get-up in relation to
his goods and thus causing it to
be associated or identified with
those goods has acquired a
quasi-proprietary right to the
exclusive use of the mark or
get¬up in relation to goods of
that kind, which right is
invaded by any person who by
using the same or some
deceptively similar mark or
get-up in relation to goods not
of the plaintiff's manufacture,
induces customers to buy from
him goods not of the plaintiffs
manufacture as goods of the
plaintiff's manufacture, thereby
divert to himself orders
intended for and rightfully
belonging to the plaintiff" The
overriding consideration, in
judging extent of reputation is
whether the claimant has built
up a goodwill to the point where
substantial damage will be
caused to it by the acts he
complains of. In relation to
passing off goodwill has been
stated to represent in
connection with any business or
business product the value of
the attraction to customers
which the name and reputation
possess-see REUTER vrs MUHLENS
(1953) 70 RPC 235 In his classic
statement concerning goodwill in
IRC VRS MULLERSMARGARINE (1901)
AC 217 at 223, Lord Macnaghten
stated Goodwill is the benefit
and advantages of a good name,
reputation and connection of
business. It is the attractive
force that brings in custom. It
is the one thing which
distinguishes an old established
business from a new business at
the first stand. The goodwill of
a business must emanate from a
particular source or centre.
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. Goodwill is composed
of elements. It differs in its
composition in different traders
and in. different business in
the same trade Having discussed
the law relating to passing off
what does the evidence indicate
in this case? The evidence shows
that the plaintiff has
registered its product with the
Registrar of Trade Marks as
clearly shown by Exhibit D and
Exhibit D clearly shows the
combination of colours,
labeling, design and characters
and get up of the plaintiff's
product. Although the defendant
admitted being conversant with
the law which required him to
register his product with the
Registrar of Trade Mark and Food
and Drugs Board and other
institutions, the defendant had
not registered his following
product with any of these
instructions. The plaintiff had
led evidence to show the extent
to which he had gone in terms of
compliance with the law,
advertisement of the product in
terms of radio and television
adverts, posters etc with a view
to making the SAIKIRPA
NAPHTALENE BALLS a household
name in the Ghanaian market. The
plaintiff led evidence to show
that its product had clearly
acquired a reputation and had
been associated with the
packaging and get up peculiar to
its product. A comparism of the
plaintiff's product Exhibit A
and the defendants product
'Exhibit G leaves no doubt in my
mind that the defendant's
product are designed and
packaged and labeled in such a
way that it is clearly almost
impossible to distinguish it
from that of the plaintiff.
Indeed when the defendant's
Attorney was extensively
cross-examined by counsel for
the plaintiff on 1st June 2010
in respect of the design,
packaging and labelling of the
two products this is what
transpired: Q. Did you verify to
find out if the design you had
chosen was in conflict with any
other distributors design? A. No
Q. Did you take any steps to
research the local market for
designs respecting subsisting
brands in the Ghanaian market?
A. No Q. Exhibit G is the Addo
Sulley naphthalene balls samples
which was tendered by the
plaintiffs? A. Yes Q. Take a
look at It; at the top of that
exhibit there is a blue line
running horizontal from left to
right to the end, is that
correct? A. Yes Q. On top of
that blue line; there are strips
of vertical blue, red and white
lines, is that correct? A. Yes
Q. The inscription on it Addo
Sulley is written in red ringed
blue and white designs, is that
correct? A. Yes Q. The word
naphthalene balls is in italics
blue, is that correct? A. Yes Q.
And you have another inscription
there Euro camphor, is that
correct? A. Yes Q. And then down
there, you have purity 99% UP?
A. Yes Q. Then the same blue
horizontal running from left to
right is at the base of exhibit
G, is that correct? A. Yes Q.
And there is an inscription
there manufactured for Addo
Salley Enterprise? A. Yes Q. And
then there is a repeat of the
vertical red, white and blue
design at the bottom? A. Yes Q.
Look at the plaintiff's product
which is exhibit A? A. Yes Q. At
the very top is a horizontal
blue strip that runs from the
left to the right just as
identical as exhibit G, your
product? A. Yes but in the
different shade of blue Q. On
top of that one, there is a
vertical red, blue and white
design just like exhibit G which
is your product? A. Yes Q. Then
the name saikirpa is written in
red just like your exhibit G? A.
Yes Q. And the letters are
ringed by blue design? A. Yes
they are ringed in deep blue Q.
And this is just like exhibit G
which is written also in red and
ringed by blue? A. By light blue
Q. Then under the name is
naphthalene balls italized just
like exhibit G? A. Yes Q. Then
you have the same name Euro
camphor written under that the
same way as exhibit G is
designed? A. Yes but they are
differently positioned. The
first exhibit is differently
positioned but it's the same
writing and the same wording Q.
The wording Euro camphor is
written in the same colour red
and ringed in white just as
exhibit A. Exhibit A is written
in red and ringed in white and
exhibit G is also Written in red
and ringed in white? A. Yes; the
shade of red here is even
briqhter in exhibit A than in
exhibit G. The exhibit G word is
dull. Q. And then you have under
the base horizontal blue strip
running from left to the right?
A. Yes Q. And you have the
writing there in exhibit A
manufactured for O. M. Satnam?
A. Yes Q. In your exhibit G, you
have also written manufactured
for your company? A. Yes Q. And
the design is similar? A. It’s
not the same Q. It’s written in
white? A. Yes the writing is in
whit Q. And it is the same as in
exhibit G that is exhibit A is
the same as in exhibit G? A.
It's not the same like I said
because of the shade of blue Q.
And then vertically on the lower
end, you have strips of blue,
red and white, is that correct?
A. Yes Q. And this is a similar
design that you have in your
exhibit G? A. Yes Q. The blue
design is repeated on, the
northern edge of the product and
as well as the southern edge? A.
Yes Q. There are two separate
writings all ringed in red at
the back, is that correct? A.
Yes Q. And then you have the bar
code also written there, is that
correct? A. Yes there is a bar
code Q. Look closely at the bar
code in exhibit G which is your
product. Can you read the bar
code in exhibit G to the hearing
of the court? A. Read out in
court (4712781553519) Q. That is
your product exhibit G, is that
correct? A. Yes Q. Take a look
at the plaintiff’s product that
is the saikirpa naphthalene
balls. What is the bar code that
you see written there? A.
4712781553519 “ The defendants
so initiated the packaging,
design and labeling of his
product Exhibit G to such an
extent that the colours, the
design, the packaging and even
the bar code on the defendant's
product was the same as those of
the plaintiff. Indeed the
defendant's product was
obviously designed to deceive
customers into thinking that the
defendant's product were
manufactured by the plaintiff.
The defendant's product by its
design, colour, size, labeling
when compared to the plaintiff's
product was clearly designed to
cause confusion in the minds of
the customers which is precisely
what the defendant succeeded in
doing. The evidence of the
defendant that their product
Exhibit G was different from the
plaintiff's product Exhibit A is
absolutely false. The defendant
clearly sought and did succeed
in misrepresenting his product
Exhibit G as those of the
plaintiff and I so find. The
plaintiff led evidence to show
that as a result of the
defendant's introducing his
offending product into the
Ghanaian market-it (the
plaintiff) was unable to sell as
many of the goods as they
otherwise would have and led to
the plaintiff's sale dropping by
as much as 50%. The defendant's
disputes the fact that the
introduction of his product into
the market led to a loss of
business for the plaintiff. The
defendant said that the goods
the subject of the dispute were
the very first consignment he
had brought into the country and
that upon being notified that he
had infringed the plaintiffs
trade mark he replaced the
packaging of about 400 cartons
of the offending product. The
defendant tendered Exhibit 3 as
the new packaging he made for
the product. But the defendant
was aware that there was an
order from the court on him to
deliver all the offending
products to the court. Inspite
of the knowledge of the order of
the court the defendant
deliberately flouted the order
by not just refusing to deliver
the products to court but
clandestinely sought to change
the packaging and labelling of
his offending product. The
defendants conduct in
deliberately flouting the court
order was reprehensible. In
Kerly's Law of Trade mark and
Trade Name 13th edition (Sweet
and Maxwell) the learned author
stated in respect of damage at
page 424 paragraph 14-30 as
follows: “ Proof of damage is
not in every case essential to
enable the claimant to maintain
the action, it depends on the
circumstances If the claimant
shows that the defendant is
acting so as to pass-off goods
as those of the claimant which
are not the claimant's, it will
generally be assumed that the
claimant is thereby prevented
from selling as many of the
goods as he otherwise would
while even if there is no direct
loss of sale (as where the
claimant and defendant are not
in direct competition) the
confusion between the two
suppliers puts the claimant's
goodwill at risk...." In this
instance case there is no doubt
that the product of the claimant
and the defendant are in direct
competition and the plaintiff
led evidence to show that the
defendant's conduct in
passing-off his product as those
of the plaintiff led to a 50%
loss in sale and a substantial
loss of money. The plaintiff's
evidence shows that the company
had expended a considerable
amount of money on getting
samples of the product from
China to be tested by both the
Food and Drug Board and the
Ghana Standard Board. The Trade
mark had also been registered
and money had been expended on
marketing, advertising etc to
make the product a household
name and to acquire its
reputation and goodwill. It is
this reputation and goodwill
that the defendant exploited to
his advantage and benefit. The
defendant had by his conduct
caused the plaintiff
considerable damage and loss of
profit. For this reason I will
award the plaintiff a global sum
of GH˘25,000 as damages. Before
the trial began this court on an
application by the plaintiff
ordered the defendant to
surrender all the offending
products to the court pending
the final determination of the
court. Only 60 boxes were
retrieved by the plaintiff
whilst the defendant
clandestinely made it impossible
for the rest of the offending
product to be recovered. It is
hereby ordered that the
offending products in the
custody of the court be
destroyed. I will therefore
enter judgement in favour of the
plaintiff in terms of relief a),
b), c). I will thus award the
plaintiff general damages which
as already indicated is in the
sum of GH˘25,000. Cost of GH˘10,000
against the defendant. COUNSEL
GEORGE ANKOMAH MENSAH FORIHE
PLAINTIFF CHRISTOPH KOKA FOR THE
DEFENDANT |
