TREBOR NIGERIA LTD (PLAINTIFFS)
ASSOCIATED INDUSTRIES LTD (DEFENDANTS)
(1971) All N.L.R. 468
Division: High Court
Date of Judgment: 29th May, 1972
Case Number: SUIT NO. K/127/7
Before: Jones S.P.J.
(1) The black elephant was distinctive: there was no infringement of trade mark.
(2) In "passing-off" actions the relevant market is that in which plaintiff has established reputation.
(3) Plaintiff had established reputation in Nigeria and although the jurisdiction of the court was limited territorially to Kano State the relevant market it must consider was the whole of Nigeria, but no further.
(4) Polo mints were not sufficiently similar nor sufficiently widely marketed in Nigeria to affect plaintiffs' case.
(5) Trade custom outside Nigeria was not relevant.
(6) Reputation could be injured by passing-off even though the consumer did not know or care who manufactured the article.
(7) Get-up does not include items of utility value but can include their design and mode of use.
(8) Evidence of actual deception is not necessary.
(9) Evidence of persons who have not been deceived is of little weight while evidence that nobody is deceived is bound to be untrue because it is outside the experience of any man.
(10) Evidence of intention is not directly relevant because the issue is not whether the passing-off was intended but whether it is likely to succeed.
(11) Trade custom cannot be established when a manufacturer has a monopoly, but only when different manufacturers use similar features in the same market. The same considerations apply to the question of whether a name has become "publici juris."
(12) A judge must take the evidence into account especially as to the mentality of the average consumer but ultimately he must decide on his own view of the products whether they are likely to be confused by the average consumer of normal senses viewing them not side by side but separated by time and space.
(13) In the present case the general get-up, despite the different animal trade mark, was so similar that the average consumer would be likely to be deceived. The claim for passing-off succeeded.
(14) An injunction would be granted as prayed. Damages would be assessed by an assessor agreed by the parties, and an order for damages and costs made thereafter.
Judgment for Plaintiffs.
Cases referred to:
Distilleerderlj En Alcoholfabrick "De Papegaai" Voorlileen
Van Berckel & Co., of Van Leeuwenhoeksingle, Deflt, Holland v. Netherlands Distilleries of No. 1, Wateringscheweq, Deleft, (1927) 8 NLR. 48.
G.B. Ollivant case 6 NLR 102.
Reedaway v. Banham 1896 A.C. 199.
De Facto Works Ltd. v. Odumotun Trading Co., 1959 LLR 33.
White Hudson Co. Ltd. v. The Asian Organisation 1965 RPC. 45.
Parker Knoll Ltd. v. Knoll International Ltd. 1962 RPC 265.
F. Hoffmann-La Roche & Co. A.G. & anor. v. D.D.S.A. Pharmaceuticals Ltd. (1972) RPC 1.
J.B. Williams Co. v. H. Bronnley & Co. Ltd. 26 RPC 765.
Schweppes Ltd. v. Gibben 22 RPC 601.
John Haig & Co. Ltd. v. Forth Blending Co. Ltd. 1953 RPC 259.
Hedge v. Nicolls (1911) A.C. 693.
T. Oertli A.G. v. E.J. Bowman Ltd. 1957 RPC 388.
Re Christianson's Trade Mark 3 RPC 54.
Bryant & May v. United Match 50 RPC 12.
Singer Manufacturing Co. v. Loog 18 Ch.D 410.
Gottschalk Ltd. v. The Spruce Manufacturing Co. 1 FSC Sel. J. 42.
SUIT NO. K/127/7
G. Bentley (with him, J.B. Majiyagbe) for the Plaintiffs.
D. Garrick (with him, O. Quin) for the Defendants.
Jones, S.P.J.:-This is an action by Trebor (Nigeria) Ltd. the makers of Trebor Peppermints and other confectionaries against Associated Industries Limited, the makers of Minta Supermints. Plaintiffs claim that defendants have infringed their trade mark which was registered as No. 15816 on the 6th May, 1964. Exhibit 4 is a certificate of registration. It is not disputed in the evidence that while plaintiffs have been marketing Trebor Peppermints for many years and have been manufacturing them locally since 1963, defendants did not manufacture and market Minta Supermints or any other peppermint until about November, 1971. When they did, plaintiffs claim that they used a wrapper for their rolls of mints sufficiently similar to the Trebor wrapper to constitute an infringement of the trade mark. In the alternative, and this is really the substance of this case, plaintiffs claim that defendants are guilty of passing off their products as that of plaintiffs.
I can deal with the claim of infringement of trade mark very quickly. Trebor's trade mark consist of the word "Trebor" and a lion which shows up as a light grey colour on the representation attached to this certificate of registration. On the Trebor Mint roll it is a gold colour, but no claim to the exclusive use of any colour is made in the registration. The background to the trade mark is black. The remainder of the wrapper is made up of the words "extra strong" "peppermints" and "containing genuine oil of peppermint." The right to the exclusive use of those words is disclaimed in the registration. They are on a light grey background in the representation attached to the registration. This background is in fact green on the wrapper containing the roll of mints but no exclusive right to any particular colour is claimed though the whole wrapper is registered. Nowhere on defendants' mints is a lion or a golden animal or the word "Trebor" or any word similar to the word "Trebor". Instead an animal which is clearly an elephant and is printed in black appears six times together with the word "Minta". The descriptive wording is similar but is not the same and I cannot find any reasonable possibility of confusing the two trade marks. (I use the word "trade mark" as well for the defendants black elephant and the word "Minta" as for the plaintiffs gold lion and the word "Trebor" although there is no evidence that the elephant and "Minta" are in fact registered trade marks. However there is both defence evidence and the evidence of 1 P.W. that defendant parent company P.Z. Ltd. has for some years used and become associated with an elephant as a trade mark on many of the goods which it manufactures and markets though D.W.1 qualifies this association by limiting it to "the trade," "the distributor" and "P.Z.'s own customers", and I am inclined to think this nearer actuality).
Added to this there is evidence on both sides that these marks are referred to by a wide section of the public in the North of Nigeria as "Maizaki" and "Maigiwa", "Zaki" and "Giwa" meaning in Hausa respectively lion and elephant. There is no suggestion that the two marks are lumped together in a generic term such as "animal" or "wild beast", in the same way as the term "bird" was used to describe both trade marks one of which was a parrot and the other a toucan in the case Distilleerderij En Alcoholfabriek "De Papegaai" Voorlileen Van Barckel & Co., of Van Leeuwenhoeksingle, Deflt, Holland v. Netherlands Distilleries of No. 1 Wateringscheweq, Deleft, Holland (1927) 8 NLR. 48 or as in G.B. Ollivant & Co. Ltd. v. John Christian & Co. 6 NLR. 102 in which two differently armed men on horseback were known generally in the market as "Maidoki" (Horseman). I find therefore that the claim of infringement of trade mark fails.
The claim for damages for passing-off cannot be so easily decided. The principle was clearly stated by Lord Halsbury L.C. in Reedaway v. Banham (1896) A.C. 199 at 204 when he said,
"For myself, I believe the principle of law may be very plainly stated and that is, that nobody has any right to represent his goods as the goods of somebody else."
The plaintiffs originally drew the attention of the defendants to their belief that the label under which the defendants intended to market their brand of peppermints was by reason of colour and size likely to result in the passing-off of defendants product as that of plaintiffs in a letter dated 24th March, 1971, a copy of which has been admitted in evidence as Exh. 6. The main defence to this claim is contained in defendants' reply to that letter. This is Exh. 7. In this defendants averred that despite similarity of colour the two wrappers are quite distinctive and that they honestly believed that there was no likelihood of any similarities in the wrapper leading to any confusion between the two brands in the public mind. The claim and defence extend beyond the wrapper itself and include the size of tablets: size of roll, the materials used for packing both the rolls and the packets, the methods used for packing, the quantities and the general get-up of packaging at every stage of distribution.
Paragraph 14 of the amended statement of defence contains a defence which goes to plaintiff's right to bring this action. This states:-
"That plaintiffs are barred by laches and acquiescence from maintaining this action because they have allowed without complaint the sale of a mint known as 'Polo' since 1965 which mint is sold in a get-up similar to that of plaintiffs."
Defendants have not pressed this point. Mr Garrick for defendants did not raise it in cross-examination of plaintiffs' main witness, the Chief Executive of Trebor Nigeria Ltd., Mr Cubin, 1 P.W.; nor did he mention it in his address to the court. This may have been because it was one of the last points dealt with by 1 P.W. at the end of the examination in-chief and Mr Garrick may well have thought that that evidence dealt adequately with this defence. This is what 1 P.W. said:-
"We have taken no proceeding against Polo because they are sold in rolls which can be clearly distinguished from Trebor. The wrapper contains no gold colouring and the green, white and black are in different colour weights. The rolls are in different sizes and they are sold in a display carton instead of our polythene bag. I have not seen Polo being sold widely in Nigeria. They are sold mainly in supermarkets. They are displayed thus (here witness demonstrated a box with the lid folded back). One of the main reasons Polo does not sell widely is its high price, and the tablet is too small. The centre hole is taken as not good value for money and the flavour is too mellow. It is no threat to our sales."
Exhibit 22 is a roll of Polo mints with one mint missing. It is slightly smaller than the Trebor roll and the word Polo is printed in very large letters with the "O" in white so that it immediately strikes the eye. Plaintiffs' failure to bring a passing-off action against the maker of "Polo" mints has in my view been completely justified. They are not guilty of laches or acquiescence.
I now come to the main body of the claim. This case has been well presented by Mr Bentley for plaintiffs and Mr Garrick for defendants.
At the end of the case both Counsel addressed me helpfully and at length. Many of the cases cited were common to both addresses. In particular, the case De Facto Works Ltd. v. Odumotun Trading Co. 1959 LLR. 33. In that case, in a carefully considered judgment, Coker J (as he then was) discussed the principles on which in a passing-off action the issue of likelihood of deception can be resolved. It seems to me that there is little necessity to go beyond the dicta in that case in considering the law applicable to present case. Nevertheless, I would not be doing justice to the full arguments and authorities submitted by both Counsel if I were to fail to consider further relevant cases which they have brought to my attention.
The detailed complaint of plaintiffs is contained in paragraphs 3 to 10 inclusive of the statement of claim. These paragraphs read as follows:
3. For upwards of twenty years peppermint tablets manufactured or sold by the plaintiffs and their predecessors have been sold in cylindrical rolls bearing a distinctive label in substantially the form of the said Trade Mark, the said label being printed in a combination of the colours, white, black, green and gold, and which combination of colours together with the picture of a lion have become distinctive of the get-up and general lay out of the plaintiffs said product.
4. The said rolls each containing 16 tablets also contain aluminium foil as packaging material and are marketed in packs of twelve divided into two layers by a strip of thick cardboard or thick paper all contained within a polythene cover or bag, and 32 of such packs are contained within one carton.
5. The plaintiffs and their predecessors have in Nigeria manufactured and sold very large quantities and by reason of the matters averred in paragraphs three and four hereof the said carton roll label and pack have become very well known and distinctive of the peppermint tablets of the plaintiffs and none other.
6. The said peppermint tablets are known widely in Kano State as "Minti Mai Zaiki" or "Trebor Minti Mai Zaki" or "Minti Trebor" or "Minti Trebor Mai Zaki."
7. The defendants are a company incorporated in Nigeria and having their Registered Office at Aba, East Central State and have since the month of November 1971 carried on business there, at and elsewhere in Nigeria as manufacturers of and dealers in peppermint tablets.
8. The defendants have since the registration of the said Trade Mark-the registration of which has been well known to them at all material times-and before the issue of this Writ put upon the market and sold in Kano State peppermint tablets not of the plaintiffs manufacture or merchandise in boxes, packs and rolls and with labels which are a colourable and deceptive imitation of the said well known boxes, packs, rolls and labels of the plaintiffs and in particular:-
(a) The cartons of the defendants hold 32 packs-the same number as do the cartons of the plaintiffs.
(b) The packs are wrappers of polythene, each containing twelve rolls divided into two layers of six rolls, as are the plaintiff's packs-and the two packs are identical in shape and size and the same use is made of the polythene container.
(c) The rolls of peppermint tablets manufactured and sold by the defendants are of the same shape, dimensions and quantity of tablets as those of the plaintiffs, and identical use is made by the defendants of aluminium foil.
(d) The defendants have used the same combination of colours as have the plaintiffs, which fact Solicitors acting on behalf of the defendants have admitted by a letter dated the 29th day of June 1971 addressed to the plaintiffs Solicitors.
(e) The defendants label bears the picture of an animal printed in virtually the same size and a similar pose to that of the animal depicted on the plaintiff's label.
(f) The printing on the defendants label is in the same colour combination as that on the plaintiff's label.
9. By reason of the matters averred to in Paragraph 8 hereof the defendants' said product has become known in Kano State as "Minti Mai Giwa" or "Minti Mai Giwa Trebor" or "Minti Trebor Mai Giwa" or "The New Trebor".
10. The use by the defendants of their said boxes, packs, rolls and labels in connection with peppermint tablets not of the plaintiffs manufacture or merchandise is an infringement of the plaintiffs said Registered Trade Mark and is calculated to lead and has in fact lead to deception and to the belief that the defendants peppermint tablets are the peppermint tablets of the plaintiffs manufacture and is further calculated to cause and must have caused peppermint tablets not of the plaintiffs manufacture or merchandise to be passed off as and for the peppermint tablets of the plaintiffs and the plaintiffs have and will suffer damage.
The allegations in paragraph 8 have been substantiated in evidence and are not denied in defendants' evidence except to the extent that it is not admitted that the animals depicted on the two wrappers are similar or that the colour combinations are the same.
The exhibits are before me. These consist of a polythene bag of 12 rolls Trebor mints Exh. 1; a cardboard carton of Trebor Peppermints containing 32 such bags, Exh. 2; a quarter of a roll of Trebor mints Exh. 3; this quarter has been put in evidence because this is the way many petty traders sell these mints (evidence of 1 P.W. which I believe). Then there is a bag of 12 rolls of Minta Supermints, defendant's product, Exh. 5; and a cardboard carton of Minta Supermints containing 32 such bags, Exh. 10; a single roll of "Minta Supermints" Exh. 14; and a single roll of Trebor peppermints Exh. 15; a cardboard divider used in the Trebor polythene bags Exh. 16; and one used in the Minta polythene bags, Exh. 17. Some other brands of peppermints put in by defendants through 1 P.W. for comparison with the open packet of Trebor mints, Exh. 18: they are: Exh. 19 an open packet of Minta; Exh.20, an open packet of Trebor mints made in U.K.; Exh.21, an open roll of Carton mints; Exh.22, an open roll of Polo mints; Exh.23, an open roll of Sharps mints. These were put in to show that the colours white and green are common to the trade and that the colour green is widely associated with mint products. This was conceded by 1 P.W. and he also conceded that all these Exhs.18-23 use aluminium foil and that Exhs.21-22 use black while Exh. 21 also uses gold. This witness also conceded that the colour green used on the Minta wrapper is a different shade from that on the Trebor wrapper and the black elephant on Minta makes a striking impact against the green on Exh. 14.
Exhibits 24-30 inclusive are photographs of peppermints for sale on counters in Kano market. The significance of these photographs is that three of them, that is to say, Exhs. 24, 25, 27 show clearly Minta and Trebor stacked together. In fact it is clear that this represents two stalls only, Exhs. 24 and 27 being photographs of the same stalls. These photographs also show other products such as Cafenol and Kettle tea where each brand is stacked separately. This is significant because there is a strong preponderance of evidence-for example, the evidence of 9 D.W., Mrs Sabina Thomas, the trader who came from Ebute Metta to give evidence-that it is usual to stack products and brands separately to avoid confusion and to make the job of the store-holder easier. Exh. 31 is a packet of Vival peppermints.
Exhibit 32 is a carton containing a large number of brands of peppermints. Its main significance is the preponderance of the use of the colours white, green and black. Exhibit 33 is a carton containing a number of brands of mint flavoured sweets. Again the colour green is preponderant.
Exhibit 34 consists of eight small packs of blue, the substance used in washing white cloth materials. These are six different brands and the six small packs are almost identical in size and shape. They are identical in colour and they are distinguished only by their different labels. The colour is explainable by the writing "Ultramarine Blue" on the label of five of them.
Similarly, Exhs. 38-49 inclusive consist of tins of tomato paste. These tins are not of identical sizes but they are very similar. All but Exh. 38 which is a white-metal tin are of yellow metal (Exh. 39 and 42 have a white metal base). The labels are painted on them and the basic colour of them all is red. Except for Exhs. 39, 40 and 44 gold is also used. In Exh. 39 alone silver lettering is used. Exh. 39 was produced by the 9 D.W. Mrs Thomas as a tin of P.Z. Ltd. tomato paste, that is to say the product of the defendants. I hesitate to place weight on a fact not averted to in the evidence, but I cannot help noting in passing that by the silver lettering, defendants have clearly chosen to distinguish their product from those of their competitors in the tomato paste market. Exhibits 40 and 44 make use of white and green instead of metallic colour.
The position of the defendants with regard to the Exh. 34 and Exhs. 38-40 is firstly that there are two groups of products containing many different brands. The get-up of each brand within each group is extremely similar and yet there is evidence that the customers are not confused (9 D.W., Mrs Thomas). Mr Bentley has submitted that this is quite a different matter. He says that the public have known the similarities in the tomato paste tin of old and looks specially for a distinguishing mark. The brands are also stacked separately. On both these points he has the support of 9 D.W., Mrs Thomas. The same argument would apply to the boxes of "blue".
Secondly these brands of tomato paste and blue are examples of trade custom. In this respect the defence would have me say that they are comparable with Exhs. 32 and 33. These two Exhs. show a vast number of peppermint-flavoured products all using the colour green and all using the colour white except for "Aero peppermints bar" and "Tobler mint chocolate bar" and "Mintola chocolate peppermint cream." Exhibit 33 contains nine rolls of peppermints none of which is made in Nigeria. Two of these are "Trebor" mints and of these two, the one marked No.3 alone according to the unrebutted evidence of Mr Williams, 3 P.W., has been on sale in Nigeria. Mr Bentley submits that the condition of the market outside Nigeria is not relevant to this action.
He has cited the case of White Hudson Co. Ltd. v. The Asian Organisation 1965 RPC 45. That case went to the Privy Council. It was a matter of passing off sweets in a red-coloured wrapper in Singapore. Lord Guest said this:
"An attempt was made by the defence to show that the red-coloured wrappers were common to the trade, this attempt fails as it was clear on the evidence that prior to 1953 no wrapper similar to that used on the plaintiffs sweets had ever been used whether medicated or otherwise in Singapore and from 1953 to 1958 the plaintiffs sweets were the only sweets so wrapped which were sold in Singapore."
Lord Guest also delivered a judgment in Parker Knoll Ltd. v. Knoll International Ltd. 1962 RPC 265. He said there, at p. 288 that appellants, Knoll International Ltd., claimed the right to sell furniture in England under the trade names "Knoll" and "Knoll International"
"in virtue of the fact that their name was Knoll International and that their furniture had for a number of years been sold in other countries under the trade marks.. These considerations are, in my opinion, irrelevant in deciding the legitimate scope of the appellants' trading activities in this country" (my italics).
In the present case between at the latest 1963 and to the end of 1971 plaintiff's peppermints were virtually the only peppermints on the market in Nigeria using the type of wrapper which can be seen in Exh. 15. As I have already mentioned, I consider the very limited market of "Polo mints" to have no practical significance. In De Facto Works v. The Odumotun Trading Co. (above), the territorial limitations of such an action was similarly stressed. I therefore accept Mr Bentley's submission that proof of a trade custom outside Nigeria is not relevant to the question whether there is a likelihood of defendant's products being mistaken for that of plaintiffs in Nigeria.
I think it is reasonable for me to consider the market in the whole of Nigeria. However, it has to be remembered that it is in Kano State that the acts complained of were done and are being done and that the territorial jurisdiction of this Court is limited to Kano State. It might therefore be said that in considering passing off I should limit the market to Kano State. I have not been addressed on this point, but I think I can give a firm opinion that to so limit the market would be wrong. The issue is basically a factual and practical matter. People come and go from State to State. Advertising is not confined to State limits. Newspapers and television and radio have regional and national coverage. The market I am considering is the practical market. By that I mean the market in the framework of which sales are affected. I am not concerned with the state of affairs in Australia or Alaska, but I am concerned with market which extends beyond Kano State. It has been suggested by the evidence of 2 D.W. that I should consider the whole of West Africa to be within my terms of reference. I do not think that can be correct. I do not think the Kano public has any practical connection with the peppermint market in Ghana or Guinea. The relevant market for practical purposes is Nigeria. And because that is the practical market, that is in my view the relevant market in this case.
It is, then, clear that in deciding this, the relevant market is the market in which the goods which might be so mistaken are sold. There may be many other markets where there would be no possibility of confusion. It is extremely unlikely in the light of Exhs. 32 and 33 that plaintiffs would even contemplate bringing this action in Europe. That is beside the point. Trade custom may be used as a defence only when certain things are common to two or more manufacturers. Clearly it cannot arise out of a monopoly and for practical purposes and for the purposes of this action plaintiffs have enjoyed a virtual monopoly for this product in Nigeria, the only relevant market. This monopoly situation prevents the establishment of any trade custom in peppermints in Nigeria. Indeed it is more likely to establish reputation (see Hoffman-La Roche & Company A.G. v. D.D.S.A. Pharmaceuticals Ltd. (1972) RPC1).
Finally there is a point implicit in the evidence for the defence that the public either do not know or do not care who manufacture these peppermints. This point is I think within the ambit of the general denial in para. 12 of the Statement of Defence. It was a point raised and answered in the recent case F. Hoffman-La Roche & Company A.G. and anor. v. D.D.S.A. Pharmaceuticals Ltd. (above) where part of the head note reads-
"Whether public concerned with identity of source of supply of drug"
The subject matter of that case was a green and black capsule identical with that of the drug sold by plaintiffs under trade name Librium. Defendants marketed the same chemical in the same coloured capsules but bearing the letters D.D.S.A. The Court of Appeal (Eng) dismissed defendants' appeal, and Harman L.J. said this (p.20)
"Goods of a particular get-up just as much proclaim their origins as if they had a particular name attached to them, and it is well known that when goods are sold with a particular get-up for long enough to be recognised by the public as goods of a particular manufacturer it does not matter whether you know who the manufacturer is" and later ...."The fact that (a member of the public) did not mind who the manufacturer was appears to me to be immaterial."
That case is relevant to the present case in another way, too. It concerned reputation earned by a ten years monopoly.
I will now consider the question of reputation. Again it is local reputation which is relevant. Clearly, nobody in the "tomato paste" trade or the "ultramarine blue" trade could claim reputation with regard to the general get-up of tomato paste packaging and "ultramarine blue" packaging in Nigeria. Mr Bentley says that because of the virtual monopoly of Trebor mints in Nigeria the general get-up of this product is associated with his client's brand. On this point "Polo mints" are even less significant since as has already been noted, their general get-up is in a number of respects quite dissimilar to that of Trebor. I have little difficulty in deciding that plaintiffs have established reputation in respect of their get-up of these products.
But of what does this get-up consist? Mr Garrick has pointed out that the courts are reluctant to accept as get-up anything which is useful and he has cited the case J.B. Williams Co. v. H. Bronnley & Co. Ltd. 26 RPC 765 where at 770 Fletcher Moulton LJ said, in an interjection during Counsel's address:
"Every man has a right to use that which is most useful...it is only when the thing used is capricious that there can be any suggestion of passing-off."
And in his judgment (at 773), he said:
"The get-up of an article means the capricious addition to the article itself-the colour or shape it may be, of the wrapper or anything of that kind; but I strongly object to look at anything that has a value in use as part of the get-up of the article."
As against this is dictum of Lord Halsbury in Schweppes Ltd. v. Gibben 22 RPC 601 (also cited by Mr Garrick) when he said, without any such qualification,
"The whole question in this case is whether the thing-taken in its entirety, looking at the whole thing-is such that in the ordinary cause of things, a person with reasonable apprehension and with proper eyesight would be deceived."
Lord Hill Watson specifically mentioned this dictum of Fletcher Moulton LJ and dissented from it in John Haig & Co. Ltd. v. Forth Blending Co. Ltd. 1953 RPC 259 at 261 in the following terms:
"With deference I do not agree with this expression of opinion and prefer the statement in Kerly on p.372 that a special design of a useful part of an article may form part of the get-up."
He also cited Hedge v. Nicolls (1911) A.C. 693 at 701 where a feature of plaintiff's product was a stick which had a utility value, but the court granted an injunction to prevent defendants using the same design of stick.
I accept, with respect, the opinion of Lord Guest in the Parker Knoll case (above) that-
"Scots law upon the general question (of passing-off) does not... differ in any respect from English Law", and I feel safe in the opinion that English Law then and Nigerian Law now also do not differ.
In the J.B. William Co. case (above) plaintiffs were claiming a reputation in a maroon rounded-top, tin-lined box with leather paper on it. They also admitted that there were good practical reasons for using such a box and that such a box was common to the trade. It does not seem surprising then that they lost the case. In the present case nothing has been proved to be common to the trade in Nigeria. If you produce peppermints in the form of a flat cylinder, there are strong practical reasons for packing it in the form of a long cylinder. It has been shown that there are practical reasons for using a silver foil as packaging material and for packing the rolls in a container made of polythene. Again it has been shown that such a container requires a stiffener and that the most practical stiffener is a piece of cardboard. Again it has been shown that the carton in which the polythene packages are packed is of a practical and not of a capricious shape. I am with Mr Garrick on this point. Indeed they were conceded by the first witness. He said:
"In Exh. 4 we have not laid claim to any specific colours. We have not registered the shape of our tablets...when round tablets are stacked one above the other the resulting stack is bound to be cylindrical...we have no objection to such a way of stacking...anyone is entitled to make round tablets.. we have no objection to people using polythene bags...we have no objection to the use of silver foil...we agree that defendants are entitled to use a cardboard divider. Such dividers are common to the trade."
That however, is not, the end of the matter. Defendants have established that a certain number of the features of their packaging which are common with that of plaintiffs are functional and therefore not to be considered as get-up, but plaintiffs object not that defendants have used these utility items but that they have used them in exactly the same size and shape as plaintiffs. Looked at it in this light there does not appear to be such disagreement between Fletcher-Moulton L.J.'s dictum (above) and Lord Hill Watson's (above). The strictly utility aspects of the packaging can be distinguished from those aspects such as design and size which are a matter of "capricious" design, even if they relate to the items which are matters of utility.
Mr Garrick submits that measurements, that is to say, the size of the article do not constitute get-up. This is an important point because one of plaintiff's main objections is to the alleged imitations of shape and size of their product by the defendants. I have considered this point carefully. I think it is settled by the case of Hedge v. Niccolls which I have already mentioned, where plaintiffs case succeeded solely on the basis of size and shape.
Another point raised by Mr Garrick is that the term "Trebor" has become publici juris. He suggests that the word "Trebor" is used descriptively in Nigeria to mean simply peppermints. At first glance these two propositions appear to be the same. Mr Bentley submits that they are not. There is evidence that Trebor and peppermints are used synonymously.
Kerly's Law on Trade Marks and Trade Names, 9th Edition, para. 755 deals with this question of names becoming publici juris. The learned author says this:
"The proper test whether an exclusive right has become publici juris is whether the use of the trade mark by other persons has ceased to deceive the public as to the maker of the article."
This makes it clear that it needs the use by other persons of a trade mark before it can become publici juris. It could not therefore happen where plaintiffs enjoy a virtual monopoly. What did happen was that "Trebor" became known as the peppermint product. Defendants quite rightly have not claimed that they could with impunity call their product "Trebor", yet if the name was publici juris, they could do just that. I conclude that the name "Trebor" is not publici juris.
Mr Garrick has pointed out that no deception has in fact been proved by plaintiffs. To this, Mr Bentley has submitted that it is not necessary to prove deception but only to prove likelihood of deception. In support of this he has cited the White Hudson Co. Ltd. Case mentioned above. Also in the Parker Co. Ltd. Case also mentioned above Lord Guest stated categorically-
"There is no evidence of actual passing-off but this is not necessary."
With respect I accept this dictum as correct. Evidence of actual passing-off is good evidence, but lack of it, is not fatal. The decision I have to make is as to likelihood not actuality.
Mr Garrick concedes that there are some similarities in packaging but he points out that a limited number of similarities will not prove plaintiffs' case provided there are dissimilarities which are not concealed. He cites Kerly 8th Ed. at page 332 and the case of T. Oertli A.G. v. E.J. Bowman Ltd. 1957 RPC 388 at 397. That case turned more on reputation. Perhaps more relevant is the case of Schweppes Ltd. v. Gibbens (above) where the House of Lords unanimously dismissed an appeal on the basis expressed by Lord Lindley as follows:
"The resemblances here are obvious enough but unfortunately for the appellants so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up and not only at that part of it in which the resemblances are to be found, the whole get-up does not deceive."
Mr Bentley submits that defence evidence by persons to say they have not been deceived is of little value. In support of this he cites the case Re Christianson's Trade Mark, 3 RPC 54 at page 60. In that case, the Master of the Rolls said in effect that while evidence of witnesses that they had not been deceived or that they knew of no-one who had been deceived was admissible and should be taken into consideration, yet it is of very little weight, and that evidence that no one has been deceived was beyond the experience of any witness and therefore untrue, and that in the end it was for the Judge to decide whether in his opinion deception was likely. He also pointed out that such an opinion must take into account the evidence: the Judge must not go to the other extreme and form his opinion solely on his own view of the exhibits.
I also accept Mr Bentley's submission that passing-off includes not only the deception of the person or persons to whom a defendant sells his product directly but also deceptions effected by middlemen when those deceptions are enabled by the get-up of defendants product (Kerly 9th Ed. para. 784).
I will now consider on the basis of what I have said whether in my view, defendant's product is calculated to deceive, that is to say, likely to deceive (Bryant & May v. United Match 50 RPC 12). It is true that intention is not relevant except as to damages (Singer Manufacturing Co. v. Loog 18 Ch.D. at page 410), for the question before me is not whether defendants intended to deceive but whether I think them likely to succeed in such deception whether intended or not. Nevertheless, I think the circumstances in which defendants put their product on the market has some significance, as circumstantial evidence. The evidence is that they were at one time distributors for "Trebor". Their own evidence, the evidence of Mr Chronopollous, their Management Adviser on Commercial Matters is that they made a survey of the market before deciding on the get-up in which they would market their peppermints. He agreed with 1 P.W. that the Nigerian market is conservative. He said that their survey covered areas outside Nigeria as well as inside. However, he said this in cross-examination-
"Yes, I was designing for the Nigerian market to be a profitable line."
He also admitted that up to that time "Trebor" had a virtual monopoly of the peppermint trade in Nigeria. He qualified this by saying "except 1957 to 1963 when there was another brand manufactured in Kano." (This incidentally extends plaintiffs reputation back to 1957). He also admitted that P.Z. were involved in the distribution of Trebor peppermints up to 1969. The evidence shows that in order to market their product, defendants approached and succeeded in obtaining the custom of traders who were already distributing Trebor. They did this by offering them a higher percentage commission. Defendants admit that they did not advertise before putting their brand on the market. They say that has been their system: to test the market before spending money on advertisement. Plaintiff's witness, 1 P.W. says that nobody who wished a new product to succeed would market it without prior advertisement. I must say that plaintiffs witness's opinion seems to me to be based on common sense. It seems to me that if you wished a new product to complete with a virtual monopoly and in this case a popular monopoly, you can have little hope of success unless you can persuade the public to try your brand and to prefer it. I would have thought it virtually impossible to do this by leaving it to chance that the public will buy your new product, and especially in a conservative market. There is, of course a way of manipulating the chance in your favour and that is to deceive the public into buying your brand by marketing it in a manner which a large number of the public will not distinguish from the brand of the monopoly-holding competitor.
Mr Bentley has pointed out that by saying they surveyed the market in Nigeria and from that survey decided their get-up defendants are saying virtually that they surveyed plaintiff's product. That was the product that was selling. It was the get-up of that product which was in favour on the market. Inevitably then, if defendants were to act upon their survey, they would have to produce a get-up similar to that of plaintiffs. There is no doubt that they have done so. Their argument is that some of the similarities cannot be objected to because they have utility and that they have introduced sufficient dissimilarities to defend a charge of passing-off. The similarities are as follows:-They are according to Mr Bentley fourteen in number. He named nine of these in his address; I note thirteen:
(1) Size of carton-The carton chosen by defendants is of exactly the same measurements as that of plaintiffs, (Exhs. 2 & 10). Defendants say it is a readily available shape and size of box. That is as may be, and it has utility, but I cannot believe that none of the many other boxes approximating to this capacity which one sees daily in the shops would not have been equally useful.
(2) The carton has wording in the same positions as that of plaintiffs. Though the wording is different, it is set out in a similar way on both cartons, and uses green and black on a cardboard coloured background in similar proportions except at the end of the carton where plaintiff uses only green but defendant also uses black.
(3) Mr Bentley mentions similarities in the appearance of the cartons in that the price in black lettering appears on each, which he says is unusual, and that each contains an animal. This is so. However, one animal is black and one is cardboard colour. On this point, the defence stresses the fact that the evidence shows that the public distinguishes the elephant mark, (Maigiwa) and the lion mark (Maizaki). On the other hand, plaintiffs complain that the similarity of get-up and the cartons suggest a different brand from the same manufacturer and they stress the evidence that many people have been calling "Minta" "New Trebor" (Sabon Trebor).
(4) Carton contains 32 packs-This is an unusual number. As far as plaintiffs is concerned, it has an historical basis in that, as the first witness has said, this was dictated by considerations of shipping in the days when Trebor was not manufactured locally. First witness explained why plaintiffs still use this size of carton by saying-
"When we started to manufacture locally there was resistance in the market-place to locally made products, so we kept the imported type package so as not to publicise the change. It is an unusual number, normally packaging unit in the distribution trade is tens or dozens."
It is of course plaintiffs' case that defendants have acted from a similar motive. Mr Chronopollous has given evidence that the number of 32 packs per carton was because "our survey found 'Trebor' had 32 packs per carton", but he also said that "it was because the weight 28 lbs. was common to the wholesale confectionary trade, "and that the 28 lbs. dictated the 32 packs per carton." Mr Bentley has submitted that there was no evidence that either carton weighs 28 lbs. It is implicit in Mr Chronopolous's evidence that his carton weighs 28 lbs., but it is clear that one of the cartons does not because as was admitted by 1 P.W. the "Trebor" tablet, having concave sides is lighter in weight than the "Minta" tablet. Since the best evidence of the carton weight would be a demonstration weighing in the court, and this has not been done, I am inclined to prefer Mr Chronopolous' first explanation on this point.
(5) The number in each pack is the same, that is to say 12. This does not seem unreasonable but from the evidence of the 1st witness which has not been rebutted, the number 10 might equally have been chose. 2 D.W. Mr Chronopolous explained that the market in Nigeria demanded a pack of 12 rolls. Here again Mr Bentley's comment is pertinent when he pointed out that the market in Nigeria was at that time for all practical purposes the "Trebor" market. However, Mr Chronopolous went on to say, "the Nigerian public is very used to dozens in many products, from peppermints to cosmetics and golf balls." I cannot resist the observation that in local market-places and on the trays of street vendors which the evidence shows to be practically the whole peppermint market in Nigeria, that without going outside the evidence, I beg leave to doubt whether the Nigerian public has any experience of the numbers in which gold balls are packaged.
(6) The shape of the pack-This, according to defendants is dictated by the number in the pack. I do not think that this is necessarily so. Three rows of four rolls each might make an equally tidy and useful pack or even four rows of three. I am not saying they would, but logically the choice is there.
(7) The cardboard divider-This is strictly utility. It is hardly noticeable in an unopened pack and is not used when the rolls are sold separately. There is however one point here: the colour at the edge of the divider is the same in both cases: white on one side and off-white on the other. This is all that can be seen on a casual glance at the pack. There is no utility in having the one side white. The off-white side is merely a common colour of cardboard.
(8) The number of tablets in each roll-There are 16 tablets in the rolls of both plaintiffs and defendants. Defendants explain this by saying that it is a custom of petty traders to divide these rolls into four. This does not explain why defendants did not choose, say, 12 or even eight. I note that although defendants are aware that many customers buy these quarter rolls yet they have chosen to distinguish their rolls by a line of three not four elephants. This has the effect that the defendant's elephant mark is less easily distinguishable on the quarter-rolls.
(9) Size of rolls-The two rolls are exactly the same size. They are the only two rolls of exactly the same size in all the samples tendered by defendants (Exhs. 32 and 33). This is certainly not a matter of utility.
(10) Colour of rolls-Plaintiffs complain that the proportions of green, black, gold and white are the same on both rolls. In my view, they are not the same, but they are certainly similar. I agree with defendants witness that defendants green is a heavier shade which makes their roll looks slightly larger viewed from certain aspects. On the other hand, I do not think it makes it look larger in the pack.
(11) The use of silver foil to wrap the rolls of tablets-This is strictly utility.
Mr Bentley stops there, but there are further similarities.
(12) The mint itself is white and of identical measurements except that "Minta" is flat while "Trebor" is concave and therefore not so heavy. The colour is not, I think capricious but the exact size is.
(13) Both tablets are round-This is not unreasonable but is not strictly utility. Evidence shows that rectangular tablets are marketed.
I now come to the dissimilarities-
(1) The cartons are not the same weight-I do not know by how much they differ and I do not think the weight would count for much on a casual view.
(2) The animals on the cartons are different animals and different colours-I have already mentioned this.
(3) The pack dividers are distinctively worded-I have already mentioned that except at the edges the dividers appear to have no significance in respect of passing-off.
(4) The rolls are of different weights-This was not said in evidence but it is a necessary inference from the evidence. Again I think it is of little significance on casual view.
(5) The labels are not of exactly the same shades or colour-It is true but they are very close.
(6) The labels are not of the same design-The only specific similarity in design is between the wording "Peppermints" and the "Supermints" each of which appears written in large white letters along the length of their respective rolls. Mr Bentley says that there is yet a general similarity on a casual glance. I bear this submission in mind.
(7) While both mints are cylindrical, Minta has flat ends whereas "Trebor" has concave ends-First witness says and I believe him that at the time defendants were planning to go into peppermints, plaintiffs tablet was exactly the shape defendants tablet now is.
(8) The "Minta" tablet has Minta embossed on it-The Trebor tablet does not have Trebor embossed on it. Since the tablets do not appear to be marketed separately this is of little significance, but the first witness' evidence is unrebutted that at the time defendants were planning to go into this market, Trebor had its own trade name embossed on its tablets.
These are the main similarities and dissimilarities. I have listed them in some detail. Ultimately however, the issue in this case is to be decided not on a detailed and careful comparison but on the much vaguer impression which a casual observer would get: De Facto Works v. Odumotun Trading Co. (above) and Gottschalk Ltd. v. The Spruce Manufacturing Co., I FSC Sel. J. 42.
Nor should I put them side by side for comparison but rather look at each separately and ask myself would I on a casual view readily distinguished between these get-ups and do I think that the sort of people who buy this product or some of them and if some, what sort of proportion, would readily distinguish these get-ups, viewed separately both as to time and place. The trader knows his markets and knows trade marks and is trained to distinguish between brands of the same products: it is not him who is to be considered, but the consumer. In the present case, there is no suggestion of any attempt to deceive or confuse the distributors. There is evidence that a large proportion of consumers of these products are illiterate and ill-educated. It is this proportion which plaintiffs claim will be deceived. It is this proportion which plaintiffs claim defendants were aiming at with a view to getting an unjust benefit from the goodwill which plaintiffs have built up over the years and from the great expenditure on advertising done by plaintiffs, which expenditure came to the greater part of £130,000 last year. These people, says the plaintiffs, the average consumer in Nigeria, would be confused. 1 P. W. said:-
"People are so used to our packs that they no longer notice the details."
Defendants, on the other hand have adduced evidence that there are some details, in particular the lion and the elephant that the average consumer does notice. As against this, again, plaintiff's complaint is not that the average consumer would think this product to be "Trebor" "maizaki" but they would think it to be "Trebor maigiwa" or "New Trebor", another mint tablet from the same manufacturer.
It is my view that in this case there has been an attempt by defendant's right down the line from carton to tablet to manufacture and market a product as similar as possible in every respect to that of plaintiffs'. There has I think, also been an attempt by defendants to make minimal dissimilarities sufficient only to defend an action for passing-off. It is my opinion that in their former aim they have succeeded, and in their latter endeavour they have failed. A view of the relevant exhibits supports this opinion better perhaps than my analysis in words. It is, of course appearance to the eye that is relevant, not verbal description. There is, I think, nothing more to be said in explanation. I find plaintiffs have made out their claim of passing-off.
Mr Bentley has submitted that I should follow what he assures me is the usual procedure in cases of this type, namely to find first on liability or otherwise, and only if I find defendants liable, to hear address on the amount of damages and/or the exact order(s) I should make. I will follow that procedure. I have found defendants liable for passing-off their product as that of plaintiffs. I will now hear both sides as to the order(s) I should now make.
Judgment for Plaintiffs.