Division: IN THE HIGH COURT, ACCRA
Date: 21 APRIL 1964
Before: BOISON J
JUDGMENT OF BOISON J
The plaintiff, trading under the name and style of Jimoh Aremu and Brothers, sued the defendants for: (1) can injunction to restrain the defendants, their agents and servants from infringing the plaintiff’s said trademarks and in particular from preventing them from selling to the public, (2) An amount of £G6,000 damages being profits made on 20,000 dozen pens at six shillings profit per dozen.
The facts, which are not seriously in dispute, are that the plaintiff is a trader who deals in fountain pens. Since 1958 he has been ordering from Japan fountain pens with a “Stone” trade mark as per exhibit A. Exhibits B and C are some of his invoices for the pens for 1959 and 1962 respectively. The plaintiff applied for registration of his trade mark in June 1963 and it was published in October 1963 in the Commercial and Industrial Bulletin (No.4) at page 641, exhibit D. After the publication he found that the defendants were selling fountain pens of the same trade mark as that which appeared in exhibit D; so he made enquiries from the No. 7 store of the defendants. He was told they had ordered about £G20,000 worth of pens. He bought a dozen of such pens as per exhibit E, and exhibit F is a sample of the dozen pens he bought from the defendants.
The defendants’ case in brief was that since January 1963 they have been trading in “Stone” fountain pen and that exhibits 1 to 12 are their indents and confirmations from the manufacturers at Japan. When the plaintiff approached them about the pens, they (the defendants) were prepared to sell the pens at c.i.f. value plus other charges to the plaintiff but the plaintiff refused.
It is important in this case to distinguish between an application for registration of trade mark and the registration itself. Sections 16 and 22 of the Trade Marks Ordinance11 provide that the application be advertised in the Gazette. Sections 17 and 18 lay down the machinery for opposing the application. When the machinery has been exhausted and the court has decided the opposition if any, if there was no opposition after expiration of, at least, nine months from the date of advertisement, the registrar of trade marks issues his certificate in accordance with sections 20 and 21. It is only when the registrar has issued his certificate of registration that the person for the time being registered is entitled to have the absolute and exclusive right to the use of the registered trade marks: see section 45 of the Trade Marks Ordinance, Cap. 180 which provides that:
“Subject to the provisions of section 47 and to any limitations and conditions entered upon the register, the registration of a person as proprietor of a trade mark shall, if valid, give to such person the exclusive right to the use of such trade mark upon or in connection with the goods in respect of which it is registered: Provided always that where two or more persons are registered proprietors of the same or substantially the same trade mark in respect of the same goods no right of exclusive user of such trade mark shall (except so far as their respective rights shall have been defined by the Court) be acquired by any one of such persons as against any
other by the registration thereof, but each of such persons shall otherwise have the same rights as if he were the sole registered proprietor thereof.”
Learned counsel for the defendants never raised the point but on the evidence, there appears to me to be a preliminary issue of whether or not the plaintiff has a cause of action against the defendants (or, indeed, any other person).
In this case all that the plaintiff has done is to make application for registration of the trade mark in question under sections 16 and 17. The registrar as he is bound by law to do, has advertised the application as evidenced by exhibit A, nothing more and nothing less. It would appear that there has been no opposition lodged by the defendant or indeed any other person, but it cannot be denied neither can it be concealed by the plaintiff that the registrar of trade mark has not, in fact issued a certificate of registration in his favour. The plaintiff’s action would therefore appear to be premature, his cause of action has not accrued because the trade mark is not registered as such in his name. It is like a person who has applied for letters of administration and before the application was heard and granted sued in respect of the estate qua administrator: see Ingall v. Moran.22
Section 48 of Cap. 180, however, empowers a person to sue on infringement of unregistered trade mark provided that two things exist, firstly, if the trade mark has been in use for not less than three years prior to the commencement of the proceedings and secondly such trade mark has been refused registration under the Ordinance. The evidence showed that the plaintiff has been using the trade mark since 1958 but there was no evidence that registration has been refused. For the above reasons I non-suit the plaintiffs and give judgment for the defendants. Costs assessed at 30 guineas inclusive for the defendants.
DECISION
Judgment for the defendants.
N. A. Y.
