ISSUES

Whether a design registered by the appellant was new at the time of its registration?

What makes an industrial design registrable?

FACTS

The appellant as plaintiff instituted an action in the High Court averring that it was the registered owner of a design in respect of a plastic kitchen container, infringed by the by the respondent (defendant) it claimed general damages and injunction restraining the respondent from infringing his copyright in the design. The first respondent challenged the newness of the appellant's design. It contended that the container in question was a common design, available in the market and had been produced even before the registration of the appellants design.

The High Court found for the appellant and awarded damages against the respondents to the Court of Appeal, that decision was overturned and the appellant/plaintiff's claim dismissed. The present appeal to the Supreme Court was filed against the Court of Appeal's decision.

HELD (Unanimously dismissing the appeal)

1.      On the registrability of a design

Section 13(1) of the Patents and Designs Act provides, inter alia, that an industrial design is registrable if it is new. Per Ogwuegbu, JSC, at page 459

2.      On the nature of an industrial design as contemplated in Section 12 of the Patents and Design Act

To be registrable, an industrial design must come within the meaning of the expression "designs" in Section 12 of the Patents and Design Act. A design is any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours that is an industrial design. What actually constitutes the design is that particular combination and arrangement of lines which give such features. It is therefore important in a case where the newness of a design is in dispute for the design claimed to be infringed and the infringing design to be put side by side to enable the court to compare and determine whether they are basically the same or whether there are fundamental differences in the shape and pattern of the lines. Per Ogwuegbu, JSC, at page 459.

3.      On onus of proof

In civil cases, the ultimate burden of establishing a case is as disclosed on the pleadings. The burden of proof rests on the person who would lose the case if on completion of pleadings no evidence is led on either side. To succeed in his claim that his copyright in the design had been infringed, the appellant bore the onus of showing that the finished products of both parties were made from the same design and not that the products are merely similar. The Court found that the appellant had not discharged that initial burden. Per Ogwuegbu, JSC, at page 459.

S. O. P. Okeke for the appellant

Chief J. C. Ifebunandu (T. I. Dutse with him) for the respondent

The following cases were referred to in this judgment:

Nigeria

Ajibowo & Co Ltd v Western Textile Mills Ltd (1976) 7 SC 97

Ajide v Kelani (1985) 3 NWLR (Part 12) 248

Elemo & others v Omolade & others (1968) NMLR 359

Jules v Ajani (1980) 5-7 SC 96

Kodilinje v Odu 2 WACA 331

Metropolitan Industries (Nigeria) Ltd v Industrial Applications (Nigeria) Ltd (1973) 1 NMLR 274

Omoregbe v Idugiemwanye (1985) 2 NWLR (Part 5) 41

Osawaru v Ezeiruka (1978) 6-7 SC 135

Oyude v Ogedegbe & others (1984) 1 SC 360

Foreign

Amp. Incorporated v Utilux Proprietry Ltd (1972) RCP 103

Saccharin Corporation Ltd v Wild (1903) 1 Ch. 410

The following statutes were referred to in this judgment:

Nigeria

Evidence Act Cap. 112 Laws of the Federation of Nigeria 1990: Ss 137(1); 139; 149(d); 360

Patents and Designs Act Cap. 344 Laws of the Federation of Nigeria 1990: Ss 12; 13(1)(a); 13(2); 13(3); 13(5)

Ogwuegbu, JSC (Delivered the Leading Judgment):- This is an appeal against the judgment of the Court of Appeal, Enugu Division delivered on 7 July 1998 allowing the appeal of the defendants who were appellants in that court. The plaintiff instituted an action in the Federal High Court, Enugu claiming against the defendants (respondents herein) jointly and severally as follows:-

"1.     N5,000,000 (Five Million Naira) being general damages for infringement of the Registered Design No 4464.

2.      Injunction restraining the defendants, whether acting by their agents, directors, officers, servants, privies and/or otherwise however from infringing the plaintiff's copyright in the Registered Design No 4464."

The learned trial Judge awarded N10,000 damages against the defendants in favour of the plaintiff for infringement of the plaintiff's Design No 4464. The defendants were dissatisfied with the judgment and appealed to the Court of Appeal, Enugu Division. Their appeal succeeded and the plaintiff's claim was dismissed. The plaintiff appealed to this Court against the decision of the court below.

The case of the plaintiff from his pleadings and evidence at the trial court is that he is the registered owner of Design No 4464 in respect of kitchen plastic container, that the design was registered on 5 March, 1991 in the name of "Sunday Innocent and Co", that at the time of registration, the design was new and that he is the author. It was his case that he started producing the plastic containers shortly after registration of the design and within two months of registration he discovered that his right in the design had been infringed.

At the trial, the plaintiff tendered Exhibit 1 which contains the plans and drawings of the registered design. He tendered as Exhibit 2, the finished product from the registered design. It was part of his case that he started mass production of Exhibit 2 since 1991 and that at that time, there was no similar design or product in the market. Exhibit 5, the similar product produced and distributed by the defendants was tendered by the plaintiff.

It was the case of the first defendant that the design was not new, that the plaintiff was not the creator and that the product was common, available in the market and had been produced even before the registration of the plaintiff's design. In his amended Statement of Defence, the second defendant denied the newness of the said design and stated that the product had been in the market long before the registration of the design by the plaintiff. It was the evidence of DW1 that the defendants had been producing plastic kitchen containers since 1987.

As I stated earlier in this judgment, the court below reversed the judgment of the trial court and dismissed the claim of the plaintiff hence this appeal. The following four issues were distilled from the grounds of appeal and submitted by the plaintiff for determination in the appeal:-

"1.     Whether the burden of producing the designs and drawings from which Exhibit 5 which is the infringing product still lies with the plaintiff who has produced and tendered in court Exhibit 1, the plans and drawings from which Exhibit 2 was produced?

2.      Whether the burden of proving the novelty of Exhibit 2 has not been discharged by appellant as provided by the Patents and Designs Law?

3.      Did the Court of Appeal, Enugu properly apply the decision in F. O. Ajibowo & Co Ltd v Western Textile Mills Ltd (1996) (sic) (1976) 7 SC 97 in the appeal before it?

4.      Whether the findings made by the trial court were perverse that the Court of Appeal has to interfere with the said findings?"

The defendants in their brief identified the following two issues for determination in the appeal:-

"1.     Whether the burden lies on the appellant herein to prove the novelty of the design in dispute in this suit?

2.      If so, whether the appellant discharged the said burden to entitle him to the registration of the said design and the reliefs claimed?"

The principal issue in this appeal is whether Exhibit 1 was new at the time of its registration. Coupled with this is the question of proof of its novelty at the said time. I will at this stage reproduce the crucial findings of the courts below which touch on the novelty and proof of the newness of the design of the plaintiff.

After considering the evidence and the authorities cited by the parties, the learned trial Judge observed as follows:-

"In the present case the plans and drawings of the plaintiff's design are contained in the document annexed to Exhibit 1. The shape and size of the container including the shape and size of the bottom of the container and cover are claimed (sic). This design was used in the production of Exhibit 2. The design used by the first defendant in the production of Exhibit 5 is not before me in this case. A comparison of the designs therefore cannot be made."

Later in his judgment the learned trial Judge observed:-

"The next question to be considered is the question of whether or not the defendants can be said in this case to have infringed the plaintiffs' copyright in the design covered by the Certificate of Registration No 4464. A cursory perusal of the external appearances of Exhibit 2 and Exhibit 5 reveals that the two items are similar to each other.

It seems Exhibits 2 and 5 are produced from the same design and by the application of the same process."

Based on the later observation which is inconsistent with his earlier one, the learned trial Judge found for the plaintiff. The court below had this to say on the inconsistent findings of the trial court:-

"The learned trial Judge, in my respectful opinion, seems to reprobate and approbate, a thing he is not entitled to do. . .

What constitutes the design is the peculiar combination and arrangement of lines and colour which give such features. Similarity of appearance has nothing to do with its distinctiveness, speciality or peculiarity. There must be something extra which catches the eye and in a way appeals to the eye. . . A claim for an infringement of a right in a design is not made out mainly because the new design is similar to that of the appellant, more is required."

On burden of proof of the novelty of the design, the court below held as follows:-

"The first respondent was the plaintiff in the court below who asserts that the design attached to Exhibit 1 is novel or original. The appellant (sic) consequently pleaded in its further amended Statement of Claim (sic) that the Registered Design No 4464 was not a new product or design in the market at the time it was introduced as it had been in circulation since 1987. On the pleadings, the burden of first proving the existence or non-existence of a fact lies on the first respondent whose claim would fail if no evidence were produced. To succeed in his claim that his copyright in the design had been infringed, evidenced by Exhibit 1, he has the burden of showing that the registered design and the design that is alleged to be previously in use before the registration of his design are not merely similar but are one and the same thing. In other words, the first respondent on the authorities is required to show that the finished products comprised on Exhibits 2 and 5 are made from one and the same design. To achieve this he is required to tender not only the design for the finished product in Exhibit 2 but also the design for the finished product in Exhibit 5, for comparison. This he failed to do. . .

The evidence produced by the first respondent was, therefore, far short of what is required of him. . .The defence put up by the appellant only becomes relevant after the first respondent, the plaintiff at the trial court, makes out his case."

It was contended in the plaintiffs' brief that he discharged the burden on him by tendering Exhibit 1 which comprises the plans and drawings, Exhibit 2 which is the finished product from Exhibit 1 and Exhibit 5 which is the infringing product. It was further submitted that there is no way the plaintiff could have laid his hands on the defendants' drawings and plans because they did not register any and that the onus shifted on the defendants to tender their plans and drawings from which Exhibit 5 was produced. The cases of Osawaru v Ezeiruka (1978) 6-7 SC 135 at 144; Oyude v Ogedegbe & others (1984) 1 SC 360 at 363 and Section 149(d), Evidence Act Cap. 113 Laws of the Federation of Nigeria 1990 were cited and relied upon.

It was further submitted by learned Counsel for the plaintiff that it is the defendants who claimed to have been producing the kitchen container that should have tendered the drawings and plans from which Exhibit 5 was produced. The court was referred to Section 13(2), (3) and (5) of the Patents and Designs Act Cap. 344 Laws of the Federation of Nigeria 1990. It was finally submitted in the plaintiff's brief that the plaintiff had discharged the onus as required by Section 137 of the Evidence Act and that the court below was wrong when it held that the plaintiff was required to tender not only the design of Exhibit 2 but also the design for Exhibit 5.

Learned Counsel for the defendants submitted in the defendants/respondents' brief that on the state of the pleadings of the parties, the plaintiff is bound to prove not only the fact of the registration of the said design but also the novelty at the time of the said registration. The court was referred to Sections 12, 13(1)(a), (2), (3) and (5) of the Patents and Designs Act, Sections 137 and 139 of Evidence Act and the case of Ajide v Kelani (1985) 3 NWLR (Part 12) 248 at 265.

It is clear, both from the pleadings and the evidence adduced in support that the parties relied on Section 13(1) of the Patents and Designs Act It provides that:-

"13     (1)     Subject to this section, an industrial design is registrable if -

(a)     it is new; and

(b)     . . . "

The defendants contended that it is not new. It is pertinent to refer to the provisions of subsections (2), (3) and (5) of Section 13 which read:-

"13     (2)     Where an application is made for the registration of an industrial design, the design shall be presumed to be new at the time of the application except in so far as the following provisions of this section provides otherwise.

(3)     An industrial design is not new if, before the date of application for registration, it has been made available to the public anywhere and at any time by means of description, use or any other way, unless it is shown to the satisfaction of the Registrar that the creator of the design could not have known that it had been made so available.

(5)     An industrial design is not new merely because it differs in minor or inessential ways from an earlier design or concerns a type of product other than the type with which an earlier design is concerned."

The nature of an industrial design is described in Section 12 of the Act as:-

"12. Any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, is an industrial design if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result."

From the above, it will be seen that to be registrable, an industrial design must come within the meaning of the expression "designs" in Section 12 of the Act It is any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours that is an industrial design. What actually constitutes the design is that particular combination and arrangement of lines which give such features. It is therefore important in a case where the newness of a design is in dispute, as in this case, the design claimed to be infringed and the infringing design should be put side by side to enable the court to compare and determine whether they are basically the same or whether there are fundamental differences in the shape and pattern of the lines. See Ajibowo & Co Ltd v Western Textile Mills Ltd (1976) 7 SC 97. It is important to put them side by side to enable the court compare having regard to Section 13(5) of the Patents and Designs Act which states that an industrial design is not new "merely because it differs in minor or inessential ways from an earlier design." I am satisfied that the learned trial Judge was in error in coming to his conclusion that the two products are similar and are produced from one design by mere "cursory perusal of the external appearances of Exhibit 2 and Exhibit 5". Similarity in design has nothing to do with its novelty or distinctiveness. A claim for an infringement of rights in design cannot be sustained merely because the infringing product is similar to that of the plaintiff. More is required from the plaintiff bearing in mind the provisions of Section 1 of the Act The earlier observation of the learned trial Judge that owing to the absence of the design for Exhibit 5, he could not compare Exhibits 2 and 5 is sound but he derailed when he proceeded to compare the finished products as against the designs from which they were produced (see Metropolitan Industries (Nigeria) Ltd v Industrial Applications (Nigeria) Ltd (1973) 1 NMLR 274; Amp. Incorporated v Utilux Proprietry Ltd (1972) RCP 103).

I will now consider the issue of proof. It is the plaintiff in the trial court who asserts that the design attached to Exhibit 1 is new or original. In paragraphs 5 and 6 of his further amended Statement of Claim, the plaintiff averred as follows:-

"5.      The plaintiff is the registered proprietor of Registered Design No 4464 in respect of the plastic of Pomade Kitchen container which is a new plastic product in the market and which the plaintiff is the author and first producer.

6.      The plaintiff has been manufacturing the said products before the first defendant began to imitate the design."

In reply to the above, the first defendant in paragraph 5 of its further amended Statement of Defence averred that:-

"5.     The first defendant denies paragraph 5 of the Statement of Claim and shall put the plaintiff to the strictest proof of same. In further answer the first defendant avers that the plaintiff is not the registered proprietor of Registered Design No 4464 in respect of plastic of pomade kitchen container which is not a new product in the market and which the plaintiff is not the author or the first producer or anything whatsoever."

The second defendant in paragraph 5 of his amended Statement of Defence denied paragraph 5 of the plaintiff's further amended Statement of Claim and averred that the plastic container in issue had been in the market long before 1990 and that it was not only being produced by the first defendant but also by other plastic manufacturers and that the design is so common and has no special or peculiar nature or invention to warrant exclusive patent.

The defendants in proof of their prior publication tendered Exhibits 16-'16AA' to show that they had been paying excise duties in respect of kitchen containers. They tendered Exhibits 17-'17AAA' (the production register) and Exhibits 18-'18J' which are invoices of sales. These pieces of evidence were unchallenged and uncontroverted. They are in line with their pleadings and accepted by the court. The defendants' case was rejected not on the probative value but on the basis that they failed to produce the design from which Exhibit 5 was produced for purposes of comparison with Exhibit 1 - the plaintiff's Registered Design No 4464. Exhibit 5 was tendered through the plaintiff's witness - Sunday Uzokwe who recovered it through a policeman.

In civil cases, the ultimate burden of establishing a case is as disclosed on the pleadings. The person who would lose the case if on completion of pleadings and no evidence is led on either side has the general burden of proof (see Elemo & others v Omolade & others (1968) NMLR 359). See also Section 137(1) of the Evidence Act thus, to succeed in his claim that his copyright in the design,

Exhibit 1 had been infringed, the plaintiff has the onus of showing that the finished products comprised in Exhibits 2 and 5 are made from the same design and not that the products are merely similar as the learned trial Judge concluded in his judgment. He should tender the designs of both products (Exhibits 2 and 5) for comparison. In a patent action for infringement, as in every other kind of action, the onus is on the plaintiff, to prove that he has a definite cause of action against the defendant and he is not entitled to call upon the defendant to disprove the alleged infringement - in other words, to prove that plaintiff has no cause of action against him. That is precisely what the plaintiff is urging the court to compel the defendants to do (see Saccharin Corporation Ltd v Wild (1903) 1 Ch 410). It is only when the plaintiff has made out a prima facie case that the onus of proof shifts from plaintiff to defendant and vice versa, from time to time as the case progresses and it rests on that party who would fail if no more evidence were given on either side (see Ajide v Kelani (1985) 3 NWLR 248 at 265). The initial burden was not discharged by the plaintiff in this case. It was for him to show the court that the design he registered was new at the time of the application for registration. The defendants did not claim to have any registered design. See Kodilinje v Odu 2 WACA 331 and Jules v Ajani (1980) 5-7 SC 96 at 108.