HIGH COURT, ACCRA
DATE: 18 MARCH 1971
HAYFRON-BENJAMIN J
CASES REFERRED TO
(1) People’s Popular Party v. Attorney-General [1971] 1 G.L.R. 138.
(2) Pianotist Co.’s Application (1906) 23 R.P.C. 774.
(3) Seixo v. Provezende (1866) 1 Ch. 192; 14 L.T. (N.S.) 314; 14 W.R. 357; 12 Jur. (N.S.) 215. (4) Johnston v. Orr-Ewing (1882) 7 App. Cas. 219; 51 L.J. Ch. 797; 46 L.T. 216; 30 W.R. 417, H.L. (5) National Biscuit Co. v. Pioneer Biscuit Co., Ltd. (1958) 3 W.A.L.R. 450.
(6) Roskill’s Trade Mark (1915) 32 R.P.C. 577; 85 L.J.Ch. 301.
(7) Hyde & Co.’s Trade Mark (1878) 7 Ch.D. 724; 54 L.J. Ch. 395; 38 L.T. 777; 26 W.R. 625.
NATURE OF PROCEEDINGS
APPLICATION by way of an originating motion praying for an order that the register of trade marks be rectified by the removal therefrom of a trade mark that was registered without sufficient cause. The facts are fully set out in the judgment of the court.
COUNSEL
U.V. Campbell for the applicants.
Arthur for the respondents.
JUDGMENT OF HAYFRON-BENJAMIN J.
This is an application by originating motion praying for an order that the register of trade marks be rectified by the removal and expunging therefrom of trade mark No. 16180 registered without sufficient cause in the name of the respondents and for such other order or orders as the court may deem fit.
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The applicants are the exclusive agents, distributors and representatives in Ghana of Messrs. Henri Dorot of Clapham Road, London, England, who are manufacturers of a skin lightening cream under the trade name of Dorot, sold in the United Kingdom and also exported for sale and distribution in Ghana. This name has for many years been registered as a trade mark in the United Kingdom under the trade mark registration No. B.893306. When the applicants secured the exclusive agency in Ghana as the representatives and distributors of the United Kingdom company, they applied for the registration in Ghana of the trade mark Dorot in respect of the skin lightening cream distributed by them. This registration was effected on 8 September 1966 under class 48 with registration No. 14659.
The applicants claim that the respondents are importing skin lightening cream in bulk from a company in England known as Amarnani Ltd. together with empty tubes bearing the name Dorin in which the lightening cream is filled in Ghana for sale and distribution within Ghana. They further claim that both Armanai Ltd. and the respondents have adopted this strategy to escape an action for infringement of trade mark in England because the use of the word Dorin on empty tubes exported to Ghana would not in England normally constitute an infringement of the trade mark of Messrs. Henri Dorot. The respondents registered Dorin as their trade mark under class 48 with the No. 16180 on 20 January 1969. The applicants say that they were not aware of the respondents’ application for registration and became aware of this when the respondents’ products appeared on the market. They further say that the respondents were fully aware of the applicants’ trade mark Dorot when they applied for registration of Dorin.
The gravamen of the applicants’ complaint is set out in paragraphs (13) and (14) of their affidavit in support of the application in which they stated:
“(13) That the name Dorin so nearly resembles the name Dorot previously registered by the applicants that it has caused confusion to the public and has deceived the public into believing that the Dorin skin lightening cream is the same as the Dorot skin lightening cream distributed and sold by the applicant in Ghana.
(14) That I am informed and verily believe that there was no sufficient cause shown by the respondents or at all why the trade mark Dorin should have been registered.”
The respondents’ case can be best stated in their own words as appear in the affidavit filed in opposition to the motion. They stated inter alia:
“(6) That I am advised and verily believe the same to be true that if even the allegations contained in paragraphs (7) and (8) of the applicants’ affidavit are true (which are denied) the same are irrelevant.
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(7) That my company applied to the registrar of companies for the registration of the trade mark known as Dorin in the manner laid down by law and has been issued with a registration number.
(8) That there is a world of difference between the trade marks Dorot and Dorin and there is further a world of difference between the Dorot cream (white) and Dorin cream (brown).
(9) That the tubes and packets containing the Dorot cream are of a different colour and design from the tubes and packets containing the Dorin cream.
(10) That even a stark illiterate can differentiate between Dorot cream and Dorin cream. (11) That the registered trade mark Dorin is for other cosmetics including skin cream.
(12) That therefore if the application is granted same will cause considerable hardship to my company as it will prevent it to distribute the other cosmetics apart from skin cream.
(13) That I am advised and verily believe the same to be true that the present application is incompetent as the same is contrary to sections 32 and 50 of the Trade Marks Act (i.e. Act 270) and the regulations made thereunder.”
Section 32 of the Trade Marks Act, 1965 (Act 270), under which this application has been brought
provides inter alia:
“(1) Any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Court or, at the option of the applicant and subject to section 50 of this Act, to the Registrar, and the Court or the Registrar (as the case may be) may make such order for making, expunging or varying the entry as the Court or the Registrar (as the case may be) may think fit.”
Section 50 of the Act provides:
“50. Where under this Act an applicant has an option to make an application either to the Court or to the Registrar—
if an action concerning the trade mark in question is pending, the application must be made to the Court;
(b) if in any other case the application is made to the Registrar he may, at any stage of the proceedings, refer the application to the Court, or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.”
These provisions make it quite clear that an applicant has an option either to apply to the registrar or to the court, but where there are proceedings pending in the court in relation to any trade mark, then the applicant
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must apply to the court. The only limitation on an applicant’s right to exercise his option occurs where there are other proceedings in court relating to the same trade mark. It is contended however that the provisions of the Trade Marks Regulations, 1970 (L.I. 667), made on 1 December 1970, prescribe a procedure for making an application in these matters. Regulations 42 and 43 of these regulations and Form TM-No. 24 in the Third Schedule deal with these applications. It is not necessary for me to set out these provisions in extenso. I shall limit myself by saying that they regulate the procedure for applying to the registrar, and they do not in any way operate to further limit the exercise by an applicant of the option conferred on him by the parent Act. The words: “No action concerning the trade mark in question is pending in the Court” appearing on Form TM-No. 24 are meant to give notice to the registrar that he has jurisdiction to entertain an application and that the limitations on his powers imposed by section 50 (1) of the parent Act do not apply. They do not operate to oust the jurisdiction of the High Court.
The next question of procedure and practice raised by the respondents is that the respondents, having acquired rights by virtue of the registration of their trade mark, any application to the court by any other person for relief which might affect these rights ought to be commenced by a writ of summons, i.e. by a substantive action, and not an originating notice of motion. On the face of it, this contention seems to be at variance with the respondents’ earlier submission that the application should have been to the registrar. No writs of summons are issued by the registrar of trade marks. A respondent, however, is at liberty to resist an application on any number of grounds whether or not some are in conflict with others. It is clear that where a statute provides for applications to be made to the court but does not prescribe the method, such applications can be made by way of an originating notice of motion. See People’s Popular Party v. Attorney-General [1971] 1 G.L.R. 138. The Trade Marks Act having made provision for applications to the court for rectification of the register, and the registrar not having prescribed any method by which these applications to the court, as distinct from applications to the registrar, are to be made, the proper procedure in my view is by way of an originating notice of motion. This application is therefore properly before this court.
The main question for determination is whether or not the trade marks Dorot and Dorin are so similar as to cause confusion in the minds of the public, and whether the mark Dorin was calculated to deceive at the date of the application to register. These are questions of fact and the burden of establishing both is on the applicants. The decision on these questions is not an exercise of discretion by the court, but a finding of fact. All the circumstances of the case must be considered. It is not possible to make an exhaustive catalogue of all these circumstances. But as Parker J. said in Pianotist Co., Ltd.’s Application (1906) 23 R.P.C. 774 at p. 777 which was a case that involved the comparison of two words:
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“You must take the words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
In considering these circumstances the value of decided cases is very limited. It is not possible to discover from decided cases any standard as to the amount of resemblance which may suffice to deceive or cause confusion. As Lord Cranworth said in Seixo v. Provezende (1866) 1 Ch.192 at p. 196: “What degree of resemblance is necessary from the nature of things, is a matter incapable of definition a priori.” And as Lord Watson was reported to have said in Johnston & Co. v. Orr-Ewing (1882) 7 App.Cas. 219: “How can observations of Judges upon other and quite different facts bear upon the present case, in which the only question is what is the result of the evidence?” Except in so far as they lay down any general principle the decided cases are of little assistance in the determination of these questions of fact. However, as the learned editors of Kerly on Trade Marks (7th ed.) at p. 616 say, “the habit of referring to reported cases at the hearing of such questions is inveterate.” I shall succumb to habit but restrict myself to examining in detail only one local case. This is the case of National Biscuit Co. v. Pioneer Biscuit Co., Ltd. (1958) 3 W.A.L.R. 450, decided by the High Court, Accra, on 16 August 1958. In that case the Pioneer Biscuit Co., Ltd. applied to the registrar of trade marks under section 13 of the Trade Marks Ordinance, Cap. 180 (1951 Rev.), for the registration as a trade mark of the word Pibisco in class 42 in respect of biscuits, bread and cakes. The National Biscuit Co., a corporation organised under the laws of the State of New Jersey in the United States of America entered opposition to the registration of the proposed trade mark on the ground that they had registered the word Nabisco in the United States of America and in other countries; though Ghana was not shown to be one of those countries. They said that Nabisco and Pibisco are both phonetically and graphically similar, and the concurrent use of Pibisco and Nabisco will deceive buyers in Ghana. Ollennu J. (as he then was) referred to the words of Parker J. in Pianotist Co., Ltd.’s Application (supra) and said at pp. 453-454:
“As to ‘the look,’ the question is not whether if a person is looking at the two trade marks side by side there would be possibility of confusion; it is whether the person seeing the one mark in the absence of the other would, in view of his recollection of that other, be likely to be deceived, and to think that the trade mark before him is the same as the other of which he has a general recollection (see Sandow, Ltd.’s Application (1914) 31 R.P.C. 196; 30 L.T. 394) . . .
As to phonetical similarity, each of the words ‘NABISCO’ and PIBISCO’ consists of three syllables. The first in each one is soft; ‘NA,’ and ‘PI’; the second and third in both are identical—’BISCO’—
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and form the predominant part of each of the two trade marks. I agree … that there is a tendency, in the pronunciation of these words, for the last two syllables (‘BISCO’) to drown the initial soft syllables (‘NA’ and ‘PI’), leaving the word ‘BISCO’ so outstanding as to cause confusion in the mind of a person who hears either word hurriedly pronounced.”
Thus if the phonetic aspect were the only consideration, I would hold that there is such similarity as is likely to deceive. The learned judge was in no doubt that phonetically and visually the words Nabisco and Pibisco were similar. He however refused the application on another ground.
In this case the two words Dorin and Dorot both have two syllables, and the predominant syllable is Dor and they both consist of five letters with the same first three letters. Both visually and phonetically I find that the two words are similar. The admitted facts on the affidavits show that both Dorot and Dorin are used in relation to skin lightening cream. That the Dorot cream is white and the Dorin cream is brown, but this is a largely irrelevant factor as the buyer must first open the tube and squeeze out the cream to find the difference in colour. There is no dispute that the Dorot cream is widely distributed in Ghana by the applicants. Counsel for the respondents has shown to the court the two products. The tubes in which they are sold are similar in size and shape; the packets which contain these tubes are also similar in size and shape. I am of the view that the registration of the word Dorin is likely to deceive and confuse the public into thinking that they are goods of the applicant. I am fortified in this view by another factor. When the registration of the trade mark Dorin came to the notice of the applicants they caused their solicitors to write to the registrar of trade marks protesting about the said registration, and requesting the registrar “to take the necessary steps to remove” the name Dorin from the register. The registrar then wrote to the respondents the following letter which is exhibit B dated 31 January 1970:
“Sir,
REGISTRATION OF TRADE MARK NO. 16180 THE
WORD “DORIN” IN CLASS 48
It has now been discovered that your application for registration of the above-mentioned trade mark was inadvertently accepted, as a similar word ‘Dorot’ has already been registered as No. 14659 in the same class by different proprietors.
(2) You are therefore requested to return, without delay, the certificate which was erroneously issued to you for cancellation, as it is now considered that the market will be confused.”
By a subsequent letter dated 10 February 1970, the registrar asked the respondents to ignore the contents of exhibit B on the ground that what the letter “attempted to achieve was ultra vires the power of the registrar.”
Counsel for the registrar has informed this court that the registrar is still of the view that the two trade marks are similar and are likely to be confusing to the public. Although the views of the registrar are not
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binding on this court, I am of the view that they are entitled to considerable respect. This is not to be treated like the evidence of persons who are well acquainted with the trade concerned. In Kerly on Trade Marks (6th ed.), the learned editors stated at pp. 290-291:
“Besides this evidence [of fact], the evidence of persons who are well acquainted with the trade concerned was formerly constantly tendered by the parties to show that in the opinion of such persons, as experts, the alleged resemblance between the contrasted marks was, or was not, calculated to deceive, and it was formerly constantly admitted, although Judges often expressed much impatience of evidence of this class, and certainly it frequently presents in an eminent degree the characteristic vices of expert testimony. It consists in general of opinions formed after the dispute has arisen; not upon any judicial balance of the opposing contentions, but upon a scrutiny of the subject directed to discover what can be said in favour of one side only. And where the question is as to the degree of a resemblance between two words or designs, or as to whether a difference in particular parts of two contrasted labels is substantial or immaterial, reasons can rarely be found by the witnesses to recommend an opinion to anyone who has not conceived it for himself without their assistance.”
The views of the registrar should not be equated with views of such expert witnesses called by the parties. This application could have been made to the registrar, and although an appeal could be brought to this court, this court would not fail to give some weight and consideration to the findings of fact by the registrar. In the circumstance I find as a fact that the registration of the trade mark Dorin was calculated or likely to deceive and confuse the public into thinking that they are dealing with the goods of the applicants.
The respondents, however, state that if the application is granted it would cause hardship to their company as it would prevent it from distributing the other commodities apart from the skin cream. The respondents have shown to the court’s satisfaction that they deal in other commodities but all in the line of cosmetics. The question of hardship is, however, irrelevant to the duty of the court in protecting the public and the public interest in trade by keeping the register clean. I shall grant the prayer of the applicants and order that the trade mark No. 16180 be removed and expunged from the register.
In applications for rectification of trade marks the ordinary rule that the unsuccessful party must pay the costs of the proceedings is rarely departed from. See Roskills Trade Mark (1915) 32 R.P.C. 577 and Hyde & Co.’s Trade Mark (1878) 7 Ch.D. 724. I award costs to the applicants in the sum of N¢ 150 and to the registrar of N¢100.
DECISION
Application granted.
- G. K.
