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JUDGMENT
1. The Plaintiffs claim
against the Defendant the
following reliefs.
“(i). An injunction to
restrain the Defendant from
infringing registered trade mark
No. 27,260.
(ii). An order for
delivery up, seizure and
destruction of all infringing
goods.
(iii). Verification upon
oath that the Defendant no
longer has in its possession
custody or control any articles
so marked.
(iv). General damages or in
the alternative an account for
profits for infringement of the
registered trade mark, together
with an order for payment of all
sums found due to the Plaintiff
with interest thereon”.
2. PLAINTIFF’S CASE
The 1st and 2nd
Plaintiffs claim to be
registered entities under the
laws of Indonesia and own a
trade mark known as ‘SOKLIN’
registered in Ghana. The 3rd
Plaintiff is a company
registered under the laws of
Ghana and states it is the sole
agent and distributor of the
SOKLIN products in Ghana a
product they have marketed under
the said mark with the approval
of the Food and Drugs Board a
regulating body under the laws
of Ghana. The Plaintiffs allege
that the Defendant has infringed
the Plaintiffs mark aforesaid
without due cause and have taken
unfair advantage of the
Plaintiffs to the detriment of
Plaintiffs character and the
reputation of Plaintiffs marks.
In consequence of Defendant’s
conduct, Plaintiffs claim they
have suffered serious loss and
damage because Defendant
deliberately sells its
infringing product at a price
lower than Plaintiffs by reason
of which the Plaintiffs claim
they have suffered loss hence
the reliefs claimed in this
action.
3. DEFENDANTS CASE
The Defendant denies Plaintiffs’
claim albeit evasively in
paragraphs 1 and 3 of the
statement of defence. The
Defendant has pleaded the
general issue and avers that
Plaintiffs have not suffered any
loss as alleged and are
therefore not entitled to any
remedy.
4. ISSUES FOR TRIAL
At the close of the mandatory
pretrial conference between the
parties, the following issues
were set down for trial.
“(i). Whether or not the
Defendant has ever used the
Trade mark ‘Soklin’ in relation
to soap and detergents in the
course of its trade.
(ii). Whether or not the
Defendant had ever parked its
substandard powdered detergent
into ‘Soklin’ marked packets,
sachets and cartons at its
factory at Atafoa, Barekese
Road, Kumasi.
(iii). Whether or not the
Defendant has distributed and
sold soap and detergents bearing
the mark ‘SOKLIN’ at retail
outlets in and around Kumasi
metropolis.
(iv). Whether or not the
Defendant has infringed the
trade mark registered as No.
27260.
(v). Whether or not the
Plaintiffs are entitled to their
claim”.
5. DETERMINATION OF
ISSUES BY THE COURT
The general position is that to
enable a court decide a case one
way or the other, each party to
the suit must adduce evidence on
the issues to be determined by
the court to the standard
prescribed by law. This position
is buttressed by Section 14 of
the Evidence Act 1975 (NRCD 323)
which provides that:
“Except as otherwise provided by
law, unless and until it is
shifted a party has the burden
of persuasion as to each fact
the existence or non – existence
of which is essential to the
claim or defence he is
asserting”
6. The issues to be
determined in this suit are the
issues set down by the parties
and issues of law arising from
the pleadings of the parties and
the evidence adduced. The law of
proof is regulated by the
provisions of the Evidence Act.
The general position of which is
captured in the maxim “He who
asserts must prove” This
position has been given judicial
approval in several cases
including ZABRAMA VRS. SEGBEDZI
[1991] 2 GLR 221 at 224 where
Kpegah J. A. (as he then was)
stated as follows:
“……………a person who makes an
averment or assertion, which is
denied by his opponent, has a
burden to establish that his
averment or assertion is true.
And he does not discharge this
burden unless he leads
admissible and credible evidence
from which the fact or facts he
asserts can properly and safely
be inferred. The nature of each
averment or assertion determines
the degree and nature of the
burden”.
7. A Similar position
was expressed by the Supreme
Court in the case of ABABIO VRS.
AKWASI III [1994 – 95] GBR Part
II at page 774 where Aikins JSC
stated in Holding (1) that:
“a party whose pleadings raised
an issue essential to the
success of a case assumed the
burden of proving such issue.
The burden only shifted to the
Defendant when the Plaintiff has
adduced evidence to establish
the claims”
8. In the context of the
pleadings of the parties in this
suit and the issues set down for
determination, it is my view
that the Plaintiff carries the
burden of persuasion and of
proof there being no
counterclaim by the Defendant.
This burden, the Plaintiff is
required to discharge on the
preponderance of the
probabilities as provided for
under sections 12(1) and 12(2)
of Evidence Act (NRCD 323).
PLAINTIFFS’
EVIDENCE
9. How did the
Plaintiffs discharge their
burden in this suit Plaintiffs’
evidence per Madam Gifty
Champion is that she caused the
name of ‘Soklin’ to be
registered with the Food and
Drugs Board as a soap and was
duly certified. The witness
testified that she subsequently
undertook a trade mark
registration of the name and
design ‘Soklin’ and was issued a
certificate Exhibit ‘A’ in the
name of 1st Plaintiff
under No. 27260, in class No. 3
of the Trade Marks register. The
certificate was later renewed as
evidenced by Exhibits ‘B’ & ‘C’.
The certificates issued by the
Food and Drugs Board and
renewals thereof were also
tendered as Exhibits ‘D’, ‘F’
and ‘F1’.
10. From the testimony of
Plaintiffs’ first witness there
is overwhelming evidence of due
registration of trade mark of
the name ‘SOKLIN’ by the 1st
Plaintiff and authorisation by
the Food and Drugs Board to deal
in the said product in
accordance with Section 11 of
the Food and Drugs Act 1992 PNDC
Law 305B as amended by the Food
and Drugs (Amendment) Act 1997
Act 532.
11. Under cross
examination by the Defendant’s
counsel no material fact
supported by the testimony of
the Plaintiffs’ first witness,
was discredited, contradicted
nor impeached. The only issue
raised by the Defendant’s
counsel’s cross examination is
one bothering on the 3rd
Plaintiff’s capacity to bring
this action which was neither
raised by the Defendant’s
pleading nor was the attack on
the non existence of the 1st
and 2nd Plaintiff
successfully established by
cross – examination.
12. The line of cross
examination adopted by the
Defendant’s counsel therefore
has implications on the
testimony of the Plaintiff’s 1st
witness. There being no
challenge to the testimony
during cross examination the
Defendant is deemed to have
admitted the evidence. The
principle of implied admission
though with exceptions in
certain circumstances will apply
in this situation since
Defendant’s counsel failed to
challenge Madam Champion or her
testimony. See the case of
MANTEY & ORS. VRS. BOTWE [1989 –
90] GLR 179.
13. As correctly cited by
the Plaintiffs’ counsel in his
written address, the Plaintiffs
in the circumstances did not
need to adduce any further
evidence in proof of their
ownership and due registration
of the trade mark on the
principle established by the
famous case of FORI VRS. AYIREBI
[1968] GLR 627 and QUAGRAINE
VRS. ADAMS [1981] GLR 599 CA.
14. In the premises
therefore, I find that the 1st
and 2nd Plaintiffs
from the facts and evidence are
the registered owners of the
trade mark called ‘Soklin’
registered as No. 27260 same
having been satisfactorily
proved by the Plaintiff’s ‘PW1’
to the prescribed standard of
law and the Defendant having
failed to cross examine the
‘PW1’s testimony on the issue.
15. I shall now deal with
the issue whether or not the
Defendant has ever used the
trade mark ‘Soklin’ in relation
to soap and detergents in the
course of its trade.
16. In further testimony
‘PW1’ testified that some
powdery substances were
discovered to have been parked
into ‘Soklin’ sachets at the
Defendant’s work place.
Upon examining Exhibits ‘M5’
‘PW1’ identified a man who was a
worker in the premises of the
Defendant and further identified
the packet of the powdery
substances into ‘Soklin’ sachets
and packages as captured in the
pictorial Exhibits ‘M6’ to
‘M12’.
17. ‘PW1’ further
testified that the workmen in
Defendant’s factory used
‘Soklin’ cellotape on the
‘Soklin’ boxes loaded with the
Defendant’s powdery substance
thereby presenting same to the
general public as and of the
Plaintiffs; conduct which
constitutes infringement of
Plaintiffs’ mark.
18. Not only was this
evidence overwhelming, the same
was corroborated by one Prince
Opoku Boateng, Defendant’s
witness who testified under
cross examination admitting that
the Defendant was still in
production and that the
equipment as in Exhibit ‘M5’ was
still in use.
When counsel for the Plaintiffs
asked the question.
“Q. I am putting it to you
that on 4/7/2008 the sachets
that came out of that machine
were ‘Soklin’ sachets is that
correct?
Defendant’s witness
answered
A. That is
correct.
Q. Look at Exhibit ‘S1’
which your accountant signed. It
is dated 4/7/2008. That is
correct?
A. That is
correct ………………………………………
Q. All these signed by
your accountant were the goods
collected from your factory.
That is correct?
A. It is
correct on the paper but I was
not in by that time”.
19. From my evaluation of
the evidence adduced through
cross examination of the
Defendant’s witness, it is not
in doubt that he corroborated
the evidence of the Plaintiffs’
witness that the Defendant was
infact using ‘Soklin’ sachets
and boxes to load and market its
powdery substance in order that
the general public will receive
Defendant’s product as if it
were the Plaintiffs’.
20. Counsel for the
Plaintiffs has in his written
address referred me to the
decision of the Court of Appeal
in the case of BANAHENE VRS.
ADINKRA [1976] 1GLR 346 at page
350 where the court held that
“The rule is that where the
evidence of one party on an
issue in dispute is corroborated
by witnesses of his opponent,
while that of his opponent on
the same issue stands
uncorroborated even by his own
witnesses, a court ought not
accept the uncorroborated
version in preference to the
corroborated one unless for some
good reason (which must appear
on the face of the judgment) the
court found the corroborated
version incredible or
impossible”
21. I have not found from
the entire evidence before me,
any reason to declare the
corroborated evidence of the
Plaintiffs by the Defendant’s
witness objectionable on any
ground. The rule in BANAHENE
VRS. ADINKRA supra having been
cited with approval by the
Supreme Court in the case of
MANU VRS. NSIAH [2005 – 2006]
SCGLR 25 at page 33, I shall
follow and apply same in my
finding which I hereby do and
find that Defendant had used and
applied the trade mark ‘Soklin’
in relation to the course of its
trade in detergents and had
parked its powdery substance in
sachets and packets to present
same as and of the Plaintiffs’
production. Save that no
evidence was adduced as to the
quality of the Defendant’s
product in terms of its
standard, I hereby determine
issues 1 and 2 in favour of the
Plaintiffs.
22. The third issue for
determination is whether or not
the Defendant has distributed
and sold soap and detergents
bearing the mark ‘Soklin’ at
retail outlets in and around
Kumasi metropolis.
In his testimony ‘PW2’, one Yaw
Kyei described himself as the
business manager of the 3rd
Plaintiff and testified that he
knows the 1st and 2nd
Plaintiffs as suppliers of the 3rd
Plaintiff from Indonesia. His
testimony is that 1st
and 2nd Plaintiffs
are suppliers of the products
called ‘Soklin’, Santex and
Popular a multipurpose cake
soap.
23. Under further
examination in chief ‘PW2’
testified that sometime in 2008
‘we’ representing the 3rd
Plaintiff he works for, realised
a downward trend in sales of
their Soklin product whereupon a
survey they conducted revealed
that there were imitations of
the ‘Soklin’ brand in the
market. When the 3rd
Plaintiff embarked upon a search
for the source of the imitation
products, it was discovered the
Defendant’s company was
involved. Consequently,
Plaintiffs with the assistance
of the police organised a swoop
on the Defendant’s factory
premises giving rise to the
production of ‘M’ series
Exhibits referred to in this
judgment.
24. In testifying on the
dwindling sales of the 3rd
Plaintiff arising from the
Defendant’s conduct ‘PW2’
tendered Exhibits ‘P’, ‘P1’ –
‘P6’ as evidence of the customs
declarations made by the 3rd
Plaintiff over a period to
substantiate the allegation that
at the height of the Defendant’s
infringement of the Plaintiffs’
trade mark there occasioned a
corresponding fall in the sales
volumes of the 3rd
Plaintiff a development
attributed by ‘PW2’ to the
flooding of the market with the
Defendant’s brand of ‘Soklin’ at
cheaper prices presenting same
to the general public as if it
were the same product of the
Plaintiffs.
25. The evidence adduced
from ‘PW2’ supported by Exhibits
‘P’, ‘P1’ – ‘P11’ is that while
prior to the introduction of the
Defendant’s product in the
market, 3rd Plaintiff
could clear and sell forty
twenty foot containers and
sometimes forty foot containers
the volumes dwindled, over the
months leading to an average of
45% drop in the 3rd
Plaintiff’s volume of sales for
a period of one year.
26. Significantly there is
nothing to say for the Defendant
in terms of contradiction of the
evidence of ‘PW2’ when
Defendant’s counsel cross
examined ‘PW2’. Counsel for the
Defendant limited his cross
examination to the failure of
the ‘PW2’ to tender import
documents for the period January
to December 2009. When ‘PW2’
answered a question under cross
examination that though 3rd
Plaintiff made imports for the
period he did not bring any
documents to court to
substantiate same, Defendant’s
counsel ended cross examination.
What it means is that not having
cross examined ‘PW2’ on all the
evidence adduced during
examination in chief, the
Defendant had admitted same by
implication for failure to cross
examine. MANTEY & ORS. VRS.
BOTWE (supra) applied. It also
means that Defendant has
admitted without contradiction
the documentary evidence
contained in Exhibit ‘H’ which
clearly shows that Defendant had
on 3/6/2008 sold to one Twumasi
its product in the trade mark
name of the Plaintiffs as if it
owned the said trade mark or
that the consent of the
Plaintiff’s had been duly
obtained.
27. For failure to cross –
examine a witness on his
testimony, Lord Halsbury said in
BROWNE VRS. DUNN [1894] 6R. 67
at 258 HL.
“………To my mind nothing would be
more absolutely unjust than not
to cross examine witnesses upon
evidence which they have given
so as to give them notice and to
give them an opportunity of
explaining,………………… and not
having given them such
opportunity, to ask the jury
afterwards to disbelieve what
they said, although not one
question has been directed to
the accuracy of the facts they
have deposed to”.
In the same case, at page 258,
Lord Morris was even more
emphatic He said:
“In this case, I am clearly of
the opinion that the witnesses
having given their testimony,
and not having been cross
examined having deposed to a
state of facts which is quite
reconcilable with the test of
the case, it was impossible for
the Plaintiff to ask the jury at
the trial and it is impossible
for him to ask any legal
tribunal, to say that those
witnesses are not to be
credited”.
28. In the context of the
instant suit, not having cross
examined ‘PW1’ and ‘PW2’
substantially the evidence they
adduced during examination in
chief, I have no reason to
deprive their testimonies of
credit same being consistent
with the pleadings and attested
to in my opinion impressively
and convincingly. In the
premises, I shall determine
issue (iii) set down for
determination in Plaintiff’s
favour.
29. The last issue set
down follows from my earlier
finding that the 1st
and 2nd Plaintiffs
are on the evidence the true
registered owners of the
‘Soklin’ trade mark. The
question whether or not
Defendant has infringed the said
trade mark is answerable from
the evidence of all the
witnesses in this suit.
30. At the close of the
Plaintiffs’ evidence the burden
clearly shifted on the Defendant
to adduce sufficient evidence on
the basis of its pleading if the
Plaintiffs should be held not
entitled to judgment as prayed
for. The nature of the
Defendant’s burden has been more
appropriately captured by
Brobbey JSC in the case of In Re
Ashalley Botwe Lands ADJETEY
AGBOSU & ORS. VRS. KOTEY & ORS.
[2003 – 2004] SCGLR 420 where he
said:
“The effect of sections 11(1)
and 14 and similar sections in
the Evidence Decree 1975 may be
described as follows: A litigant
who is a defendant in a civil
case does not need to prove
anything. The Plaintiff who took
the Defendant to court has to
prove what he claims he is
entitled to from the Defendant.
At the same time if the court
has to make a determination of a
fact or of an issue, and that
determination depends on the
evaluation of facts and
evidence, the Defendant must
realise that the determination
cannot be made on nothing. If
the Defendant desires the
determination to be made in his
favour, then he has a duty to
help his own cause or case by
adducing before the court such
facts or evidence that will
induce the determination in his
favour.
The logical sequel to this is
that if he leads no such facts
or evidence, the court will be
left with no choice but evaluate
the entire case on the basis of
the evidence before the court
which may turn out to be only
the evidence of the Plaintiff.
If the court chooses to believe
the only evidence on record, the
Plaintiff may win and the
Defendant may lose”.
31. Nothing is more
accurate in describing the
position of the parties at the
close of the evidence adduced at
the trial as the above quote. I
have found nothing useful in the
evidence of Defendant’s witness
which will effectively
contradict Plaintiffs’ facts and
evidence to sway a determination
in the Defendant’s favour.
Infact as I have earlier found
in this judgment, the testimony
of Defendant’s witness
corroborated Plaintiffs’ case
and nothing less than a
determination of the issue that
Defendant by its conduct
infringed the trade mark
registered as No. 27260 of the
Plaintiffs’ ‘Soklin’ mark will
ensure that justice has been
done in this case and I
accordingly so hold.
32. Before I arrived at
this conclusion let me state
that I have examined the address
of the Defendant’s counsel
intended to persuade me to make
a finding in Defendant’s favour.
I am unable to do so because
there is no useful legal
argument to my mind persuasive
to sway a decision against the
Plaintiff. The only issue raised
in the address is one of the
capacity of the 3rd
Plaintiff to bring this action
in its name and that of the 1st
and 2nd Plaintiffs.
The issue is a complete
departure from Defendant’s
pleadings. Notwithstanding that,
‘PW1’ while under cross
examination by Defendant’s
counsel successfully established
her relationship with the 1st
and 2nd Plaintiffs
and on whose authority 3rd
Plaintiff commenced this action
in their joint names and in its
name.
33. Indeed in opening the
written address filed by its
counsel on 30/3/10 counsel for
the Defendant stated as follows:
“My Lord 1st and 2nd
Plaintiffs belong to a group of
companies incorporated and
operating under the laws of
Indonesia and own the trade mark
‘SOKLIN’ registered in Ghana as
number 27260 in class 3 in
respect of soap detergent”.
34. I must confess I am at
a loss as to what Defendant’s
counsel means by the Plaintiffs’
lack of capacity to bring this
action not having raised same at
pleadings and interlocutory
stages but in the closing
address where he had from the
quotation above acknowledged the
Plaintiffs’ capacity to sue. My
view is that the issue of
capacity raised by the Defendant
is totally misconceived and
unmeritorious as it is not
supported by any fact, evidence
or legal argument.
35. I need not shop for
any foreign authority to support
my findings in this judgment. It
is simply a case of infringement
of the Plaintiffs’ trade mark
pleaded and sufficiently proved
by the evidence adduced at the
trial of this suit. It is for
this reason and all other
reasons I have earlier set out
that I find for the Plaintiffs
and hereby enter judgment as
endorsed as follows:
(i). Perpetual injunction
to restrain the Defendant from
infringing registered trade mark
No. 27260.
(ii). I hereby grant an
order for the destruction of all
the materials seized from the
Defendant in pursuance of the
order of this Honourable Court
as set out in the inventories
dated 4/7/2008 under the
supervision of the registrar of
this court and officers of the
Environmental Protection Agency
and the Food and Drugs Board.
(iii). An order that the
Defendant shall deliver up for
destruction all other infringing
materials to the registrar of
this court forthwith.
(iv). The Defendant’s
Managing Director shall depose
to an affidavit verifying the
fact that Defendant no longer
has in its possession custody
actual or constructive of any
articles or material bearing the
Plaintiffs’ trade mark.
(v). Finally, the
Plaintiffs have endorsed a
relief for general damages or in
the alternative an account for
profits for infringement of the
registered trade mark together
with an order for payment of all
sums found due to the Plaintiff
with interest thereon.
36. Since Plaintiffs
endorsed relief (v) in the
alternative, I shall grant
general damages as prayed. While
I agree with the submission of
counsel for the Plaintiffs’ on
the guidelines on computation of
damages, I am guided by the
position of Dr. Twum JSC in the
case of DELMAS AGENCY GHANA LTD.
VRS. FOOD DISTRIBUTORS
INTERNATIONAL LTD. [2007 – 2008]
SCGLR 748 Holding (3) where the
learned jurist said in relation
to general damages:
“Special damages is distinct
from general damages. General
damages is such as the law will
presume to be the natural or
probable consequence of the
Defendant’s act. It arises by
inference of the law and
therefore need not be proved by
evidence. The law implies
general damage in every
infringement of an absolute
right. The catch is that only
nominal damages are awarded.
Where the Plaintiff has suffered
a properly quantifiable loss, he
must plead specifically his loss
and prove it strictly. If he
does not, he is not entitled to
anything unless general damages
as appropriate”
37. But that statement of
the law posits a general view in
addressing claims for general
damages. Each case has to be
determined on the peculiar facts
it presents and how the law
applies to those facts. In
Kerly’s Law of Trade Marks and
Trade Names 9th
Edition page 362 paragraph 714
the author stated as follows:
“Proof of damage is not in every
case essential to enable the
Plaintiff to maintain his
action; for if he shows that the
Defendant is acting so as to
pass off goods as those of the
Plaintiff which are not
Plaintiff’s it will generally be
assumed that the Plaintiff is
hereby prevented from selling as
many goods as he otherwise
would”.
In the premises, I shall award
the Plaintiffs GH¢30,000.00 in
general damages. The costs of
this action are assessed at GH¢10,000.00
in favour of the Plaintiffs.
(SGD.)
JUSTICE I. O. TANKO AMADU
JUSTICE OF THE HIGH COURT
BENSON NUTSUKPUI Esq.
(For Plaintiffs)
DR. KWAKU NSIAH
(For Defendant) |
