ISSUE

Whether the Federal High Court has jurisdiction to entertain a claim for damages for "passing-off" of an unregistered trade mark?

FACTS

The appellant's trade mark, known as "New Queen" had not been registered under the Trade Marks Act 1965, nor had its manufacture of merchandise under the trade mark "Original Queens" been registered, although application for registration was pending.

The plaintiff (appellant) instituted action against the defendants (respondents) in the Federal High Court, Lagos claiming a perpetual injunction restraining them from:

.        Passing off wigs and hair attachments for the goods of the plaintiff by the use of the trade mark "Original Queens" or adopting the distinctive get-up, logo, and packaging or label design of the plaintiffs' "New Queen."

.        Manufacturing, importing, selling or offering for sale or supplying wigs and hair attachments in any package or get-up bearing the name "Original Queens" resembling the plaintiff's trade mark "New Queen" so as to lead to the belief that the wigs and hair attachment were products of the plaintiff

.        Infringing the copyright in the artistic work of the plaintiff's trade mark "New Queen."

The appellant also claimed N30,000,000 as damages against the defendants jointly and severally for passing-off and consequential relief.

The appellant also filed two motions: one ex parte Anton-Piller application and the other Notice on Motion, the ex parte application was heard and the trial Judge, Sanyaolu J, granted all the reliefs. The respondents filed a Notice on Motion praying the court to set aside all the orders granted under the ex parte application.

The applications were then consolidated, and the trial court dismissed the respondents' application to set aside the orders and granted the appellant's motion for interlocutory injunction pending the determination of the suit. The respondents were dissatisfied with the ruling and appealed to the Court of Appeal one of the issues to be determined was whether the trial court had the jurisdiction to entertain a claim for damages for "passing off" an unregistered trade mark. The Court of Appeal allowed the appeal and set aside the ruling of the learned trial Judge. The appellant then appealed to the Supreme Court from the decision of the Court of Appeal and the respondents also cross-appealed.

HELD

1.      On when the issue of jurisdiction is to be heard

The issue of jurisdiction, being the threshold to any action in court, must be looked into first, because any proceedings of court in the absence of jurisdiction, is futile and the whole proceedings rendered a nullity. The court has a duty to consider the issue timeously before taking any further step in the matter. Per Mohammed, JSC at page 167.

2.      On the jurisdiction of the Federal High Court in respect of "passing off" claim

The Federal High Court has no jurisdiction in respect of an action arising from a claim for "passing-off" of an unregistered trade mark.

The jurisdiction of the Federal High Court to deal with actions on passing-off depends on the registration of trade marks as provided by Section 3 of the Trade Marks Act, Cap. 436 and Section 230 subsection (1)(f ) of the 1979 Constitution (now Section 251(1)(f ) of the 1999 Constitution.) Per Kalgo, JSC at page 153.

3.      On the protection of unregistered trade marks

Where the trade mark is unregistered, as in the present case, then the cause of action for passing-off is in common law for tort and action can now be brought in a State High Court in view of the provisions of Section 272 subsection (1) of the 1999 Constitution. Per Uwais, CJN at page 166.

4.      On the impact of Patkun Industries Ltd v Niger Shoes Manufacturing Co Ltd (1988) 5 NWLR (Part 93) 138

The total effect of the judgment in Patkun's case is that the Federal High Court will only have jurisdiction to entertain an action for passing-off arising from an infringement of a registered trade mark and the action must have arisen in relation to a Federal enactment. Patkun's case followed.

In the instant case, the passing-off right of action did not arise from the infringement of any Federal enactment and so may only be a common law right. Therefore the Federal High Court would not have any power to entertain the passing-off action. Per Kalgo, JSC at page 153.

Mrs S. Shinaba and Mrs M. Jones for the plaintiffs/appellants.

T. Oyetibo for the defendant/respondent.

The following cases were referred to in this judgment:

Nigeria

Alao v C.O.P (1987) 4 NWLR (Part 64) 199

Funduk Engineering v McArthur (1995) 4 NWLR (Part 392) 640

Gafai v U.A.C. Ltd (1961) All NLR 785

Ifezue v Mbadugha (1984) 5 SC 79

Nwamezie v Idris (1993) 3 NWLR (Part 279) 1

Nyarko v Akowuah 14 WACA 426

Okafor v A-G, Anambra State (1991) 6 NWLR (Part 200) 659

Oredoyin v Arowolo (1989) 4 NWLR (Part 114) 172

Patkun Industries Ltd v Niger Shoes Manufacturing Co Ltd (1988) 5 NWLR (Part 93) 138

State v Onagoruwa (1992) 2 NWLR (1992) 2 NWLR (Part 221) 33

Timitimi v Amabebe 12 WACA 374

Foreign

Bendir v Anson [1936] 3 All ER 326

IML Air Chartering Nigeria Ltd v IMNL International Messengers (Nigeria) Ltd 5 FRCR 113

The following statutes were referred to in this judgment:

Nigeria

Constitution 1979: Ss 230(1); 230(1)(f )

Constitution 1999: Ss 251(1)(f ); 272(1)

Federal High Court Act: S 7(1)(c)(ii)

Trademarks Act Cap. 436: S 3

The following decree was referred to in this judgment:

Decree 107 of 1993

Kalgo, JSC (Delivered the Leading Judgment):- The appellant who was the plaintiff instituted this action against the respondents as defendants in the Federal High Court, Lagos. In the Writ of Summons issued on 26 June 1996, the plaintiff/appellant claimed for:-

"1.     A perpetual injunction restraining the defendants and each of those upon whose behalf the defendants are sued, whether acting by themselves, their servants, assigns or privies or otherwise howsoever, from doing the following acts or any of them, that is to say:-

(i) Passing-off or attempting to pass-off or causing, enabling or assisting others to pass-off wigs and hair attachments not the plaintiff's manufacture or merchandise as and for the goods of the plaintiff by the use or in connection therewith in the course of trade of the trademark 'Original Queens' or adopting the distinctive get-up, logo, packaging or label design, identical in all essential details to that of the plaintiffs 'New Queen' or any colourable imitation thereof without duly distinguishing such packaging from that of the plaintiff or by any other means.

(ii) Manufacturing, importing, selling or offering for sale or supplying wigs and hair attachments in any package of get-up bearing the name 'Original Queens' or any other words so closely resembling the plaintiff's trademark 'New Queen' applied for and accepted under TP 24575/95 in Class 26, as to be calculated to lead to the belief that the wigs and hair attachment not of the plaintiff's manufacture are products of the plaintiff.

(iii) Infringing the copyright in the artistic work of the plaintiff's trademark 'New Queen', it's get-up, logo package and distinctive label.

2.      Delivery up for destruction upon oath of all wigs and hair attachments in packages and/or get-up not of the plaintiff's manufacture or merchandise yet bearing the trademark 'Original Queens' identical to the plaintiff's trademark 'New Queen' and sold in the plaintiff's distinctive get-up; all moulds, raw materials, printing blocks and other materials in the possession, custody or control of the first defendant, their servants, agents, or privies or any of them, the use of which would be in breach of the injunction prayed for and verification upon oath that the first defendant have no such articles in their possession, custody or control.

3.      An order that the defendant and each of those upon whose behalf the defendants are sued whether acting by themselves, their servants, agents or privies or any of them do make and serve upon the plaintiff an affidavit disclosing when, to whom and in what quantities they have sold, sent or supplied, purchased or received any such wigs and hair attachment aforesaid, exhibiting true copies of all documents in their possession, power or custody or relating to the facts and matters therein disclosed and payment of all sums found upon making such an affidavit.

4.      The sum of N30,000,000 as damages against the defendants jointly and severally for passing-off their fake/counterfeit 'Original Queens' wig and hair attachments as and for the plaintiff's 'New Queen' wigs and hair attachment and for infringing the copyright in the artistic work of the plaintiff's trademark, its get-up, logo, package and distinctive label."

At the time of filing the Writ of Summons, the appellant also filed two motions; one ex parte Anton-Piller application and the other Notice on Motion, each containing 9 prayers. On 1 July 1996, the learned trial Judge Sanyaolu, J heard the ex parte application and granted all the prayers thereof pending the determination of the Notice on Motion which was fixed for hearing on 25 July 1996. On 9 July 1996, the appellant executed the Anton-Piller order by seizing the offending goods from the defendants/respondents. On 12 July 1996, the respondents filed a Notice on Motion praying the trial court to set aside, discharge or vacate all the orders made on the ex parte Anton-Piller application. On 27 July 1996, learned trial Judge ordered that both the appellant's Notice on Motion for interlocutory injunction and the respondents' motion to set aside the Anton-Piller orders be consolidated and heard together.

After hearing legal arguments from the learned Counsel for the parties on the consolidated applications, the learned trial Judge delivered a considered ruling on 28 November 1996 in which he dismissed the respondents' application to set aside and granted the appellant's motion for interlocutory injunction pending the determination of the suit. The respondent was dissatisfied with the ruling and appealed to the Court of Appeal. The appeal was heard and in its judgment delivered on 6 July 1999, the Court of Appeal allowed the appeal and set aside the ruling of the learned trial Judge. The appellant then appealed to this Court from the decision of the Court of Appeal and the respondents also cross-appealed.

Both parties filed and exchanged their respective briefs as required by the rules of this Court. The appellant in his brief identified the following issues for determination of this Court in the appeal:-

"1.     Whether the Court of Appeal rightly applied the provisions of the Trademarks Act (supra), on the classification and specification of goods and whether the classification of goods in the third schedule of the Trademarks Act 1965 is relevant to the specification of goods in the trademark applications for 'New Queen Collection and Device' and 'Queens & Device'.

2.      Whether the Court of Appeal rightly applied the provision of the Trademarks Act, Cap. 436, Laws of the Federation of Nigeria, 1990 in apportioning to the respondents' trademark application 'Queens & Device' in Class 3 reserved for 'cosmetic' goods and the appellant's trademark application 'New Queen Collection & Device' in Class 26 reserved for 'braids' equal equities and holding that both applications were at par.

3.      Whether the issue of non-disclosure raised by the court below was material to the weighing-in operation in deciding whether to continue or discharge the Anton-Piller and other interim injunctive orders granted by the learned trial Judge.

4.      Whether the court below was right in interfering with the exercise of discretion by the learned trial Judge in the way it did when the said exercise was not perverse or the result of an improper exercise of judicial discretion and whether the said Anton-Piller and other interim Injunction Orders were so abrasive in nature as to have the effect of taking the wind out of the case.

5.      Whether the appellant fulfilled the conditions which ought to be met before a grant of an interlocutory injunction and whether the lower court was correct in holding that the interlocutory orders made by the learned trial Judge were so all embracing they ought not to have been made and that they had the effect of terminating the whole and entire case thereby setting aside the same.

6.      Whether an appellate court can rightly consider and make findings on an issue specifically reserved by the trial court for the substantive hearing.

7.      Whether it is right for a Judge to concur in a consequential order never granted by the lead judgment purported to be concurred in?"

The respondents in their joint brief, formulated only 3 issues which they say encompass both the main appeal and the cross-appeal. The issues read:-

"(1)    Whether the Federal High Court has jurisdiction to entertain a claim for damages for 'passing-off' of an unregistered trademark: Ground of appeal in the Notice of Cross-appeal.

(2)     Whether the Court of Appeal was right in discharging the ex parte Anton-Piller order made by the Federal High Court on first July 1996: Grounds 2, 3, 4 and 7 of the amended Notice of Appeal.

(3)     Whether the Court of Appeal was right in law in setting aside the order of interlocutory injunction made by the Federal High Court on 28 November 1999: Grounds 1, 5, 6, 8 and 9 of the amended Notice of Appeal."

The respondents filed their Notice of Cross-appeal on 5 August 1999 after obtaining leave of the Court of Appeal. The Notice of Appeal contained only one ground which, with its particulars reads:-

"The Court of Appeal erred in law when it held per I.C. Pats-Acholonu, JCA as follows:-

Now we have in Section 230 of the Constitution as amended which include passing-off action as one of the matters within the jurisdiction of the Federal High Court. It is without qualification in that it is not related or made conditional that the passing off shall be in respect of a registered trademark. It is couched in a general form to be all embracive that being the case can it really be argued in all seriousness that it did not confer untrammelled jurisdiction on the Federal High Court. I have read the various concurring judgments of the Supreme Court Judges in Patkum's case and I must candidly confess that I failed to see any contradiction. It is very easy to grasp the nuances of that case and I will add that the case helps in no small measure to shape the distinctive lines of the present case. In my view the Federal High Court is eminently competent to adjudicate on the matter.

Particulars of error

(a)     The jurisdiction conferred on the Federal High Court by Section 230(1)(f ) of the 1979 Constitution as amended by Decree Number 107 of 1993 in relation to passing off actions was in respect of civil causes and matters arising from 'any Federal enactment relating to . . .passing-off. (b) the Trademarks Act Cap. 436 in 1990 Laws of the Federation earlier referred to in page 13 of the judgment is not an enactment relating to "passing off and therefore could not have been an enactment from which a cause of action in 'passing-off' could have arisen (b) the pronouncements in the judgment of the Supreme Court in the case of Patkum Industries Ltd v Niger Shoes Manufacture Ltd (1985) 5 NWLR (Part 93) 138 were in so far as they dealt with the jurisdiction of the Federal High Court to entertain actions for passing - off of unregistered trademarks, obiter dicta and a fortiori the case is no authority for the jurisdiction of the Federal High Court on such matters.

(b)     In the circumstances the Court of Appeal ought not to have held that 'the Federal High Court is eminently competent to adjudicate on the (this) matter.'"

And the only issue which was gleaned and filtered out of the ground was the respondents' Issue No 1 which reads:-

"Whether the Federal High Court has jurisdiction to entertain a claim for damages for 'passing-off' of an unregistered trademark."

It is abundantly clear and without any iota of doubt that the ground of appeal in the cross-appeal and the issue raised from it challenged the jurisdiction of the trial court to entertain the appellant's claim. There is also no doubt that the issue of jurisdiction, being the threshold to any action in court, must be looked into first, because any proceedings of court in the absence of jurisdiction, is futile and the whole proceedings rendered a nullity (see Alao v COP (1987) 4 NWLR (Part 64) 199; Funduk Engineering v McArthur (1995) 4 NWLR (Part 392) 640 at 651; Oredoyin v Arowolo (1989) 4 NWLR (Part 114) 172 at 187; Ifezue v Mbadugha (1984) 5 SC 79). And where as in this appeal the issue of jurisdiction is raised, the court has a duty to consider the issue timeously before taking any further step in the matter (see Nwamezie v Idris (1993) 3 NWLR (Part 279) 1 at 17; State v Onagoruwa (1992) 2 NWLR (1992) 2 NWLR (Part 221) 33 at 52 and 54; Okafor v A-G, Anambra State (1991) 6 NWLR (Part 200) 659). It is as a result of this that I now decide to consider first the issue of jurisdiction raised by the respondents in Issue 1 of the cross-appeal. The outcome of this consideration will determine whether it is necessary to consider the issues identified in the main appeal.

The respondents' only issue in the cross-appeal is simply this: whether the Federal High Court has jurisdiction to entertain a claim for damages for "passing-off" of an unregistered trademark. The learned Counsel for the respondents submitted in his brief that having regard to the provision of Section 230(1) of the 1979 Constitution as amended by Decree 107 of 1993, Section 3 of the Trademarks Act 1965, and Section 7(1)(c)(ii) of the Federal High Court Act, the Federal High Court has no jurisdiction to entertain any action relating to passing-off of an unregistered trademark. He contended that the first limb of Section 3 of the Trademarks Act 1965, prohibits the institution of any action for damages in respect of unregistered trademarks, and the second limb preserves the right of action against any person for passing-off goods as the goods of another person, without specifying which court would have jurisdiction to entertain the action. Therefore, Counsel submitted, this "right of action" predated the enactment and exists outside the Act at common law and is not affected by the Act.

In respect of Section 7(1)(c)(ii) of the Federal High Court Act learned Counsel submitted that although the section confers jurisdiction on Federal High Court to entertain actions in respect of matters "arising from" any enactment relating to trademarks, the section does not apply in this case where the claim is for passing-off which is not founded on the Trademarks Act 1965. Learned Counsel therefore submitted that this action is for passing-off which for all intents and purposes has no connection with trademarks or Trademarks Act 1965 but is a common law tort outside the scope of the provisions of Section 7(1)(c)(ii) of the Federal High Court Act 1973.

On Section 230(1)(f ) of the 1979 Constitution as amended by Decree 107 of 1993, learned Counsel submitted that it confers exclusive jurisdiction on the Federal High Court in civil causes and matters arising from any Federal enactment relating to "trademarks and passing-off" in respect of registered trademarks only, since the passing-off of unregistered trademarks was not provided for and does not arise from the provisions of the Trademarks Act 1965. Learned Counsel extensively examined the sections of the abovementioned laws and the relevant judicial decisions particularly the cases of Patkun Industries Limited v Niger Shoes Manufacturing Company Limited (supra); IML Air Chartering (Nigeria) Ltd v IMNL International Messengers (Nigeria) Ltd 5 FRCR 113 wherein the various sections were judicially interpreted, and came to the conclusion that on the facts of this particular case, the trial court had no jurisdiction to entertain this case as it did. He therefore urged this Court to so find, dismiss the appeal and affirm the decision of the Court of Appeal.

The learned appellant's Counsel submitted in the brief that the claims of the plaintiff/appellant arose from an enactment relating to the Trademarks Act (Cap. 436 of Laws of the Federation of Nigeria 1990), and are therefore within the jurisdiction of the Federal High Court pursuant to the provisions of Section 7(1)(c)(ii) of the Federal High Court Act (Cap. 134 Laws of the Federation of Nigeria 1990). Learned Counsel contended that it is an actionable wrong at common law for a person to present his goods as those of another person in such a manner as to cause the goods to be taken as those of that other person. Counsel conceded that this constitutes a common law tort of passing off but submitted that in this case, Section 7(1)(c)(ii) of the Federal High Court Act, does not provide any limitation or distinction in the type of action provided that they are "civil causes and matters" relating to the subject matter concerned. In this case, Counsel argued, the subject matter is trademarks and since Trademarks Act 1965 is a Federal enactment in respect of trademarks, the Federal High Court has jurisdiction. Learned Counsel further argued that although a person can sue at common law for passing-off, Section 3 of the Trademarks Act has statutorily provided another right of action for passing off of an unregistered trademark. Counsel then examined the provisions of Section 3 of the Trademarks Act 1965 and the decision of this Court in Patkun's case (supra) and then submitted that the Federal High Court has jurisdiction to entertain a claim of passing off even in respect of an unregistered trademark as in this case. The decision of this Court in Patkun's case, Counsel submitted, was fully supportive and the views expressed therein vindicated, by the provisions of Section 230(1) of the 1979 Constitution as amended by Decree 107 of 1993. Finally learned Counsel submitted that passing off of an unregistered trademark is a cause of action arising from the Trademarks Act 1965 and that by virtue of the provisions of Section 7(1)(c)(ii) of the Federal High Court Act 1973, the Federal High Court has jurisdiction to entertain this action. Counsel urged the court to allow the appeal and set aside the decision of the Court of Appeal restoring that of the trial court.

Let me now consider the submissions of Counsel.

From the particulars of claim and the affidavit in support of the ex parte motion filed by the appellant on 26 July 1996, it is very clear that the trademark of the appellant giving rise to this action has not been registered. Paragraph 10 of the supporting affidavit reads:-

"That, in order to protect its good will in its said popular brand of wigs and hair attachments, plaintiff lodged an application at the Trademarks Registry, Abuja, in accordance with the provisions of the Trademarks Act 1965, for the registration of its brand name in Class 26. The application dated 9 July 1995, was acknowledged on 31 July 1995, as TP24575/95. The registrar accepted the application for registration on 1 August 1995 and has not indicated any reason why the trademark should not be registered. Attached herewith and marked 'A & B' are copies of the acknowledgement and acceptance forms issued to the plaintiff/applicant by the Trademarks Registry, Abuja in 1995."

There is therefore no doubt and as has been maintained by the appellant throughout, that the appellant's trademark, known as "New Queen" had not been registered under the Trademarks Act 1965. It is also not in dispute in this case that the respondents' manufacture or merchandise under the trademark "Original Queens" was also not registered though his application for registration was also pending.

The jurisdiction of the Federal High Court at the material time, is as set out in Section 230(1)(f ) of the 1979 Constitution, as amended, by Decree 107 of the 1993 and Section 7 of the Federal High Court Act, 1973 (Cap. 134 Laws of the Federation of Nigeria, 1990). Section 230(1)(f) of the 1979 Constitution provides:-

"Notwithstanding anything to the contrary contained in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly or a Decree, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil causes and matters arising from:-

(f)     any Federal enactment relating to copyright, patents designs, trademarks and passing-off, industrial designs and merchandise marks, business names, and commercial industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards." (My emphasis.)

By this provision, the Federal High Court and that court alone, had exclusive jurisdiction to entertain all civil causes and matters arising from Federal enactment relating to any of the matters mentioned in (f ) above, including trademarks and passing-off.

Section 7(1)(c)(ii) of the Federal High Court Act also provides:-

"The court shall have and exercise jurisdiction in civil causes and matters

(c)     arising from:-(i) . . .

(ii) any enactment relating to copyright, patents, designs, trademarks and merchandise marks."

Section 7(1) above re-affirms the jurisdiction conferred on the Federal High Court in respect of "any civil causes and matters, arising from any enactment relating to trademarks." It is to be noted that it did not include "passing-off" and it did not say "arising from any Federal enactment relating to." The word "Federal" is missing in Section 7(1)(c) (ii), but by the use of the word "any", it can properly be applied to a federal enactment. In respect of the general jurisdiction in passing-off; the provision in Section 230(1) of the 1979 Constitution prevailed so that after 1993, the Federal High Court had jurisdiction to entertain passing-off actions arising from any Federal enactment.

In this case, the Federal enactment we are concerned with is principally the Trademarks Act 1965, Cap. 436 of Laws of the Federation of Nigeria 1990 (hereinafter referred to as "the Act"). Section 3 of the Act provides:-

"No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trademark but nothing in this Act shall be taken to affect rights of action against any person for passing-off goods as the goods of another person or the remedies in respect thereof." (My emphasis.)

This section is divided into two distinct parts. The first part prohibits the institution of any action for the infringement of an unregistered trademark. The second part preserves the right of action against any person for passing-off goods as the goods of another.

I have already found earlier in this judgment and there is no dispute at all, that the appellant's trademark allegedly infringed in this case, was in fact not registered. It is common ground that a plaintiff in an action for infringement must establish his title either as proprietor or as a registered user entitled to sue. He must then prove that the defendant has acted or threatens to act in such a way as to infringe the right conferred upon him by the registration of the trademark under the Act. This is not the case here and this makes the first part of Section 3 of the Act inapplicable. I hold accordingly.

In respect of the second part of the section which reads:-

". . . but nothing in this Act shall be taken to affect right of action against any person for passing-off goods as the goods of another person or the remedies in respect thereof."

Learned Counsel for the respondents submitted in his brief that it creates a separate right of action for passing-off outside the Act, and is not related in any way to trademarks. He further submitted that it did not confer any jurisdiction on any court to try the action. Therefore, Counsel submitted and relying on Patkun's case (supra) that it did not come within the scope of Section 230(1)(f ) of the 1979 Constitution or Section 7(1)(c)(ii) of the Federal High Court Act 1973.

For the appellant, the learned Counsel submitted in its brief also relying in Patkun's case that the appellant's claims arise from an enactment relating to Trademarks Act 1965, and that the common law right to sue for passing-off has been statutorily provided for by Section 3 of the Act. Counsel further submitted that their claim arose from the passing-off of their trademark under the Trademarks Act an enactment relating to trademarks within the provisions of Section 7(1)(c)(ii) of the Federal High Court Act 1973, and Section 230(1)(f ) of the 1979 Constitution.

As both parties rely on Patkun's case (supra) let me consider what effect the decision in that case will have on the instant case. Patkun's case was decided by this Court on the effect of Section 3 of the Trademarks Act 1965. The facts in Patkun's case are different from those in this case. In Patkun's case the trademark allegedly infringed was in fact registered whereas in this case it was not, as the application for registration was still pending when the action was instituted. Karibi-Whyte, JSC delivering the leading judgment in Patkun's case started by saying that:-

"The very narrow point of law which fell for determination in the Federal Revenue Court was whether that court had jurisdiction in an action for infringement of a registered trademark where damages for passing-off of the goods has also been claimed." (My emphasis.)

The Federal Revenue Court is now the Federal High Court and the trademark infringed in that case was already registered before the commencement of the action. Karibi-Whyte, JSC considered the narrow point mentioned above in the light of the provisions of Section 3 of the Trademarks Act 1965, Section 230(1)(f) of the 1979 Constitution and Section 7(1)(c)(ii) of the Federal High Court Act 1973 and concluded as follows:-

"On the above analysis the Federal High Court has jurisdiction in respect of an action of passing-off arising from infringement of plaintiff's registered trademarks, since the passing-off and the infringement of plaintiff's registered trademark are matters from the same transaction which can conveniently be included in the Writ of Summons and can be tried together." (My emphasis.)

The other learned Justices who sat with him on the case also agreed with this conclusion.

The emphasis here is that for Federal High Court to have jurisdiction for the passing-off claims, arising from infringement of a trademark, the trademark allegedly infringed must have been registered. This is not the case here as the trademark of the appellant "New Queen" had not been registered. Learned Counsel for the appellants/cross-respondents argued in the brief that Section 3 of the Trademarks Act 1965, imposes no penalty on those who do not register their trademark, and creates no bar to an action for passing-off of an unregistered trademark. According to the learned Counsel for the appellant's understanding of the decision in Patkun's case:-

"The Federal High Court has jurisdiction not only in respect of 'passing-off' actions arising from infringement of registered trademarks but also in respect of 'passing-off' actions relating to unregistered trademarks."

I do not agree with the learned Counsel on this. In my respectful view, she did not seem to comprehend the ratio decidendi of Patkun's case. The common law tort of passing-off goods as the goods of another still exists generally but not in respect of infringement of unregistered trademarks. What was decided in Patkun's case was only in respect of passing-off relating to infringement of registered trademark. It was also decided in that case that in addition to the right of action conferred on the owner of a registered trademark under Section 3 of the Trademarks Act 1965, there is an additional right of action of passing-off in respect of the goods involved. Karibi-Whyte, JSC held that this last additional right of action is statutory and can be found only in Section 3 of the Trademarks Act 1965. He further held:-

"Section 3 of the Trademarks Act 1965 priprio vigore thus gives a right of action of passing-off. The right of action is therefore derived from the Trademarks Act 1965, and not common law. It is not correct to assume that a right of action enacted into a statutory provision is ineffective merely because it has its origin in the common law. This is not so." (My emphasis.)

What the learned Justice is saying here is that the right of action of passing-off under Section 3 of the Trademarks Act 1965 is statutory and is derived from that Act and not the common law. In other-words, it can only arise or be available where there is an infringement of a trademark registered under the said Act.

Learned Counsel for the respondents/cross-appellants submitted that there were some conflicts in the judgments of the learned Justices who sat in the Patkun's case, but that the conflicts were obiter dicta which are not binding on the court or the lower courts. I have carefully read the judgments of all the learned Justices in the case, and I am unable to find any conflicts in their judgments on the issues determined by the court. I have already set out earlier in this judgment the conclusions reached by Karibi-Whyte, JSC in the leading judgment. For the avoidance of doubt I set out here below the essential part of the supporting judgments of the other 4 learned Justices thus:-

Nnamani, JSC:-

"It seems to me that from the wording of the proviso to Section 3 read together with Section 7(1)(c)(ii) of Act 134 of 1973, a statutory right of action on passing-off is provided. What is involved, at least as it relates to trademarks is not the common law action of passing-off, but a statutory guaranteed right of action."

Uwais, JSC (as he then was):-

"In my opinion, therefore, the Federal High Court has jurisdiction, by virtue of Section 63 of the 1965 Act read together with Section 7(1)(c)(ii) of the 1973 Act, to hear at the same time both the claims in respect of the infringement of the respondent's registered trademark and passing-off. See Gafai v UAC Ltd (supra)."

Agbaje, JSC:-

"The plaintiff's claim in my judgment relate exclusively to the infringement of its registered trademark. The claims evidently arise from an enactment relating to trademarks to wit Trademarks Act 1965. So the Federal High Court has jurisdiction in my judgment to try the action under Section 7(1)(c)(ii) of the Act of 1973."

Wali, JSC:-

"The enactment on the Writ of Summons and the amended Statement of Claim of the respondent showed clearly that the cause of action is the "infringement of the registered trademark" resulting in the second cause of action which is 'passing-off'. The two causes of action can conveniently be joined and dealt with together, as the infringement of the trademark and passing-off of the goods arose from the same transaction (see Gafai v UAC Ltd (1961) All NLR 785 and Bendir v Anson [1936] 3 All ER 326)."

It is very clear that all the judgments dealt with registered trademark and the passing-off cause of action arising from the infringement of the registered trademark. They are all saying the same thing in different ways. I cannot see any conflicts in their judgments which in my view tallied in all respects with the leading judgment of Karibi-Whyte, JSC. The total effect of the judgment in Patkun's case is that the Federal High Court will only have jurisdiction to entertain an action for passing-off arising from an infringement of a registered trademark and the action must have arisen in relation to a federal enactment. The Trademarks Act 1965, is a Federal enactment, but in this case although there was an allegation of infringement of a trademark, the trademark was not registered and so the passing-off claim, even if there was such passing-off, did not and could not have arisen from a registered trademark. Also the passing-off right of action in Patkun's case is clearly statutory having arisen from the infringement of the Trademarks Act 1965, a Federal enactment. I am bound by the decision in Patkun's case as a decision of this Court and I follow it. In the instant case, the passing-off right of action did not arise from the infringement of any Federal enactment and so may only be a common law right. Therefore the Federal High Court, would not have any jurisdiction under Section 230(1)(f ) of the 1979 Constitution or Section 7(1)(c)(ii) of the Federal High Court Act 1973 to entertain the passing-off action instituted by the appellant in the instant case. I hold accordingly. I therefore find that the Court of Appeal was wrong when it said in the leading judgment that "the Federal High Court is eminently competent to adjudicate on the matter." I answer Issue 1 in the cross-appeal in the negative.