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In The Supreme Court of
On Friday, the
13th day of July 2007
Before Their Lordships
S.C. 176/2003
Between
And
Judgment of Court
Delivered by
Aloma
Mariam Mukhtar.
J.S.C.
This is an appeal from the
decision of the Court of Appeal Lagos division, which dismissed the appeal
of the defendant/appellant who appealed to it, not being happy with the
judgment of the Federal High Court, holden at
"1.
An injunction to restrain the Defendant whether by itself, it’s
Directors, officers or any of them or otherwise howsoever from doing the
following acts, or any of them, that is to say:-
a.
Infringing the plaintiffs trade mark “Super Rocket", registered under
No 51136 in class 19.
b.
Passing off or causing, enabling or assisting others to pass off
grinding stones used for the purpose of washing terrazzo floors inscribed
with the trade mark " Super Rocket " not being of the Plaintiffs manufacture
or merchandise as and for the goods of the Plaintiff.
c.
Importing, selling or offering for sale or supplying grinding stones
used for the purpose of washing terrazzo floors or any other product under
the trade mark "Super Rocket" as to be calculated to lead to the belief that
grinding stones not of the Plaintiffs manufacture or merchandise are the
products of the Plaintiff.
2.
Delivery up for destruction of all grinding stones bearing the
offending mark “Super Rocket” in the possession, custody or control of the
Defendant.
3.
Damages of
4.
Costs."
On being served with the
plaintiff’s statement of claim, rather than file the statement of defence,
the defendant filed a motion on notice for the following orders:-
"1.
An order striking out paragraphs 4, 5, 9,
11, 16, 21 (1) (a) of the Plaintiffs statement of claim dated 3rd
of June 1997.
2.
Striking out the statement of claim/entire claim of the Plaintiff.
3.
Dismissing the entire suit with cost against the Plaintiff on the
ground that:-
a.
The Plaintiff has no locus
standi and
b.
Its claim discloses no reasonable possible cause of action."
The affidavit in support of
the motion has the following salient facts:-
"2.
That pursuant to an application by the Plaintiff dated the 25th
of April 1997, this Honourable court on the 5th of May 1997
granted an order to set down the suit for mention and consequently ordered
pleadings to be filed, i.e., the Plaintiff is to file and serve its
statement of claim within 30 days and Defendant to file and serve its
defence within 7 days after service of statement of claim.
3.
That paragraph (sic) 4, 5, 9, 11, 16, and 21 (l)(a) of the statement
of claim in so far as they lay claim to an alleged registration of a trade
mark in favour of the Plaintiff are in direct material conflict with the
particulars of claim dated the 2nd of March 1993.
4.
Further to the conflict indicated in paragraph 3 above, the statement
of claim directly contradicts all relevant material affidavit evidence in
support of various motions filed by the Plaintiff in this suit, all of which
are matters contained in the courts (sic) records, that nothing other than a
mere application for registration of a trade mark is pending before the
trade mark registry and not a registered trade mark as alleged in all the
offending paragraphs aforementioned.
5.
The rights if any in law of the Plaintiffs in the trade mark in
dispute were considered by the court of Appeal in refusing the Plaintiffs
appeal and claim for injunction, it was not and has never been the
Plaintiff’s case, in the said appeal No CA/L/202/93, or in the
Federal High Court that it possessed a registered trade mark on the name
"Super Rocket" or as alleged in all the above referred paragraphs.
6.
That this bold attempt to introduce new issues into this suit by
filing a statement of claim as in the said referred paragraphs is not only
procedurally irregular but in bad faith and highly prejudicial to the
interest of justice.
7.
That the said offending paragraphs of the statement of claim ought to
be stricken from (sic) the entire body of claim, as it is a gross abuse of
the courts (sic) process.
8.
That well apart from the offending stated paragraphs, the Plaintiff
has no locus standi to bring or maintain the
present action nor does its statement of claim contain or even disclose a
reasonable cause of action or raise a triable
issue upon which the honourable court can be called upon to adjudicate at
all.
9.
That consequently the entire statement of
claim is incompetent, ought to be struck out in its entirety and the suit
dismissed with cost against the Plaintiff."
The application was moved and
Jinadu J. of the Federal High Court dismissed
the application, having found as follows:-
"It is by operation of law in
Section 22 (2) of the Trade Marks Act that the subsequent registration of
the Trade Mark was related back to the date of the application for
registration which was 10/10/91.
There is therefore no doubt in my mind that the plaintiff has the
locus standi
to institute this action and also that there is reasonable cause of action
in this matter."
The defendant was not happy
with the dismissal of his application, so he appealed to the Court of Appeal
on grounds of appeal. Briefs of argument were exchanged by learned counsel,
pursuant to the Rules of this court. The briefs of argument which included
an appellant5 s reply brief were adopted at the hearing of the
appeal. Three issues for
determination were distilled from the grounds of appeal in the appellant's
brief of argument. These issues are:-
“1.
Whether the Court of Appeal was right in holding that Federal High
Court has jurisdiction to entertain a claim instituted upon an unregistered
trade mark?
2.
Whether the learned Justices of the Court of Appeal were justified in
holding that
".......with the
registration of the Respondent's trademark a new event has not
intervened to make the present circumstances different from the issues
considered in the earlier interlocutory matter.....?”
3.
Whether the Court of Appeal was right in giving credence to the
Respondent's certificate of Registration of Trade mark which was issued in
contravention of Section 22 (4) of the Trade mark Act, Cap 436, Laws of the
Federation?"
The respondent also formulated
three issues for determination in its brief of argument as follows:-
"Issue No 1
Whether the Federal High Court
has jurisdiction to adjudicate over the claims brought before it by the
plaintiff?
Issue No 2
Whether the decision of the
Supreme Court in respect of the earlier interlocutory appeal in this suit ((Dyketrade
v. Omnia (2000)12 NWLR
(pt. 680) 1), operate as a bar against the entertainment by the Federal High
Court, of the plaintiffs subsisting claim for infringement of trade mark?
Issue No 3
Whether the Federal High Court
is precluded from recognizing the certificate of registration of the trade
mark Super Rocket under No 51136 pleaded in the statement of claim?"
I will adopt the appellant's
issues for the treatment of this appeal, starting with issue (1) supra. The
learned counsel for the appellant opened his argument on this issue by
submitting that the Federal High Court lacks jurisdiction to entertain a
claim upon an unregistered trade mark. Learned counsel for the appellant
referred to the case of
Madukolu
v. Nkemdilim (1962) 2 NWLR
page 341 on the competence of a court to adjudicate on an action. In
that case the competence of a court to adjudicate upon an action is
illustrated thus:-
"1
(a)
It is properly constituted as regards
numbers and qualifications of the members of the bench and no member is
disqualified for one reason or the other;
(b)
The subject matter of the case is within its jurisdiction, and there
is no feature in the case which prevent the court from exercising its
jurisdiction; and
(c)
The case comes before the court initiated by due process of law, and
upon fulfilment of any condition precedent to the exercise of jurisdiction."
According to learned counsel,
the third condition is the problem in this issue, and learned counsel's
argument is whether the case before the Federal High Court was initiated by
due process of law, and upon fulfilment of any condition precedent to the
exercise of jurisdiction, and what determines jurisdiction of court is the
cause of action of the plaintiff in the writ of summons as held in the case
of NV Scheep v. MV "Arz"
(2000) 15 NWLR part 691 page 668. This may
be so, but where a statement of claim has been filed; its content and claim
determine the jurisdiction of the court, as it is settled law that a
statement of claim supersedes a writ of summons. See
Ayorinde
v. Oni (2000) 3 NWLR part 649 page 348, and
Nnadi v. Okoro
(1998) 1 NWLR part 535 page 573.
I will now look at the
statement of claim and reproduce the salient averments hereunder. They
read:-
"4.
The plaintiff further avers that for the purpose of distinguishing
the grinding stones manufactured for the Plaintiff from other grinding
stones available in the market, the plaintiff adopted the trade mark "Super
Rocket" which it registered in Nigeria under No. 51136 in class 19 with
effect from 10th October 1991 for the sale of grinding stones and
which said trade mark is clearly inscribed on all grinding stones ordered by
and supplied to the plaintiff.
5.
The plaintiff avers that the said trade mark ‘Super Rocket' is valid
and subsisting on the register of trade marks and remains in force up to 10th
October, 1998.
8B.
By reason of the foregoing the Plaintiff has acquired substantial
reputation in the trade mark ‘Super Rocket' in connection with grinding
stones as its products have become extremely well known in the building
industry and to the purchasing public in Nigeria.
9.
As a consequence of the above reputation, the Plaintiff has acquired
substantial goodwill in the trade mark "Super Rocket" in Nigeria and which
trade mark has by wide spread usage over the past 7 years become distinctive
of the Plaintiffs goods on the part of the members of the public.
10.
In December 1992 it came to the Plaintiffs attention that a
consignment of grinding stones branded "Super Rocket" not being the
Plaintiffs product had been imported into the country by the Defendant from
Italy, without the consent or permission of the Plaintiff.
11.
The Plaintiff being seriously concerned about the aforesaid
importation, as it constituted an infringement of the Plaintiffs trade mark
"Super Rocket" No. 51136 proceeded to investigate same, but by the time the
Plaintiff traced the importation of the aforesaid grinding stones to the
Defendant, the whole consignment had already been distributed and sold off
by the Defendant.
12.
The Plaintiff avers that subsequently it received information that
the Defendant had again imported into the country another consignment of
grinding stones, not of the Plaintiffs merchandise and branded Super Rocket
and that the consignment was at the time being cleared at the Port
preparatory to delivery and distribution.
13.
Consequently, the Plaintiff applied ex-parte for an Anton Filler
Order against the Defendant which was granted by the Honourable court on the
12th of March, 1993.
14.
The Plaintiff further avers that upon the execution of this order on
the Defendant at its address at Adeyanju Daniel
Street (Vanguard Avenue) Oshodi -
Apapa expressway Lagos 8 photocopies of the way
bills showing sales of polishing stones to certain customers, were delivered
to the Plaintiffs solicitor and the bailiffs of this Honourable court.
Particulars
15.
The Plaintiff also avers that each carton contains about 56 grinding
stones and the Defendant sells 3 grinding stones for
16.
By using the trade mark "Super Rocket" in the course of trade in
relation to grinding stones which are not of the Plaintiffs manufacture or
merchandise, the Defendant has infringed the Plaintiffs registered trade
mark "Super Rocket" No 51136. Further the Defendant is also thereby
passing off its grinding stones as and for the Plaintiffs products.
17.
The Plaintiff avers that the defendant has deliberately branded its
products as "Super Rocket" in order to benefit undeservedly from the good
reputation which the Plaintiff has earned over the past 7 years from the
high quality of the Plaintiffs grinding stones."
The statement of claim was
filed well before the motion for dismissal of the suit was filed, so the
above averments were very much active to determine the cause of action. The
particulars of claim reproduced in the appellant's brief of argument cannot
be read in isolation, they must be read together with the above averments to
determine whether or not a cause of action has been disclosed by the
plaintiff. I have no doubt in my mind that the cause of action is the
infringement of the plaintiffs registered trade mark and passing off. By
virtue of Section 251 (1) (f) of the 1999 Constitution of the Federal
Republic of Nigeria, the Federal High Court was conferred with exclusive
jurisdiction in matters relating to any Federal enactment on copyright
patent designs etc.
The relevant Federal enactment
to the subject matter of this suit is the Trade Marks Act Cap 436, Laws of
the Federation of Nigeria 1990; Sections 3 of which stipulates the
following:-
"3.
No person shall be entitled to institute any proceeding to prevent or
to recover damages for the infringement of an unregistered trade mark; 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."
The learned Counsel relied
upon the cases of Ayman Enterprises
v. Akuma. Industries Ltd and 3 ors (2003) 13
NWLR part 836 page 22 and
Dyketrade v. Omnia (2000) 755 part 1 page 1.
The learned Counsel for the
respondent has in response submitted that it is only where the statement of
claim has not been filed that the court will look only at the writ of
summons and the particulars of claim endorsed thereon to determine whether
or not the court has jurisdiction in the matter before it. Therefore, the
claim of the plaintiff as formulated in the statement of claim is final. He
argued that in the NV Scheep case only the writ of summons and particulars
of claim had been filed at the time the issue of jurisdiction was raised,
hence the court in that case stated that the cause of action is as endorsed
on the writ of summons, but where a statement of claim has been filed, it is
the averments therein that need to be looked at. He referred to the case of
Ikine
v. Edjerode (2001) 18 NWLR
part page 446. Indeed, having filed the statement of claim, the position
of the law is that the writ of summons and particulars of claim are
superseded, and it is the content of the said statement of claim that
becomes final, and on which the case is predicated.
The learned counsel for the
appellant has submitted that the Federal High Court has no jurisdiction to
entertain the respondent's claim owing to the failure of the respondent to
fulfil the condition precedent to bringing the claim, which is obtaining a
certificate of registration of the said trade mark before suing for its
alleged infringement.
The learned counsel for the
appellant argued that unless this action was initiated by an invalid
process, this court should not be concerned with the jurisdiction of the
Federal High Court at the date the writ of summons was filed, but with the
current jurisdiction of the Federal High Court. According to him even if the
Federal High Court did not have jurisdiction over the cause or causes of
action sought to be litigated before it at the time the action was
initiated, but later acquired jurisdiction, then its continued adjudication
over the matter will be lawful and valid. He placed reliance on the case of
Adani
& Anor v. Igwe 1957
1 NSCC 84. Learned counsel further contended
that jurisdiction conferred on the Federal High Court by Section 251 of the
1999 Constitution is in addition to any other jurisdiction which might be
conferred on the court by any Act of the National Assembly. Therefore, the
jurisdiction of the Federal High Court is not limited to that prescribed in
the Constitution. He continued by submitting that Section 315 of the 1999
Constitution deems existing laws in respect of matters within the
legislative authority of the National Assembly to be Acts of the National
Assembly. That the law relating to the establishment power and
administration of the Federal High Court is a law within the legislative
competence of the National Assembly, therefore
the Federal High Court Act is an Act of the National Assembly. Consequently
any jurisdiction conferred upon the Federal High Court by that Act, which is
wider than the jurisdiction conferred upon the court by the Constitution
shall be jurisdiction, validly conferred on the court. Hence in
Ayman Enterprises v.
Akuma Industries & 3 ors 2003 13 NWLR part 836
page 22, the court took into consideration the jurisdiction conferred by
the Federal High Court in reaching its decision. Now, let me examine the
provision of Section 251 (1) (f), vis-à-vis Section 315 of the constitution,
which states thus:-
"251
(1)
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, the Federal High Court shall
have and exercise jurisdiction to the exclusion of any other court in civil
causes and matters:-
........................
(f)
Any Federal enactment relating to copyright patent, designs, trade
marks and passing-off, industrial designs and merchandise marks, business
names. Commercial and industrial monopolies combines and trusts; standards
of goods and commodities and industrial standards."
"315
(1)
Subject to the provisions of this Constitution, an existing law shall
have effect with such modifications as may be necessary to bring into
conformity with the provisions of this Constitution and shall be deemed to
be-
(a)
An act of the National Assembly to the extent that it is a law with
respect to any matter on which the National Assembly is empowered by this
Constitution to make laws; and
(b)
a law made by a House of Assembly to the extent that it is a law with
respect to any matter on which a House of Assembly is empowered by this
Constitution to make laws."
The above provisions speak for
themselves. Section 251 confers on the Federal High Court jurisdiction to
hear and determine not only on matters stipulated in subsection (f) supra,
but other jurisdiction as may be conferred upon it by an Act of National
Assembly. Consequently the Federal High Court's jurisdiction is not limited
to only matters contained in the said subsection (f) supra. Section 315 of
the Constitution similarly widens the scope of the jurisdiction of the
Federal High Court, as the Federal High Court is within the purview of the
legislative power of the National Assembly. It is a fact that the case
of Ayman v.
Akuma supra was decided with reference to the provision of
Section 230 (1) (f) of the 1979 Constitution as amended by Decree 107 of
1993 and Section 7 of the Federal High Court Act 1973. According to learned
counsel for the respondent, the provisions of Section 230 (1) of the 1979
Constitution as amended by Decree 107 of 1993 and Section 251 (1) of the
1999 Constitution being virtually identical, the decisions in
Ayman v. Akuma
regarding the interpretation of Section 230 (1) of the 1979 Constitution is
applicable in the interpretation of Section 251 (1) (f) of the 1999
Constitution. He continued that this court has adopted as prescribed by the
Federal High Court Act, the 1973 text of Section 7 of the Act, whereas that
text had already been amended and therefore no longer valid at the time the
decision in Ayman v.
Akuma was reached, so the decision was in
error, hence this court is being urged to depart from the conclusion reached
in that case; that the jurisdiction of the Federal High Court in respect of
passing-off is limited to claims arising from the infringement of a
registered trade mark and does not extend to claims founded on principles of
common law. According to learned counsel section 7 of the
Federal High Court Act 1973 was
amended by the Federal High Court
(Amendment) Decree 1991 (Decree No 60). Though the decree was
promulgated on 30th December 1991, it was suspended two days
later by the Federal High Court
(Amendment Decree 1992 (Decree No 16), promulgated on 1st
January 1992. Subsequently, on 25th August 1993, by Statutory
Instrument No 9 of 1993, 26th August 1993 was appointed as
the date on which the Federal High
Court (Amendment) Decree 1991 shall come into force.
It is a fact that in the
Ayman's
case Section 7 of the 1973 text of the Federal High Court Act was reproduced
and dealt with thus :-
"Section 7 (1) (c) (ii) of the
Federal High Court also provides:-
The
(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 trade
marks. "It is to be noted that it did not include "passing-off" and it did
not say "arising from any Federal enactment relating to". 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"
It is also a fact that Section
(7) of the Federal High Court Act was amended by the Federal High Court
(Amendment) Decree No 60 of 1991 in the following provision, in as
far as it concerns the subject matter in the present suit:-
"2.
For section 7 of the Principal Act, there shall be substituted the
following new section, that is –
7(1)
The court shall to the exclusion of any
other court have original jurisdiction to try civil causes and matters
connected with or pertaining to –
(f)
Any Federal enactment of common law relating to copyright, patents,
designs, trademarks and passing-off, industrial designs .........."
With this amendment the issue
of common law, and passing-off was specifically introduced to the provision
of Section 7 of the Federal High Court Act reproduced in the
Ayman's
case supra, and reproduced herein. The Federal enactment in the context of
the issue under discussion is the
Trade Marks Act 1965, Cap. 436,
Laws of the Federation of Nigeria 1990, Section 3 of which I have already
reproduced supra.
Inspite of the amendment,
Section 7 of the Federal High Court Act by the introduction and or additions
mentioned above, the Federal enactments still remain the said section 3 of
the Trade Marks Act reproduced supra, and which has not been amended. The
fact that the old text of Section 7 i.e. the
"Assuming that when pleadings
were closed, the then Supreme Court had jurisdiction to try the action, it
is clear that when the case came up for trial before the High Court in
September, 1956, that court was invested with jurisdiction to try it. What
is the court to do in such case? Is it to decline jurisdiction merely
because it had no jurisdiction when the case started and thus put the
parties to the expenses of beginning all over again? In my view, this would
not be only unreasonable, but wrong in law. I have always understood the
position to be that so long as a court acquires jurisdiction before
delivering judgment, its decision cannot be attacked on the ground of want
of jurisdiction. Consequently, the time to decide whether the court has
jurisdiction or not is when the point is taken ......."
Indeed, the above clarifies
the position as in the instant case, on the jurisdiction of the court.
In the light of the above
discussion I resolve issue (1) supra in favour of the respondent, and
dismiss ground (1) of appeal to which it is married.
I will now deal with issue (2)
in the appellant's brief of argument, where the learned counsel for the
appellant posited that it is trite law that where an issue has been decided
in an earlier action it is incompetent for a court to decide on such issue
in a subsequent action. He argued that issue estoppel arises where a court
of competent jurisdiction had earlier adjudicated upon an issue between the
same parties or the privies and the same issue comes incidentally in
question in any subsequent proceeding between the same parties or their
privies, and that issue estoppel applies whether the point involved in the
earlier decision is one of fact or law or mixed law and fact. He placed
reliance on the cases of
Fadiora
v. Gbadebo (1978) S.C. 219 and
Iyowuawi v. Iyowuawi
(1987) NWLR part 630 page 61. In the earlier
action, the respondents reliefs sought were as follows:-
"1.
An injunction to restrain the Defendants, whether by themselves,
their Directors officers, servants or agents or any of them, or otherwise
howsoever, from doing the following acts or any of them, that is to say:-
a.
Infringing the plaintiffs Trade mark 'Super Rocket' applied for and
accepted in
b.
Passing-off, or causing, enabling or assisting others to pass-off
grinding stones used for the purpose of washing terrazzo floors inscribed
with the trade mark "Super Rocket" not being of the plaintiffs manufacture
or merchandise as and for the goods of the plaintiff.
c.
Importing, selling or offering for sale, or supplying grinding stones
used for the purpose of washing terrazzo floors or any other product under
the trade mark 'Super Rocket' as to be calculated to lead to the belief that
grinding stones not of the plaintiff’s manufacture or merchandise are the
product of the plaintiff.
2.
Delivery up for destruction of all grinding stones bearing the
offending mark "Super Rocket" in the possession, custody or control of the
Defendant.
3.
Damages of
4.
Costs.
5.
Further or other reliefs."
According to learned counsel
for the appellant, the respondent sought exactly the same reliefs in the
present statement of claim, as were sought in the particulars of claim upon
which judgments were pronounced by the Court of Appeal and Supreme Court in
Dyketrade v. Omnia 2000 12 NWLR part
680 page 1. Learned Counsel further argued
that the respondent's claim did not arise until 1993 at which material time
it had not registered its trade mark, but only had a pending application,
the effect of which is that the claim was without legal basis, incompetent
and bad. It was submitted that the Supreme Court having come to the
conclusion in Dyketrade v. Omnia
supra the respondent cannot re-litigate the issue of trade mark infringement
as long as the Supreme Court judgment on same subsists. He referred to the
case of Adigun and Ors. v. The
Secretary of
In reply learned counsel for
the respondent has submitted that the Supreme Court in
Dyketrade v. Omnia supra did not
dismiss the plaintiffs claim for infringement of trade marks, the decision
of the court was limited to the merit of the application for an
interlocutory injunction. According to the learned counsel, the claims in
the decision in the Dyketrade case supra are different from the claims in
the current case. Learned counsel placed reliance on the case of
Mohammed v.
Olawunmi 1993 4 NWLR part 287 page 254,
and Halsbury's laws of England, 3rd
Edition Vol. 15, paragraph 359, which states the following in respect of
the plea of res
judicatam.
"In all cases where the cause
of action is really the same, and has been determined on the merits, and not
on some ground (as the non-expiration of the term of credit) which has
ceased to operate when the second action is brought, the plea of
res judicata
would succeed. The doctrine applies to all matters which existed at the time
of the giving of the judgment, and which the party had an opportunity of
bringing before the court. If, however there is a matter subsequent which
could not be brought before the court at the time, the party is not
estopped
from raising it."
The above is quite fortifying.
Indeed, there is no way one can classify the claims in the earlier Dyketrade
Limited case supra in the same category as those in the present case. In the
earlier case, the claims were as stated in the particulars of claim and
based on a complaint of the use of an unregistered trade mark. In the
instant case the trade mark complained of had been registered and the
registration number stated in the statement of claim. We must not loose
sight of the fact that in the present case a statement of claim had already
been filed and all the materials set out therein, and it was based on the
pleadings that the application for striking out the claim of the
respondent/plaintiff was filed and moved. This appeal emanated and had its
root from the ruling of the trial Federal High Court refusing the
application. Again, we must not loose sight of the cardinal principle of law
that a statement of claim supercedes the writ or whatever material of claim
that might have been filed earlier on. See
Lahan
v. Lajoyetan (1972) 6 SC
190, and Dr. Mathias Oko
Offoboche v. Ogoja
Local Government and Anor (2001) 16
NWLR part 739 page 458.
Again, the thrust of the
argument in the earlier case was the non registration of the trade mark
sought to be protected, and that omission led to the failure of the case,
whereas the omission or anomaly had been rectified, and the situation we
have at hand now is different. I am not satisfied that the questions for
determination are the same, as the difference is clear, so to speak. The
cardinal principle of the law is that for issue
estoppel
per rem judicatem
to operate and succeed the party relying on it must establish the following
pre conditions :-
(1)
That the parties or their privies in both earlier and instant case
are the same.
(2)
That the judgment relied upon is valid, subsisting and final.
(3)
That the claim or issue in dispute in the proceedings are the same.
(4)
That the subject matter of the litigation in both cases is the same.
(5)
That the court that decided the previous suit is a court of competent
jurisdiction.
It is my view that the pre
condition number (3) above has not been met, so the case cannot operate as
an estoppel per rem
judicatem. See
Okukuje
v. Akwido (2001) 3 NWLR
part 700 page 261, Chiekwe v.
Obiora (1960) F.S.C
page 258, and Abiodun v.
Fasanya (1974) 11 S.C. 61.
I endorse the finding of the
lower court which reads thus:-
"I agree with the submission
of the learned counsel for the respondent that with the registration of the
Respondent's trade mark which was pleaded in paragraph 4 of its statement of
claim a new event has intervened to make the present circumstances different
from the issues considered in the earlier interlocutory matters which went
to the Court of Appeal and the Supreme Court."
In this wise, I resolve this
issue No. (2) in favour of the respondent, and
ground of appeal No. (2) to which it is married
fails, and it is dismissed.
On the last issue raised for
determination, which is to do with the application of Section 22(4) of the
Trade Marks Act supra, I am of the view that it is not necessary to go
through, the arguments canvassed by both counsel to the parties, in view of
my findings and earlier pronouncements in this judgment. I have already
found that the trade mark alleged to be infringed in this case has already
been registered, and the suit was based on the registered trade mark, hence
the period of completion of registration is not an issue and does not arise
at this stage of the proceedings. To go into the detail of any abatement or
non compliance will be an exercise in futility, having held that the suit
was properly before the Federal High Court that indeed has jurisdiction
conferred upon it to hear the suit by the Constitution of the Federal
Republic of Nigeria supra and the Federal High Court Act. In the
circumstances, the need to deal with the issue is obviated. The issue even
if discussed will be resolved in favour of the respondent. Ground (3) of
appeal to which it is married fails and it is dismissed.
Before I conclude this
judgment, I will like to comment on the appellant's reply brief of argument,
which is a far cry from what an appellant's reply brief of argument should
contain. The reply brief filed by the appellant in this case virtually
opened another vista for argument of the appeal the second time, when it had
already thoroughly canvassed arguments in its brief of argument. The purport
of an appellant reply brief is to address new issues that may have arisen
from the respondent's brief of argument, and provide answers to clarify
whatever such new issues may have exposed. See
Humbe
v. A. G. Benue State (2000) 3 NWLR part 648, page 419,
Ojo v. Okitipupa Oil Palm PLC (2001) 9
NWLR part 716 page 679, and V.S. Steel (Nig.) Ltd. V. Government of
Anambra State (2001) 8 NWLR part 715 page 454.
In the light of the
reasonings in this judgment, I dismiss the
appeal as it has no merit whatsoever. I affirm the judgment of the Court of
Appeal Lagos Division. I hereby order that the case be heard by the Federal
High Court Lagos. I
assess costs at
Judgment delivered by
Ikechi
Francis Ogbuagu. J.S.C.
This is an appeal against the
decision of the Court of Appeal, Lagos Division
(hereinafter called "the court below") delivered on 20th May,
2003, affirming the Ruling of Jinadu, J. of the
Federal High Court,
Dissatisfied with the said
decision, the Defendant/Appellant has appealed to this Court on three (3)
Grounds of Appeal contained in the Amended Notice of Appeal filed on 6th
December, 2006. Without their particulars, they read as follows:
"Ground 1
The Court of Appeal erred in law when it affirmed the ruling of the Federal
High Court regarding the issue of registration of Respondent's trademark and
its competence to adjudicate upon it.
(the
underlining is mine)
Ground 2
The Court of Appeal erred in law when it held that "....... With the
registration of the Respondent's trademark to make the present circumstances
different from the issues considered in the
earlier interlocutory matter ....."
Ground 3
The Court of Appeal erred in law when it gave
credence to the Respondent's
Certificate of Registration of Trade Mark which was issued in contravention
of S.22 (4) of the Trade Mark Act
Cap 436, Laws of the Federation".
The facts of the case briefly
stated are that in instituting the suit in 1993, the Plaintiff/Respondent
filed a Writ of Summons where only
the particulars of claim were stated. That said particulars of
claim, were not the same as the averments in a Statement of Claim. What is
more, in praying for Injunctions, the first prayer which is pertinent in
this matter/appeal reads as follows:
"(a)
Infringing the Plaintiffs
trade mark "Super Rocket"
applied for and accepted in Nigeria under TP11933/91/5".
(the
underlining mine)
In other words, the Respondent
had made an application for registration of its trade mark. I note that at
the time of filing the said suit, the Plaintiff/Respondent, also filed both
a motion ex parte and a substantive motion on Notice for an Injunction to
restrain the Defendant/Appellant, from importing or selling the goods
complained of, firstly, pending the hearing of the ex parte motion and
subsequently, pending the hearing and determination of the said suit. The ex
parte motion was heard and granted. On being served with the motion on
notice and the order granted in respect of the motion ex parte, the
Defendant/Appellant filed a motion, to discharge the
order of interim injunction.
The trial court, heard together the motion on notice and the motion
to discharge the said interim order of injunction. In his
Ruling, the learned
trial Judge, discharged the interim order of injunction, refused the motion
for interlocutory injunction and proceeded to strike out the entire suit.
The Plaintiff/Respondent,
appealed to the Court of Appeal that allowed the appeal in respect of the
striking out of the suit on the ground that no such prayer was before the
trial court; but it dismissed the appeal in respect of the refusal of the
trial court, to grant the prayer for an interlocutory injunction on the
ground, firstly, that an injunction to restrain the infringement of a trade
mark, could not be granted when the
trade mark claimed or applied for, had not yet been registered.
Secondly, that an injunction to restrain the Defendant/Appellant, from
continuing to sell the goods
complained of on the basis of the claim for
passing-off, could not be
granted when the Plaintiff/Respondent, did not
specifically pray for an
interlocutory injunction to restrain the Defendant/Appellant, from
passing-off its goods as
those of the Plaintiff/Respondent. The Court of Appeal, therefore, ordered
that the suit be re-listed at the trial Federal High Court which was
eventually done. The Plaintiff/Respondent, appealed to this Court against
the refusal of the Court of Appeal to grant the interlocutory injunction
prayed for. The appeal was dismissed virtually on the same grounds as did
the Court of Appeal. That appeal and the decision is
reported in (2000) 12 NWLR (Pt.680)
1; (2000) 7 SCNJ.
90.
I also note that in the
meantime, as a result of the re-listing of the suit in the Federal High
Court, pleadings were ordered and the Plaintiff/Respondent in its Statement
of Claim filed on 3rd June, 1997, in paragraph 4 thereof, averred
inter alia, that its "trade mark
Super Rocket, which it registered in Nigeria, under No. 51136 in Class 19
with effect from 10th
October, 1991". (See page 28
of the Records). Then in paragraph 21(1) (a) thereof, it claimed against the
Defendant/Appellant, an injunction,
to restrain the Defendant/Appellant, from infringing its trade mark Super
Rocket registered under No 51136 in Class 19". (See page 30 of
the Records).
The Defendant/Appellant did
not like this pleading of the registration of its trade mark in the
Statement of Claim and therefore, filed a motion on 30th October,
1997, praying the court to strike out the paragraph in which the said
registration of the trade mark was pleaded and also to dismiss the suit in
its entirety, on the ground that the Plaintiff,
lacks locus
standi and that the -Statement of Claim,
discloses no reasonable cause of
action. After hearing arguments, the learned trial Judge, in his
Ruling, dismissed the
motion/application and held that the Plaintiff/Respondent was entitled to
alter, modify or extend the cause of claim in its particulars of claim so
long as it did not create a new cause of action. That the
Plaintiff/Respondent had not created a new cause of action in its Statement
of Claim because,
"the
fact of registration of the trade mark
arose from the fact of application
for the registration of the trade mark and the acceptance thereof for
registration ".
(the
underlining is mine)
The Defendant/Appellant, -
appealed to the court below against the decision of the said Federal High
Court. As earlier stated by me at the beginning of this Judgment, the court
below dismissed the appeal, hence the instant appeal. I have taken pains to
highlight the above, in order to show that this appeal poses no difficulty
to me as the facts, are straight forward. For completeness, I am obliged to
reproduce the parties' issues for determination.
The Appellant's three (3)
issues for determination, read as follows:
“l.
Whether the Court of Appeal
was right in holding that the Federal High Court has jurisdiction to
entertain a claim instituted upon
an unregistered trade mark?
2.
Whether the learned justices of the Court of Appeal were justified in
holding that "......... with the registration of the Respondent's trade mark
a new event has intervened to make the present circumstances different from
the issues considered in the earlier interlocutory matter........?
3.
Whether the Court of Appeal
was right in giving credence to Respondent's Certificate of Registration of
Trademark which was issued in contravention of S.22(4) of the Trademark Act,
Cap 436, Laws of the Federation?"
The Respondent, also
formulated three (3) issues for determination, namely,
"Issue No 1
Whether the Federal High Court has jurisdiction to adjudicate over the
claims brought before it by the Plaintiff.
Issue No 2
Whether the decision of the Supreme Court in respect of the earlier
interlocutory appeal in this suit
(Dyketrade v. Omnia (2000) 12 NWLR (Pt.680) 1), operates as a bar
against the entertainment by the Federal High Court, of the
Plaintiff's subsisting claim for infringement of trade mark?
Issue No 3
Whether the Federal High Court
is precluded from recognizing the certificate of registration of the trade
mark
Super Rocket under No. 51136
pleaded in the Statement of Claim "?
(the
underlining mine)
It is pertinent to be borne in
mind and to be stressed that at the time the suit was
re-listed in the Federal
High Court and pleadings were
ordered without any objection by the Appellant or his learned
counsel, the parties, were to file and exchange their respective pleadings -
i.e. by filing a Statement of Claim
and a Statement of Defence respectively. The said order was a
manifestation of the fact that
particulars of claim endorsed on a Writ of Summons, were/are not the
same thing as averments in a Statement of Claim, where a Plaintiff can/could
give particulars where or if necessary .
The learned counsel for the
Appellant ought to have appreciated and realized and this is settled, that a
Statement of Claim supercedes a
Writ of Summons. Speaking for myself, by not objecting to the
said order of ordering pleadings to be filed and/or exchanged, the Appellant
and his learned counsel, conceded or admitted, that a Writ of Summons, is
not the same thing as a Statement of Claim even if "particulars of Claim"
are endorsed on the said Writ of Summons. A Writ of Summons is used
to commence every action
except if a particular rule or law provides otherwise. This is why,
its contents, are different from a Statement of Claim. The contents are
substantially as follows:
"(a)
the court in which the
action is brought and the Judicial Division,
(b)
the heading of the matter;
(c)
Names of the parties and where appropriate, the capacities in which
they sue or are being sued.
(d)
Name and address of the Defendant/Defendants
(e)
Time within which the Defendant is commanded to enter appearance and
consequences of default of appearances;
(f)
Life span of the writ
(g)
How the Defendant may enter appearances, - i.e. personally or through
a Solicitor/Counsel;
(h)
Particulars of claim;
(i)
Name and address of Solicitor
(j)
Address of Plaintiff.
In Black's Law Dictionary 7th
Edition page 1065, a Writ of Summons, is stated to be a Writ by which, under
the Judicature Acts of 1873 - 1875
all actions, were commenced. In
It is because, a Statement of
Claim supercedes
a/the Writ of Summons, that in determining either the jurisdiction of the
court to entertain and determine the suit, or whether a reasonable cause of
action is disclosed or whether the plaintiff has a locus
standi, that the court, looks at the
Statement of Claim and perhaps the Writ. For the settled authority that a
Statement of Claim supercedes the Writ of Summons, See the cases of
Lahan & Ors. v. Lajoyetan
& Ors. (1972) 6 S.C. 190
@ 792; (1972) NSCC 460
@ 461; Otanioku
v Alli (1977) 11 - 12 S.C. 9; Elf.
Nig. Ltd, v. Siko
& Anor. (1994)
7-8 SCNJ. (PU) 119;
and recently,
Alhaji Ndayako (Etsu
Nupe) & Anor.
v. Alhaji
Dantoro & 6 Ors. (2004) 13
NWLR (Pt.889) 189; (2004) 5 SCNJ. 152 (a), 175 -
176 citing several cases therein.
Indeed, in the case of Enigbokan v.
American International Ins. Co. Ltd. (1994) 4 NWLR (Pt.348) 1 (a), 19,
it was held that in many cases, the Statement of Claim, more than a writ,
amplifies through facts averred, the real action a party pursues.
As to the fact of looking at
the Statement of Claim by the court and not the writ in order to determine
say, whether it has jurisdiction or there is a cause of action, etc, there
are also too many decided authorities in this regard. See the cases of
Chief Adeyemi & Ors. v.
Opeyori (1976) 9-10 S.C. 31 (g), 51; Western Steel Workers
Ltd. & Anor. v. Iron & Steel Workers
Learned counsel for the
Appellant, can now see that from the welter or plethora of decided
authorities by this Court, he was not standing on a firm ground in respect
of the complaint and arguments in the Appellant's Brief which with respect,
lack substance and fail.
From what I have adumbrated
above in this Judgment, the learned counsel for the Appellant can also see,
with respect, that by no stretch of imagination, can/could the plea
of
estoppel rem
judicata or issue estoppel,
apply in the said suit leading to this appeal. In the first place,
the matter that came to this Court in the case of
Dyktrade Ltd, (also sometimes spelt Dyketrade) v. Omnia
Nig. Ltd, (supra), was interlocutory and not a final decision or
disposal of the suit. In the second place, at the time the appeal was filed
and the suit, or whether a reasonable cause of action is disclosed or
whether the plaintiff has a locus standi,
that the court, looks at the Statement of Claim and perhaps the Writ. For
the settled authority that a Statement of Claim supercedes the Writ of
Summons, See the cases of Lahan & Ors. v.
Lajoyetan & Ors. (1972) 6
S.C. 190 @ 792; (1972) NSCC 460
@ 461; Otanioku
v Alli (1977) 11 - 12 S.C. 9; Elf.
Nig. Ltd, v. Siko
& Anor. (1994)
7-8 SCNJ. (Pt. 1) 119;
and recently,
Alhaji Ndayako (Etsu
Nupe) & Anor.
v. Alhaji
Dantoro & 6 Ors. (2004) 13
NWLR (Pt.889) 189; (2004) 5 SCNJ. 152 (a), 175 -
176 citing several cases therein.
Indeed, in the case of Enigbokan v.
American International Ins. Co. Ltd. (1994) 4 NWLR (Pt.348) 1 (a), 19,
it was held that in many cases, the Statement of Claim, more than a writ,
amplifies through facts averred, the real action a party pursues.
As to the fact of looking at
the Statement of Claim by the court and not the writ in order to determine
say, whether it has jurisdiction or there is a cause of action, etc, there
are also too many decided authorities in this regard. See the cases of
Chief Adeyemi & Ors. v.
Opeyori (1976) 9-10 S.C. 31 @ 51; Western Steel Workers Ltd. &
Anor. v. Iron & Steel Workers
Learned counsel for the
Appellant, can now see that from the welter or plethora of decided
authorities by this Court, he was not standing on a firm ground in respect
of the complaint and arguments in the Appellant's Brief which with respect,
lack substance and fail.
From what I have adumbrated
above in this Judgment, the learned counsel for the Appellant can also see,
with respect, that by no stretch of imagination, can/could the plea
of
estoppel resjudicata or issue
estoppel, apply in the said suit
leading to this appeal. In the first place, the matter that came to this
Court in the case of Dyketrade Ltd,
(also sometimes spelt Dyketrade
v. Omnia Nig. Ltd,
(supra), was interlocutory and not a final decision or disposal of the suit.
In the second place, at the time the appeal was filed and heard by this
Court, the said trademark had not been registered. There was then, a mere
application for it to be registered. At the time the trial court heard by
this Court, the said trade mark had not been registered. There was then, a
mere application for it to be registered. At the time the trial court heard
arguments and made its ruling, the trade mark had been registered. So, now
that the instant appeal has come to this Court, the trade mark had been
fully and completely registered and numbered
51136 in Class 19.
With the greatest humility and respect to the learned counsel for the
Appellant, this appeal, is an exercise in futility. Indeed and in fact, the
decision of the two lower courts, are based on findings of fact that are not
perverse and are therefore, concurrent findings.
For completeness, the cause of
action and the remedy sought when the suit was before the trial court, were
the factual situation the existence of which, entitled the
Plaintiff/Respondent, to obtain a remedy against the Appellant. It was the
factual situation on which the Plaintiff/Respondent relied to support its
claim which must be recognized by the law as giving rise to a substantive
right capable of being claimed or enforced against the Appellant. See the
cases of
Ogbini & Mrs.
Oloto 19 & 3 Ors. (1993) 7
NWLR (Pt.304) 128; (1993) 7 SCNJ. (Pt.II)
447@, 454
and
Attornev-General of the Federation v.
Attorney-General of all the 36 States (2001) 7 SCNJ.
1 @ 32
and many
others. The said decision of this Court in the
Dyktrade Ltd, v.
Ominia Nig. Ltd, (supra), was not only limited to the merit of
the application for interlocutory injunction, but it was based, on the
claims contained in the particulars
of claim and facts deposed to in the affidavit in support of the application
for a grant of interlocutory injunction. The claims and the facts
averred in the Statement of Claim are diametrically or significantly
different as I have demonstrated above in this Judgment. I think I have
"flogged" this point or issue. But before I am done, I note and most
importantly, that the Appellant,
never, appealed against the decision of the trial court that
the Plaintiff/Respondent, is entitled to plead the registration of its trade
mark in the Statement of Claim and that the Statement of Claim,
supercedes the
particulars of Claim. This knocks out the bottom so to speak, of this
appeal, because, on the decided authorities and this is settled, that where
there is no appeal against a finding of fact, an Appellate Court, cannot
deal with the matter and cannot, disturb such finding or findings of fact or
facts not properly brought as well as those not brought before it. See the
cases of
Ejiwhomu v.
Edok-Eter Mandilas
Ltd. (1986) 9 S.C. 41 (a), 47;
Iseru
v. Catholic Bishop (1997) 4 SCNJ. 10
@ 115; Dr.
Alakija & Ors. v.
Alhaji Abdulai
(1998) 6 NWLR (Pt.552) 1, 24; (1998) 5 SCNJ. 1; Udo
v. Cross River State Newspaper Corporation (2001) 14 NWLR (Pt.732) 116
@ 167 and
recently,
Dabo v.
Alhaji Abdullahi
(2005) 7 NWLR (Pt.923) 181
@ 206; (2005) 2 SCNJ.
76 (a),
95; (2005) 2 S.C. (Pt.1)
75 @
91
just to mention but a few.
On this ground again, the
appeal fails woefully. My answers to Issues 2 and 3 of the Appellant and
Issue 1 of the Respondent are in the affirmative. Issue 1 of the Appellant,
with respect, is a non-issue as there is pleading in the Statement of Claim
of the fact of registration of the trade mark. My answers to Issues 2 and 3
of the Respondent are in the negative.
I have had the privilege of
reading before now, the lead judgment of my learned brother,
Mukhtar, J.S.C and I
agree completely with his reasoning and conclusion. From the foregoing and
the fuller reasons contained in the said lead Judgment, I find no substance
in this appeal and I too, dismiss the same. I hereby affirm the decision of
the court below and I abide by the consequential order in respect of costs.
Judgment delivered by
Francis
Fedode Tabai. J.S.C.
I had, before now, read the
leading judgment of my learned brother Mukhtar
J.S.C and I agree with the reasoning and
conclusions reached. I also agree with the consequential orders including
the order on costs.
Judgment delivered by
Ibrahim
Tanko Muhammad. J.S.C.
My learned brother
Mukhtar, JSC,
afforded me a copy of the judgment just delivered, in its draft form. The
facts giving rise to the case require no repetition as they were fully set
out in the leading judgment.
My comments are limited to the
2nd issue as formulated by both the appellant and the respondent
in their respective briefs of argument. This issue is on Issue Estoppel. The
learned counsel for the appellant couched the issue as follows:
"Whether the learned justices of the Court of Appeal were justified in
holding that"... with the registration of the Respondent's trademark a new
event has intervened to make the present circumstances different from the
issues considered in the earlier interlocutory matter...?"
Learned Counsel for the
respondent framed the issue in the following words:
"Whether the decision of the Supreme Court in respect of the earlier
interlocutory appeal in this suit (Dyketrade v. Omnia (2000) 12 NWLR (Pt.680)
1), operate as a bar against the entertainment by the Federal High
Court, of the plaintiff's subsisting claim for infringement of trade mark?"
The arguments put forward by
learned counsel for the appellant are that where an issue has been decided
in an earlier action, it is incompetent for a court to decide on such issue
in a subsequent action. Issue estoppel, he submitted, arises where a court
of competent jurisdiction had earlier adjudicated upon an issue between the
same parties or their privies and the same issue comes
incidental in question in any subsequent proceeding between the same parties
or their privies. It applies whether the point involved in the earlier
decision in one of fact or law or mixed law and fact. He cited the case of
Fadiora
v. Gbadebo (1978) SC 219
P.295 9 -11; Iyowuawi v.
Iyowuawi (1987) 4 NWLR
(Pt.63) 61.
The point in contention,
according to the learned counsel for the appellant is that in the statement
of claim filed by the respondent on 3rd June, 1997, the
respondent sought exactly the same reliefs as contained in its particulars
of claim upon which judgments were pronounced by both the Court of Appeal
and the Supreme Court. He cited the case of
Dyketrade v. Omnia (2000) 12 NWLR
(pt. 680) page 1. Learned counsel for the appellant did not see any need
to amend its subsequent particulars of claim thus inviting the trial court
to also adjudicate on issues raised therein which had been decided by the
appellate courts. The respondent had no triable
Issue as its claim did not arise until 1993 when it had not by then
registered its trade mark but only had a pending application. He submitted
further that the Supreme Court having come to this conclusion in
Dyketrade v. Omnia (supra) the
respondent cannot again re-litigate the issue of trademark infringement as
long as the judgment of the Supreme Court on same subsists. He cited the
case of Adigun v.
The Secretary of Iwo Local Government (1999) 8 NWLR
(Pt.613) at 30; Okwugu
v. Nwokedie (1999) 8 NWLR
(Pt.517) at 407.
Learned counsel for the
respondent, on his part, submitted that the Supreme Court in
Dyketrade v. Omnia (supra) did
not dismiss the plaintiffs claim for infringement of trademarks. The
decision was based on the claims as formulated in the particulars of claim
and facts deposed to in the affidavit filed in support of the motion for the
grant of the interlocutory injunction. Compared to the claims formulated in
the statement of claim and the facts pleaded therein, there is a significant
difference which is that, the trademark alleged to be infringed, is alleged
in the statement of claim, to be registered, whereas it was alleged in the
particulars of claim to be simply an accepted application. Learned counsel
for the respondent argued that the decision of the Supreme Court in
Dyketrade v. Omnia will not
support a plea of issue
estoppel
or res
judicatam to prevent the Federal High Court from entertaining the
plaintiffs claim for infringement of trademark based on an allegation of
ownership of a registered trademark as contained in the statement of claim.
Estoppel, has generally, been
defined as a disability whereby a party is precluded from alleging or
proving in legal proceedings that a fact is otherwise than it has been made
to appear by the matter giving rise to that disability. See:
Halbury's
Laws of England (4th Edition) vol. 16, page 840,
paragraph 951. It is of many types. The Common
Law recognizes three kinds:
(a)
estoppel by
record or quasi by record
(b)
estoppel by
deed and
(c)
estoppel in
pais.
There are two further kinds in
equity. They are:
(i)
promissory estoppel
and
(ii)
Proprietory estoppel.
The defence or kind of
estoppel being raised by the appellant in this issue falls under category
(a) of the Common law types. It is more popularly known as
estoppel
per rem judicatem.
It arises in the following situations:
i.
Where an issue of fact has been judicially determined in a final
manner between the parties by a court/tribunal having jurisdiction,
concurrent or exclusive, in the matter, and the same issue comes directly in
question in subsequent proceedings between the same parties. It is sometimes
known as "cause of action estoppel."
ii.
Where the first determination was by a court having exclusive
jurisdiction and the same issue comes incidentally in question in subsequent
proceedings between the same parties. This is known as "issue estoppel."
iii.
In some cases where an issue of fact affecting the status of a person
or thing has been necessarily determined in a final manner as a substantive
part of a judgment in rem of a tribunal having
jurisdiction to determine that status and the same issue comes directly in
question in subsequent civil or criminal proceedings between any party
whatever.
In order to establish his
claim of issue estoppel, the appellant through his learned counsel while
making his submission quoted the reliefs claimed by the respondent in his
particulars of claim which he said were exactly the same as contained in the
statement of claim filed by the respondent in 1997 and upon which the Court
of Appeal and the Supreme Court had made pronouncements in the
Dyketrade v.
Omnia's case. I took time to compare the two claims. In
Omnia’s case (supra) the Supreme Court set out
the claim of the appellant before it, who was the plaintiff before the
Federal High Court as follows:
"An injunction to restrain the
defendant from –
(a)
Infringing the plaintiff's Trade mark "Super Rockets" applied for and
accepted in Nigerian under No TP
11933/91/5.
(b)
Passing - off or causing, enabling or assisting others to pass - off
grinding stones used for the purpose of washing terrazzo floors inscribed
with the trade make "Super Rockets" not being of the plaintiff's manufacture
or merchandise as and for the goods of the plaintiff.
(c)
Importing, selling or offering for sale or supplying grinding stones
used for the purpose of washing terrazzo floors or any other product under
the trade mark "Super Rockets" as to be calculated to lead to the belief
that grinding stones not of the plaintiff's manufacture or merchandise are
the products of the plaintiff."
The reliefs claimed in the
present action by the plaintiff at the Federal High Court Lagos, and now
respondent before this court, read as follows:
"1.
An injunction to restrain the Defendant, whether by itself, its
Directors, officers or any of them or otherwise howsoever from doing the
following acts or any of them, that it to say:-
a.
Infringing the Plaintiffs trade mark "Super Rockets" registered
under No 51136 in class 19.
b.
Passing off or causing, enabling or assisting others to pass off
grinding stones used for the purpose of washing terrazzo floors inscribed
with the trade mark "Super Rockets" not being of the Plaintiff's manufacture
or merchandise as and for the goods of the Plaintiff.
c.
Importing, selling or offering for
sale
or supplying grinding stones used
for the purpose of washing terrazzo floors or any other product under the
trade mark "Super Rockets" as to be calculated to lead to the belief that
grinding stones not of the Plaintiff's manufacture or merchandise are the
products of the Plaintiff.
2.
Delivery up for destruction
of all grinding stones bearing the offending mark "Super Rockets" in the
possession, custody or control of the Defendant.
3.
Damages of
4.
Costs.
5.
Further or other Reliefs."
(Underlining supplied for emphasis)
In the first set of reliefs
set out above, the Court of Appeal and the Supreme Court affirmed the ruling
of the trial Federal High Court. The ruling decided:
1.
that the plaintiff was not entitled to sue
for infringement of a trade mark which had not been registered and mere
acceptance by Registrar of Trade Marks of the application has not amounted
to registration.
2.
the defendant cannot be held liable for
passing - off because it ordered and imported goods as an agent for
disclosed principals and therefore the Court would not grant an application
for injunction and a suit for passing - off could not be sustained.
3.
as the claim of infringement was struck
out the entire suit stood struck out.
Some excerpts from the Supreme
Court judgment, in Omnia's case (Supra), per
Belgore, J.S.C (as
he then was) are instructive. I quote them herein below:-
"
'Trade
Mark' when registered will entitle the proprietor to sue or institute an
action for any infringement of the Trade Mark.
Registration entitles the proprietor to the exclusive use of the
Trade Mark and also right to sue for passing - off the goods of the
proprietor ..... in the instant case on appeal
the only matter before the courts below is the allegation that the appellant
applied for registration of the trade mark. The Contention that the
application was made does not mean that it is "registered"........
Therefore what
was before
the courts below was mere application and acknowledgement of the
application, not what the applicant calls acceptance. Acceptance of the
application occurs when the conditions in Section 22 above have been
fulfilled. Up to that moment there is no evidence that the application has
been accepted and by virtue of Section 22(4) the application has abated.
----- The appellant has not acquired any right to protect for the time
being as the applicant for the purpose of the Act because all the
procedure leading to acceptance had not been followed.-----It
is therefore clear that the right sought to be protected with injunction by
the appellant has not matured and the trial court on scanty materials
before it rightly refused to continue with the matter and the action was
rightly struck out. Court of Appeal did the right thing. The
appellant has not indicated clearly the right he wanted protected either in
the interim or substantive claim. What was before the trial court was not a
matter of passing - off but that of breach of appellant's trade mark. The
appellant has got no trade mark to protect ---- The appellant has not
shown any other reasons or that he has applied and got any trade mark
registered."
(underlining
supplied for emphasis)
From the above, therefore, it
stands clear to me that it is not correct to say, as posited by learned
counsel for the appellant (page 11 of his brief) that the respondent did not
see any need to amend its subsequent particulars of claim. It is apparent
that in the particulars of claim set out first above, no
identification/Registration Number of the trade mark was furnished. It was
only alluded that an application for that purpose
was filed. In the particulars of claim of the suit on appeal, paragraph 1(a)
of the claims furnished Registration No 51136 in class 19 this marks
a fundamental difference between the two claims. It confers legal right now
on the respondent to sue on any infringement of the trade mark, a right
which by the operation of law, he could not hitherto exercise, as held by
the Supreme Court in Omnia's case (supra).
Secondly, from the
pronouncements of the Supreme Court, the doors were not closed for the
respondent to exercise the right not to allow infringement of its trade mark
once such was properly registered, (see the underlined phrases/sentences in
the judgment quoted above). I do not agree with the learned counsel for the
appellant in his submission that the Supreme Court having come to this
conclusion in Dyketrade v. Omnia
(supra) that the respondent cannot again re-litigate the issue of trade mark
infringement as long as the judgment of the Supreme Court on same subsists.
I would like to pause here and
draw attention of learned counsel for the appellant that it is not proper to
try to give a diametrically opposed meaning to a decision of any court,
particularly the apex court moreso, when ,the
pronouncement of that court is very clear, cogent and straight forward.
Selfish interest in prosecution of cases always compounds the problems more.
Learned counsel by the nature of their calling must desist from such
unhealthy practice. It is elementary for any counsel to know that on matters
of issue estoppel, a plea raised thereon can hardly succeed where the
circumstances of the decision in an earlier proceeding is different from the
circumstances in the subsequent one. It is the law that in an issue
estoppel, a party may be precluded from contending the contrary of any
precise point which, having once been distinctly put in issue has been
solemnly and with certainty determined against him. This is even where the
objects of the first and second actions are different, the finding on a
matter which came directly in issue in the first action provided it is
embodied in a judicial decision that is final, is conclusive in a second
action between the same parties and their privies. This principle applies
whether the point invoked in the earlier decision is one of fact or one of
law or of mixed law and fact. Under all circumstances, the following
conditions have to be satisfied before the doctrine can be applied:
i.
the same
question or
subject matter
was decided
in both
proceedings;
ii.
parties or their privies were the same in
both proceedings and
iii.
the judicial decision said to create the
estoppel was final.
I do not think the appellant
in this appeal has complied with all the above conditions. I will conclude
by quoting the dictum of Uwais,
J.S.C (as he then was) in the case of
Mohammed v.
Olawunmi (1993) 4 NWLR (Pt.287) 254,
where he said:
"Now for an estoppel to be established whatever determination is made in the
first proceedings must be the same question arising in the latter
proceedings. Where the question in the second proceeding is not the same
(i.e. not eadem
quaistio) as that decided in the -first then there can be no
estoppel."
This issue must fail. I
dismiss it.
For the fuller reasons given
by My Lord, Mukhtar, J.S.C;
which I adopt as mine, I find no merit in this appeal and same is dismissed
by me. I abide by orders made in the leading judgment including order as to
costs.
Judgment delivered by
Christopher
Mitchel Chukwuma-Eneh.
J.S.C.
This matter commenced at the
Federal High Court,
(1)
An injunction to restrain the defendant whether by itself,
its Director, officers and any of them, or
otherwise howsoever from doing the following acts, or any of them, that is
to say:-
(a)
Infringing the plaintiffs trade mark 'Super Rocket,' Registered under
No 51136 in class 19.
(b)
Passing off or causing, enabling or assisting others to pass off
grinding stones used for the purpose of washing terrazzo floors inscribed
with the trade mark 'Super Rocket' not being of the plaintiffs manufacturer
or merchandise as and for the goods of the plaintiff.
(c)
Importing, selling or offering for sale or supplying grinding stones
used for the purpose of washing terrazzo floor or any other product under
trade mark 'Super Rocket' as to be calculated to lead to the belief that
grinding stones not of the plaintiffs manufacture or merchandise are the
products of the plaintiff.
(2)
Delivery up for destruction of all grinding stones bearing the
offending mark 'Super Rocket in the possession, custody or control of the
defendant.
(3)
Damages of
(4)
Costs."
Upon being served the
statement of claim the defendant filed an application for the following.
"(1)
An order striking out paragraphs 4, 5, 9,
11, 16, 21(1) (a) of the plaintiffs statement dated 3rd of June,
1997.
(2)
Striking out the statement of claims/entire claim of the plaintiff.
(3)
Dismissing the entire suit with costs against the plaintiff on the
ground that:-
(a)
The plaintiff has no locus
standi and
(b)
Its claim
discloses no
reasonable possible cause of action."
In support of the application
the defendant filed an affidavit of 10 (ten) paragraphs. The plaintiff did
not file a counter affidavit. The trial court after having heard argument of
learned counsel on both sides of the application in a considered Ruling held
that by the operation of law as per Section 22(2) of the Trade Mark Act that
the subsequent Registration of the Trade Mark relates back to 10/10/91 being
the date the application for registration was made and so, the plaintiff not
only has locus
standi in instituting the suit, but also has a reasonable cause
of action. The application having been dismissed the defendant appealed to
the Court of Appeal which affirmed the decision of the trial court. The
defendant still feeling aggrieved has appealed to this court on an Amended
Notice of Appeal dated 6/12/2004 containing 3 grounds of appeal. Parties
have in compliance with Rules of this court filed and exchanged their briefs
of argument.
The appellant in its brief of
argument has distilled 3 issues for determination as follows:-
"(1)
Whether the Court of Appeal was right in holding that the Federal
High Court has jurisdiction to entertain a claim instituted upon an
unregistered trade mark?
(2)
Whether the learned Justices of the Court of Appeal were justified in
holding that,
1.
"....... with the registration of the Respondent's trade mark a new
event has intervened to make the present circumstances different from the
issues considered in the earlier interlocutory matter ... ?
2.
Whether the Court of Appeal was right in giving credence to the
Respondent's Certificate of Registration of Trade Mark which was issued in
contravention of S.22(4) of the Trade Mark Act, Cap 436 Laws of the
Federations?"
The respondent in its brief of
argument has also distilled three issues for determination as follows:-
"Issue No l
Whether the Federal High Court
has jurisdiction to adjudicate over the claims brought before it by the
plaintiff?
Issue No 2
Whether the decision of the
Supreme Court in respect of the earlier interlocutory appeal in the suit
Dyketrade v.
Omnia (2000) 2 NWLR (pt .680) 1,
operate as a bar against the entertainment by the Federal
High Court, of the plaintiffs subsisting claim for infringement of trade
mark?
Issue No 3
Whether the Federal High Court
is precluded from recognising the certificate of registration of the trade
mark Super Rocket under No 51136 pleaded in the statement of claim."
I have set out the foregoing
in order to position my contribution to this matter within its narrow
perspective on issue 3 as raised in both briefs of the appellant and the
respondent. The two issues have been reproduced above. The respondent has
rightly in my view taken an exception to the question of the propriety or
otherwise of giving credence to the respondent's certificate of registration
of Trade Mark Super Rocket No 51136 pleaded in the Statement of Claim
as per paragraphs 4 and 5 in this proceeding and as raised under the
appellants issue 3 in its brief of argument. And I think the respondent has
taken a very important point. In this regard, therefore, I deal only with
Issue 3 in both briers as the other issues for determination in both briefs
have been dealt with exhaustively in the lead judgment.
Under issue 3 in the
appellant's brief of argument it has been contended by the appellant that
the Federal High Court has acted in error in giving credence to the
Certificate of Registration of Trade Mark Super Rocket under No 51136
as it has all the same, been issued after the damaging remarks over it by
this court in the case of
Dyketrade v. Omnia (supra) to the effect that the
application for registration of the same has lapsed by operation of Section
22(4) of the Trade Mark Act and more, as the application in the absence of
any evidence that it has been accepted, has by virtue of Section 22(4) of
the Trademark Act abated and so, the two lower courts should not have given
the certificate any credence.
The respondent as I said above
has in furtherance of its objection to this question as raised in the said
issue 3 in the appellant's brief of argument observed that this issue could
not be properly raised on appeal for the first time without leave of either
court and that no leave has been granted by the court below or this court to
raise the issue. In other words, the question is incompetent for lacking in
due process. Again, I think that this point is well taken. See: Section
233(3) of the 1999 Constitution.
Sequel to this objection, I
have waded into the Record of Appeal and I agree with the respondent that
this question is a fresh matter by any standards as it was not taken in the
court below and so requires leave of the court below or this court. The more
fundamental objection to raising this issue is that the defendant once it
has decided to challenge the action by way of preliminary objection before
filing its defence is taken as having conceded all questions of facts as
contained in the Statement of Claim as correct and so, it cannot be heard to
challenge the said certificate on this point. Its challenge should
therefore, converge on questions of law only, it
should concentrate on the legal consequences of the registration.
The other aspect of this
matter deserving of comment is that this court should show great concern
that in an interlocutory appeal as here, it does not by its pronouncement as
it is being urged under Issue 3 to prejudice the trial of the substantive
issues to be pronounced upon by the trial court. In other words, this court
should not decide the very questions which are pending to be determined in
the substantive case before the trial court. See
Egbe
v. Onaogun (1972) 1 ANLR
95, Orji v.
I conclude this resume by
deferring to the decision of
"In any interlocutory
application or interlocutory appeal, there must be cautious approach to the
order being sought or already granted so that when the substantive case or
appeal is heard the court is not placed in an invidious position ....."
Any decision one way or the
other on the credence of the certificate of registration of Trademark No
51136 presents the trial court with a fait accompli. It is wise to
discountenance it and let sleeping dogs lie.
With these comments, I agree
with the reasoning and conclusions in the lead judgment of my learned
brother Mukhtar J.S.C
that there is no merit in this appeal. I also dismiss it. I abide by the
orders in the lead judgment.
Counsel
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