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In The Supreme Court of
On Friday, the 7th day of March
2008
Before Their Lordships
S.C. 223/2002
Between
And
Judgement of the Court
Delivered by
Francis Fedode Tabai JSC
This is an appeal against the
Ruling of the Court of Appeal, Lagos Division on the 18th of July
2002. The ruling itself was sequel to an application therein dated and filed
on the 27th of June 2002. The motion prayed for:
(i)
An order suspending varying or staying in terms set forth in the
schedule hereto the Ex parte
Orders granted by the Federal High Court (Honourable Justice
Olotu. J) on 28th of February 2002 in
favour of (1) Groupe Danone
(2) Societe Des
Eaus
De Volvic.
(ii)
An Order of Stay of Proceedings pending the determination of the
appeal filed against the ruling of Honourable Justice
Olotu. J delivered on 3rd June 2002.
(iii)
Such further or other Orders as this Honourable Court may deem fit to
make in the circumstances.
Schedule
Term of Variation Proposed
"Discharging, suspending or staying that part of the order of the Federal
High Court restraining the Defendant from selling or offering for sale Table
Water in packages containers bearing the word "La
Voltic" pending the hearing of the appeal now pending before this
Honourable Court."
The grounds for the
application were stated therein to be:
(a)
That an appeal (which raises substantial issues) has been filed
against the ruling of the learned trial judge refusing to discharge the
order of Ex parte granted against
the Applicants.
(b)
That the Applicant is likely to be completely paralysed and wound-up
if the ex-parte injunction is not
varied before the hearing of the appeal.
(c)
That the failure of the trial judge to entertain the application for
stay or vary the injunction effectively grants to the Plaintiff reliefs
III(c) in the Plaintiff's particulars of claim notwithstanding the fact that
that question whether La-Voltic is deceptively
similar to Volvic is yet to be determined.
For thorough understanding of
the issues involved, it is necessary to state the salient facts up to the
filing of the motion. The suit was initiated on the 26/2/2002 when the writ
of summons was issued. Filed along the writ of summons was a 28 paragraph
Statement of Claim. The reliefs claimed as contained in the writ of summons
and paragraph 28 of the Statement of Claim are:-
(i)
A Declaration that the use of the words "La VOLTIC" by the Defendant
constitutes an infringement of the Plaintiffs' registered trade mark "VOLVIC"
No 39259 in Class 32.
(ii)
A Declaration that the adoption of the words "La VOLTIC by the
Defendant for the sale of their table water amounts to a passing off of same
as and for the Plaintiffs natural mineral water sold under the trade mark
"VOLVIC"
(iii)
An Order of Perpetual Injunction restraining the Defendant, its
servants, agents, Directors or privies and or any of them or otherwise
howsoever from doing the following acts or any of them, that is to say:
(a)
Infringing the Plaintiffs' registered trademark "VOLVIC" No
39259 in Class 32.
(b)
Passing off, attempting to pass off, causing enabling or assisting
others to pass off bottled table water not of the Plaintiffs’ manufacture or
merchandise as and for the goods of the Plaintiffs by the use or in
connection therewith in the course of trade of the trademark "La VOLTIC" or
such other similar mark either alone or in combination with other design
logo or colourable imitation thereof as to be calculated to lead to the
belief that natural mineral water not of the Plaintiffs' manufacture or
merchandise are products of the Plaintiff.
(c)
Bottling, manufacturing, selling or offering for sale table water
sold in packages, cans, bottles or containers bearing the word "La VOLTIC"
so closely resembling the Plaintiffs' trademark "VOLVIC" as to be calculated
to lead to the belief that natural mineral water which are not of the
Plaintiffs' manufacture and/or merchandise are products of the Plaintiffs.
(iv)
An Order for delivery up for destruction or obliteration upon oath of
all bottled water and packaging not of the Plaintiffs’ manufacture or
merchandise bearing the trademark "La VOLTIC" and all moulds, raw materials
printing blocks and other contraptions and devices in the possession,
custody and control of the Defendant, its agents, Directors, servants,
privies or assigns or any of them the use of which will be in breach of the
injunction prayed for herein and verification upon oath that the Defendant
has no such articles so marked in its possession custody or control.
(v)
Damages of
(vi)
Alternatively, an Account of Profits or an Order that the Defendant
whether acting by itself its agents, servants, privies or assigns or any of
them do make and serve on the Plaintiffs' solicitors an affidavit disclosing
when to whom and in what quantity it has sold, sent or supplied, purchased
or received any such bottled table water branded as "La VOLTIC" aforesaid
exhibiting true copies of all documents in their possession power or custody
or relating to the facts and matters herein disclosed and payment of all
sums due on making such an affidavit.
(vii)
Cost
(viii)
Further or other reliefs.
Also filed on the same 26th
February 2002 were a motion on Notice for an interlocutory Injunction and
another Ex parte Motion for some interim orders. The Ex parte motion is very
much in focus in this appeal. It sought the following reliefs:
1.
An Order of Interim Injunction restraining the Defendant whether
acting by themselves their agents privies or otherwise howsoever and
pending the determination
of the Motion on Notice
filed herewith or further from doing or authorising the doing of the
following acts or any of them that is to say:
(a)
Infringing the 2nd Plaintiffs/Applicant's Registered
Trademark No 39259 in Class 32 adopted by the Plaintiffs in the sale
of their natural mineral water.
(b)
Passing off or attempting to Pass Off, or causing, enabling or
assisting others to Pass Off table water not of the Plaintiffs/Applicants
manufacture or merchandise as and for the goods of the
Plaintiffs/Applicants, by the use or in connection therewith in the course
of the trademark "La VOLTIC" or such other similar mark either alone or in
connection with other design or logo as to be calculated to lead to the
belief that table water not of the Plaintiffs/Applicants manufacture or
merchandise are products of the Plaintiffs/Applicants.
(c)
Manufacturing, importing, selling or offering for sale table water
sole in packages, can or containers bearing the word "La VOLTIC" or closely
resembling the Plaintiff/Applicants trademark water which are not of the
Plaintiffs/Applicants manufacture and or merchandise are products of the
Plaintiffs/Applicants.
2.
An Order directing the Defendants herein whether jointly or
severally, by themselves, their directors, servants, employees, agents,
privies or otherwise however in charge of the Defendant's premises to permit
the bailiffs of this Honourable Court serving this Order accompanied by a
Police Officer not below the rank of an Assistant Superintendent of Police
including such other policemen not less than six (6) in number and two (2)
solicitors from the firm of Messrs Chris Ogunbanjo
& Co. (Solicitors to the Plaintiffs/Applicants) to enter upon the premises
of the said defendant on any working day from Monday to Friday from the
hours of 8.00 a.m. and 6.00 p.m. for the purpose of:
(i)
Inspecting, taking samples and inventory of the infringing products
including making copies of order forms invoices, bills delivery orders and
receipts in the custody, power, possession or control of the Defendants,
their directors, officers, servants or agents or any of them which
constitutes evidence of the infringement or volume of trade or transactions
in the products bearing the offending mark at their premises at (1) No
58 Onitiri Close, Surulere
Lagos and (2) No 50 Coker Road Shasha,
Lagos or at any other premises in the possession power or control of the
Defendant.
(ii)
Taking into possession of the Federal High Court, Lagos for safe
keeping quantities of the infringing products branded "La VOLTIC table water
found in the Defendant's premises at (1) No 58
Onitiri Close Surulere, Lagos and (2) No
50 Coker Road Shasha Lagos or at any other
premises aforesaid and all contraption contrivances chemicals and other
devices by means of which the infringement is being perpetrated, pending the
outcome of the motion on notice filed herewith or further order.
3.
An Order granting liberty to the Defendant to apply that any orders
made pursuant hereto or such parts thereof be set aside upon giving at least
48 hours notice thereof to the Applicants solicitors.
4.
An Order granting leave to the bailiff of this Honourable Court to
the effect along with the service of this order, service of the Writ
Summons, Statement of Claim and Motion on Notice and all other processes on
the named Defendant.
5.
Such further Order or other Orders as this Honourable Court may deem
fit to make in the circumstances.
The motion was supported by an
affidavit of 33 paragraphs. This motion was heard on the 28th of
February 2002 and all the prayers sought were granted. On the 4th
of March 2002 execution was levied on the Defendant/Respondent at its
premises both at (1) No 50 Coker Road, Shasha
Lagos and (2) No 58 Akanbi
Onitiri Close, Surulere
Lagos. The inventories of the Respondent's properties removed or impounded
are at pages 152 and 153 of the record. They included over 2,000 cartons of
finished products.
In reaction thereto the
Respondent filed a motion on the 11th of March 2002. By its
ruling on the 3rd of May 2002, the motion was refused. The
Respondent filed a Notice of Appeal against the ruling. This was on the 6th
June 2002. On that same day, it filed yet another motion. I shall give
details of the reliefs sought in these applications and the appeal later in
this judgment.
Meanwhile the Appellants
commenced contempt proceedings against the Respondent for disobedience of
the orders of the 28th February 2002. On the 20/6/02 the trial
court fixed the hearing of the contempt proceedings for hearing on the
23/7/02. This decision prompted the filing of the application which ruling
has given rise to this appeal. I shall come back to these later in this
judgment.
Briefs have been filed and
exchanged. The Appellants' Brief was prepared by Juliet
Mfon Chunu. But the Appellants' Reply
Brief was prepared by Harrison Asiegbu. The
Respondent's Brief was prepared by Osaro
Eghobamien.
In the Appellants' brief the following three issues for
determination were identified:
(a)
Whether the Court of Appeal was right in entertaining the
Respondent's application for a suspension of the Orders of the Federal High
Court when an application in identical terms and another application for
committal were both pending before the Federal High Court.
(b)
Whether the Court of Appeal was competent to set aside the Ruling of
the Federal High Court delivered on the 3rd of May 2002, refusing
to discharge the Orders granted against the Respondent.
(c)
Whether the Court of Appeal gave equal or any consideration to the
interest of the Appellant as it did to the interest of the Respondent before
setting aside the Ruling of the Federal High Court dated the 3rd
of June 2002 and if it did not, whether such failure, ought to vitiate the
Ruling of the Court of Appeal.
The Respondent adopted the
three issues as identified by the Appellant. On the first issue it was the
contention of the Appellant that in view of the Respondent's motion of 6th
June 2002 for variation of the Ex-parte Order of the 28th of
February 2002 which was still pending at the Federal High Court, it was an
abuse of the courts process for the Respondent to file the motion of the 6th
of June 2002 since there were no exceptional circumstances to do so.
Reliance was placed on
Carribean
Trading And Fidelity Corporation v N.N.P.C. (1991) 6 NWLR (Part 197) 362;
Commissioner of Police v Fasehun (1997) 6
N.W.L.R. (Part 507 170 at 180; Tate Industry Plc
v Devcom Merchant Bank Ltd (2000) 15 N.W.L.R.
(Part 689) 158; Pavex international co. Ltd v
I.B.W.A. (1994) 5 N.W.L.R. (Part 347) 685.
It was the Appellants' farther
submission that in view of the pending committal proceedings against the
Respondent for its breach of the trial court's orders the discretionary
powers of the court could not avail him. In support of this submission the
Appellant relied on
Shugaba
v U.B.N. PLC (1999) 11 N.W.L.R. Page 459, Mobil
Oil Nig. Ltd v Assan (1995) 8
N.W.L.R. (Part 412) 129.
With respect to the second
issue the Appellant referred to the relief sought as contained in the Notice
of Appeal filed on the 6th of June 2002 and the relief granted by
the Court of Appeal on the 18th of July 2002 and contended that
by its ruling, the court had granted the substantive relief in the appeal
even before the appeal was heard, submitting that a court should refrain
from determining, at an interlocutory stage issues in the substantive
matter. In support of this submission, the Appellant relied on
University Press Ltd v I.K. Martins
(NIG) LTD (2000) 4 N.W.L.R. (Part 654) 584; Tate Industry Plc v
Devcom Merchant Bank Ltd (2000) 15 N.W.L.R.
(Part 689) 164, Olaniyi v
Aroyehun (1991 5 NWLR (Part 194) 652; Shell Petroleum Dev. Co. (nig)
Ltd v Omu (1998) 9 NWLR
(Part 567) 672 at 682. The Appellant further contended that there were
no exceptional circumstances warranting the grant of the relief sought in
the Ruling submitting that the facts referred to by the Court of Appeal as
special circumstances were not, in fact, special circumstances. According to
the appellant as at the 18th of July 2002 the records of appeal
had neither not been settled nor accepted by the Court of Appeal and
submitted that the Court was therefore not competent to give the ruling.
The Appellants' arguments on
the third issue were premised mainly on the competing rights of the parties
and balance of convenience. They referred to
sections 2(1) 3 and 5(1) of the
Trademarks Act, the fact
that they were the proprietors of the registered Trade Mark "VOLVIC" the
fact that the Respondent's Trade Mark "La VOLTIC" had not been duly
registered and submitted that while the Appellants have a proprietary
interest in the trademark "VOLVIC" to protect, the Respondent has neither
legal nor equitable interest to protect. It was the Appellant's argument
therefore that the Orders of the Federal High Court which protected their
legal rights ought not to have been disturbed by the Court of Appeal. They
referred to portions of the Ruling and contended that while the Court of
Appeal considered the interests of the Respondent, it failed to consider the
corresponding interest of the Appellants. It was further submitted that by
the trial court's ruling on the 3rd of May 2002, the interim
injunction of the 28th February 2002 had metamorphosed into an
interlocutory injunction and that had the Court of Appeal given due
consideration to this fact it would have exercised its discretion in the
Appellant's favour. Reliance was placed on
Attamah
v Anglican Bishop of The Niger (1999) 12 N.W.L.R.
(Part 633) 6 at 12 and Effiom v
Ironbar (2000) 3 NWLR
(Part 650) 545 at 556. Finally the Appellants urged that the appeal be
allowed.
On the first issue the
Respondent proffered the following arguments. The Respondent referred to the
circumstances leading to the application of the 6th June 2002 and
argued that the trial court's refusal to hear it and to take the committal
proceedings constituted "special" circumstances to warrant the Lower Court's
decision to entertain it. For this submission the Respondents relied on
Shodeinde v Registered Trustees (1983) 2
SCN LR 284 and
Holman v Kigo (1980) 8-11 SC 43. The
Respondent had not yet been adjudged a contemnor and so the principle of a
court not to exercise its discretion in favour of a contemnor does not apply
in this case, it was contended.
As respects the second issue,
it was the contention that although isolated passages in the ruling give the
impression that the trial court's order was set aside, a reading of the
entire Ruling shows that it only varied or suspended the trial Court's
Order.
For the third issue of whether
the Court of Appeal gave equal or any consideration to the corresponding
interest of the Appellants as it did to that of the Respondent, it was the
submission that the court did consider the affidavit evidence of both
parties before the exercise of its discretion to grant the application and
which discretion ought not to be interfered with by this court. It was urged
that the appeal be dismissed.
In the Appellants' Reply
Brief, the Appellants relying on the provisions of Order 3 Rule 3(4) of the
Court of Appeal Rules and the decision in
Commissioner of Police v
Fasheun (1997) 6 N.W.L.R
(Part 507) 170 at 179 submitted that the Respondent failed to establish
the special circumstances warranting the application to be made first at the
Court of Appeal, contending that Respondent had no choice in the matter and
was under a duty to file and move the application first at the High Court.
On the second issue, it was the submission of the Appellants that a court
can only grant a relief sought by an applicant and any order made in excess
of the prayers in an application must be rejected and set aside. For this
submission the Appellants relied on
Akinbobola
v Plisson Fisko
(Nig) Ltd (1991) 1 N.W.L.R, (Part 167) 270 at 278 and
Kalio
v Kalio (1975) 2 SC 15 at 20.
I have considered the
arguments of counsel for the parties as submitted in their respective briefs
of argument. First it has to be stated clearly that this appeal has nothing
to do with the substantive issue of whether the Respondent's trade mark or
purported trade mark "LA VOLTIC" is an infringement of the Appellants'
registered trade mark "VOLVIC". That is the issue for trial and
determination at the High Court.
For this appeal, the first
issue is whether having regard to the fact that the reliefs in the
Respondent's motion of the 6th of June 2002 pending at the
Federal High Court and those in the motion at the court below which has
given birth to this appeal are identical, it was
incompetent for the court below to entertain it. In bringing the application
the Respondent relied on sections 16
and 18 of the Court of Appeal Act
and Order 3 Rule 3(4) of the
Court of Appeal Rules 1981. Order 3
Rule 3(4)
"Where an application may be made either to the High Court or to the Court
of Appeal, the Appellant is enjoined by the provision of Order 3 Rule
3(4)
of the Court of Appeal Rules 1981
(as amended) to make the application first to the High Court. He can only
apply to the Court of Appeal without first applying to the High Court where
there are special circumstances which make it impossible or impracticable to
apply to the High Court,"
Learned counsel for the
Appellant submitted that there were no special circumstances to warrant
bringing the application first at the Court of Appeal. The submission of
learned counsel for the Respondent was that the contempt proceeding itself
constituted the circumstances to justify the application at the Court of
Appeal. For a proper perception of this issue it is necessary to critically
examine the facts and circumstances leading to the filing of the application
on the 27/6/2002.
The whole problem of this
appeal turns on the propriety or otherwise of the Ex-parte Order of the 28th
of February 2002. In granting the order the learned trial judge had this to
say:-
"I
have carefully considered the
application by the Court and the submissions made by the learned counsel in
furtherance of it and I am of the view that the Plaintiff/ Applicant
has satisfied the Court as to the essential
ingredients necessary for the grant of the application he is seeking. The
Court is satisfied that the Plaintiff has prima facie shown that he
has a right to protect. He has also shown that this application be heard and
granted exparte if the infringing products and
related documents are to be preserved. He has also shown prima facie that
his product VOLVIC is being infringed by the Defendant's product. I
therefore grant his prayers for interim injunction and Anton Pillar as
prayed in his motion paper dated and filed
26th February 2002."
The reliefs granted are a copy
of the reliefs sought which I have reproduced. All the prayers were granted
and they are at pages 74 - 77 of the record. For constraints of time and
space, I need not reproduce them. They are, no doubt, far reaching and
devastating. The Court of Appeal described them as draconian. They contain
injunctive orders the total practical effect of which was the closing down
of the Respondent's industry albeit "temporarily." And worse still, the
orders include Anton
Piller which authorised the
Appellants to enter upon the Respondent's two premises and thereon take,
seize and impound products and other properties of the Respondent. And all
these orders were made and execution thereof authorised even before the
Respondent became aware of the suit against it. The Respondent became aware
of this suit only on the 4th of March 2002 when execution was
levied on its two premises.
Under such excruciating
circumstances, it was only natural for the Respondent to react by filing its
motion of the 11th of March 2002. The motion prayed for:
"An Order setting aside,
discharging and vacating forthwith on its entirety the order pronounced by
this Honourable Court on the 28th
February in favour of
Groupe Danone and
Societe Des Eaux De
Volvic against Voltic
Nigeria Limited."
The motion was supported by a
21 paragraph affidavit. In paragraphs 13, 14, 17, 18, 19 and 20 thereof the
Respondent deposed to facts some of which were that it was a substantial
entity with its products found in most prominent supermarkets and open
markets in most states of Nigeria; that it was therefore unlikely to conceal
or destroy evidence that would be subsequently required in the litigation to
warrant the
Antom
Piller
order; that it has substantially heavy investments in the industry
with a monthly turn over of about
Despite these circumstances
the trial court refused the application by its ruling on the 3rd
of May 2002. In apparent desperation, the Respondent filed both the Notice
of Appeal against the ruling and a motion for variation of part of the
controversial order of the 28th February 2002. Then
came the decision of the trial court on the 20th
June 2002 to try the Respondent for contempt of the self same order of the
28th February 2002 which validity the Respondent had doggedly
challenged in the various applications and the appeal. The contempt
proceedings were fixed for the 23/7/02 for hearing. (See page 250 of the
record) This was the position the Respondent found itself when it filed the
application of the 27th June 2002 the subject matter of this
appeal. Order 3 Rule 3(4) of the
Court of Appeal Rules provides to the effect that where an Appellant is
entitled under the Rules to make an application either at the Court of
Appeal or at the High Court, he shall make the application first at the High
Court; and that it is only in special circumstances where it is impossible
or impracticable to make the application at the High Court that it can be
made first at the Court of Appeal. Now are there such special circumstances
in this case to justify the application made at the Court of Appeal. I shall
answer this question in the affirmative.
Firstly it is settled
principle of law that where a Defendant in a cause challenges the validity
of an order directed against him either by way of an appeal or other
application, he cannot be proceeded against for contempt of that order
unless and until the issue of its legality is settled one way or the other.
And this is particularly so where, as in this case, the order was
procured by the Plaintiff behind his back.
The principle is an exception to the general common law rule that a
person in contempt in a cause cannot be heard in the cause unless he purges
himself of the contempt.
In
Onwochei
Odogwu v Otemeoku
Odogwu (1992) 2 NWLR
(Part 225) 539 at 554, this Court, per Karibi-Whyte
JSC re-emphasised this principle when he said:
"The common law rule precluding persons in disobedience
of orders of court against them
from being heard in respect
of matters which they stand in disobedience of is of respectable
antiquity. The principle has
however been whittled down
by exceptions. Thus where the order disobeyed was
made without jurisdiction; or
where the party in disobedience is challenging the validity of the
order, the principle does
not apply. See Gordon
v Gordon &
Gordon (1904) P. 163."
(Underlining mine)
In this case, the Respondent
has demonstrably challenged the validity of the Ex-parte Order first by its
application of the 11th of March 2002, the Notice of Appeal filed
on the 6th of June against the ruling sequel thereto and the
motion also of the 6th of June 2002. In the Notice of Appeal, the
relief sought from the Court of Appeal is stated to be:-
"An Order setting aside the ruling o the Honourable Justice
Olotu delivered on the
3rd
of May and in its place discharging
in its entirety the Order of Ex-parte and Anton Pillar order granted on the
28th day of
February 2002."
And in the motion of the 6th
of June 2002 the Respondent prayed for an order:
"Discharging or suspending that part of the Order of the Federal High Court
restraining the Defendant from selling or offering for sale Table Water sold
in packages, cans, containers bearing the word "LA VOLTIC" pending the
hearing of the appeal filed herein."
The above shows clearly the
Respondent's continued challenge of the validity of the Ex-parte Order of
the 28th February 2002. It has not been and indeed, it cannot be
suggested that the challenge is merely frivolous. I have no doubt that given
the peculiar facts and circumstances of the case the validity issue is not
merely frivolous. To the Respondent, the issue is fundamental. And so
pending the determination of this crucial issue of the validity or otherwise
of the order the Respondent cannot be tried for its breach, lest he would be
tried and punished for contempt of an order which might turn out to be
without any legal basis. On the principle of
Odogwu v Odogwu
(supra) I am of the firm view that the Respondent's case falls within the
exceptions to the general rule which bars a contemnor in a cause from being
heard unless he purges himself of the contempt. The trial court had no
choice but to follow this principle.
However, on the 20th
June 2002 there were, pending before the trial court the Appellants'
application for contempt proceedings against the Respondent and the
Respondent's application for discharge or suspension of part of the Order of
the 28th February 2002. There was argument as to the application
to be heard first. In its ruling the trial court said:-
"Following the analysis of the various exceptions to the general rule that a
contemnor cannot be heard, it is clear that the defendant cannot be exempted
from the general rule by being heard in respect of their application.
This is because the application which they want to be heard does not
come within any of the exceptions to the general rule as analysed herein.
Therefore in the circumstances the defendants cannot be exempted from
the general rule which bars a contemnor from being heard and to their
application for an order to suspend or vary the terms of the order of this
court cannot be heard now. The
application of the Plaintiffs would therefore be taken. By agreement of the
parties, case is adjourned to 23/7/2002 for Plaintiffs' application for
contempt."
The Court having thus decided
that the Respondent cannot be heard and having regard to the fact that the
appeal which challenges the order cannot be heard before the 23/7/2002, the
Respondent stood the imminent danger of being punished for breach of an
Order which propriety it had, on good grounds, persistently challenged.
The foregoing aptly
demonstrates the precarious situation, the Respondent found itself. Implicit
in the ruling itself is the fact that the Respondent was already adjudged to
be guilty of the contempt. It was clear therefore that the Respondent would
be imprisoned or otherwise inflicted with some form of punishment on the
23/7/2002 unless it earlier folded up its water industry, and all these
before the determination of the ultimate issue of whether "La VOLTIC"
infringes VOLVIC.
In these circumstances, the
Respondent had no alternative but to seek refuge in the Court of Appeal by
filling the motion which has given rise to this appeal on the 27th
June 2002. It was, as it were, a pre-emptive strike. And in view of the
foregoing considerations, I hold that there existed very special
circumstances which entitled the Respondent to file the application at the
Court of Appeal. There was no question of abuse of judicial process as
suggested by the Appellants. I hold that the application was appropriately
presented at the Court of Appeal which was equally competent to entertain
same. The result is that the 1st issue is resolved in favour of
the Respondent.
With respect to the 2nd
issue for determination, I agree that the relief granted is not strictly as
prayed. The relief sought in the application which ruling has given rise to
this appeal had been re-produced above. At the concluding part of its ruling
the court below, Per Galadima
JCA at page 351 said:-
"In summary, all things considered
this application succeeds and it is hereby allowed. Therefore the ruling of
the lower court delivered on the
3/6/2002 refusing to discharge the
orders granted against the applicant is set aside. In its place and order
granting stay of execution of that order is hereby
substituted ........ Further proceedings before the lower court are
stayed pending the determination of the appeal in this court."
There was no prayer for
setting aside the ruling of the trial court of 3rd of May 2002;
nor was there any prayer for stay of further proceedings. But it can be seen
that the Ex-parte Order of the 28th February 2002 is the pivot on
which this appeal turns. Because of its excruciating effect the Respondent
reacted by filing a number of applications and the appeal. And all the
applications i.e. the one of the 11th of March 2002, 6th
of June 2002, the Notice of Appeal filed on the 6th of June 2002
and the application which ruling has given rise to this appeal were directed
either at vacating the Order in its entirety or otherwise varying,
suspending or staying the said order. The ruling of the 3rd of
May 2002 consolidated the Ex-parte Order complained of and the reaction of
the Court of Appeal was therefore to render the order inoperative by staying
its execution. And the order for stay of proceedings was apparently to stave
off the Respondent's impending trial for contempt. Although the words
setting aside were used the intention of the court is clear from the stay of
execution and stay of proceeding ordered. While the stay of execution
ordered is consistent with the relief sought; the stay of proceedings
ordered, though not specifically sought, was necessary to stave off the
Respondent's trial for contempt.
In conclusion, I hold that the
use of the words "set aside" notwithstanding, there is no substance in the
complaint in ground one of the Notice of Appeal on which the second issue is
predicated. I therefore resolve that issue in favour of the Respondent.
As regards the 3rd
issue for determination the complaints of the Appellants were on the
competing rights of the parties and the issue of balance of convenience. It
was their submission that the order of the 28th February 2002
which protected their legal rights ought not to have been disturbed. It has
to be noted that the substantive issue for trial and determination is
whether the Respondent's mark "La VOLTIC" infringes the Appellants'
registered trade mark "VOLVIC". By the very nature of the case the trial
would entail essentially a comparison of the two marks within the provisions
of the
Trade Marks Act and can be completed in a few days. If the Appellants
succeed in establishing the alleged infringement they would be entitled to
the declarations and injunctions of the type granted and permanently too.
But instead of pursuing their alleged infringement in the substantive case,
the Appellants have been at great pains for the six years to perpetuate a
questionable order. And there is nothing from the affidavit evidence to show
that if the Respondent had been put on notice and the motion on notice heard
a few days after the 28/2/02, the Appellants would have suffered greater
damages than they suffered in the five months before the filling of the
suit.
At page 350 of the record the
court below reasoned as follows:
"The orders made by the lower court in the instant case are clear and they
point to one direction only that is stoppage of the entire business of
manufacturing of the Applicant's products."
The applicant has stated in paragraph
25 that they are likely to suffer
irreparable damage and loss if their production in the same of "La VOLTIC"
is halted albeit temporarily. They have given details.
The Appellants filed a 45
paragraph counter affidavit and although in paragraphs 39, 41 and 42 thereof
they denied that the Respondent was likely to be paralysed by the order, it
is nevertheless clear that the effect was the infliction of irreparable
damage on the Respondent. I do not therefore agree that the Appellants'
interest was not considered by the court below in granting the application.
This issue is therefore also resolved against the Appellants.
In conclusion I hold that this
appeal lacks substance. The ends of justice would, no doubt, have been
better served in this case if the Appellants had pursued the substantive
claim by establishing the alleged infringement of their trade mark instead
of using precious litigation time trying to defend and perpetuate a patently
questionable Ex-parte Order. The
appeal is for the foregoing reasons dismissed for lack of merit.
I assess the costs of this
appeal at
Judgment Delivered by
Niki
Tobi, JSC
The quarrel in this matter is
in respect of two trade marks. One is Volvic.
The other is La Voltic.
Volvic is registered. This was in 1981. It wears registration No.
39259. Voltic is unregistered. As a matter of
fact, Volvic is registered in over 200
countries. Societe Des Eaux
de Volvic is the proprietor of
Volvic. Voltic (
Voltic
(
Neither the respondent nor
Voltic International Inc appealed against the
withdrawal. The respondent continued to manufacture and sell its bottled
table water under the trade mark "La Votic".
Appellants filed an action at the Federal High Court for trade mark
infringement. They claimed declaratory and injunctive reliefs.
In the interim, the appellants
applied for and obtained ex-parte, an interim injunction/Anton
Piller order against the respondent. That
was on 28th February 2002. The respondent's application for the
discharge of the ex-parte order was refused by the court in its 3rd
June, 2002 Ruling. In an appeal to the Court of Appeal, that court set aside
the Ruling of the Federal High Court and ordered a stay of proceedings at
the Federal High Court.
Galadima.
JCA, ordered at page 351 of the Record;
"In summary, all things
considered, this application succeeds and it is hereby allowed. Therefore,
the ruling of the lower court delivered on 3/6/2002 refusing to discharge
the orders granted against the applicant is set aside. In its place an order
granting stay of execution of that order is hereby substituted on the
following conditions:
1.
The Appellants/Applicants shall keep proper account of goods
manufactured and sold.
2.
The Appellants/Applicants shall give an undertaking in damages in the
event that the order is made unjust and it is wrongly stayed.
3.
Furthermore, the Appellants/Applicants shall give undertaking to
prosecute the appeal with diligence with liberty reserved to the respondent
to apply to this Court to discharge the orders in case the appeal should not
be prosecuted with due diligence as ordered.
4.
Further proceedings before the lower court are stayed pending the
determination of the appeal in this court."
This appeal is against the
above order of the Court of Appeal. Briefs were filed and duly exchanged.
Appellants filed a Reply Brief the appellant’s formulated three issues for
determination. The respondent accepted the issues formulated by the
appellants.
The issue in this appeal is
whether it was proper for the respondent to file the same application in the
Court of Appeal when it was still pending before the Federal High Court. It
is the submission of counsel for the appellants that it is an abuse of the
court process to do so. He submitted that the proper order that the Court of
Appeal should have made was to strike out the application before it being an
abuse of court process. It is the submission of counsel for the respondent
that the Court of Appeal was in perfect order to have entertained the 27th
January 2002 application, notwithstanding the pending application before the
Federal High Court. Learned counsel for the respondent argued that failure
on the part of the Federal High Court to hear the application for variation
of its order is sufficient special circumstances, permitting the respondent
to proceed to the Court of Appeal. He argued that the application for
variation of the order of the Federal High Court ought to have been taken
first before that for contempt in Form 49.
Let me get the picture
straight. This is the scenario and I pick it from the Appellants Brief
because it is very well presented there.
"On 3rd June 2002
when the suit came up before the Federal High Court, the court noted that
there were pending before it, the following motions:
(i)
motion for interlocutory
injunction dated
18th February, 2002
(ii)
Committal
proceedings filed
on 26th March, 2002
and 22nd April, 2002 and
(iii)
the Respondent's application for a
variation of the ex-parte order dated 6th June 2002.
After hearing arguments from
both sides on the issue of priority of the hearing of the pending
applications, the Federal High Court held that it would hear the pending
applications in the following order:
(ii)
Committal
proceedings filed on 26th March, 2002 and 22nd April,
2002.
(iii)
The Respondent's application for a variation of the ex-parte order
dated 6th June 2002; and (i)
motion for interlocutory injunction dated 26th February,
2002.
The court thereafter adjourned
the suit to the 20"' of June 2002 for the hearing of (ii) (See pages 246,
318 to 334 of the Record).
I do not think the Federal
High Court was right in holding that it would hear the committal proceedings
first. Where there is a court process to cure an anticipated contempt, that
court process must be taken and disposed of before the contempt proceedings.
This is because if the court process to cure the anticipated contempt
proceedings succeeds, then there is no contempt against the applicant. I
would like to think that the application for variation of the ex-parte
order of the Federal High Court was aimed at curing the anticipated
contempt, and I expected the Federal High Court to take that application
first. I should point out that at the time the appellants initiated contempt
proceedings in Form 49, the respondent was not in contempt and this is the
point counsel for the respondent made in the respondent's brief. Invocation
of contempt proceedings is different from conviction and committal for
contempt, therefore cannot fault the Court of Appeal in the Order it made.
Issue No 2 is that the
Court of Appeal was wrong in granting orders in an interlocutory application
which it ought to have granted as substantive relief on appeal
In its Ruling of 18th July, 2002, the
Court of Appeal gave the following order at page 281 of the Record:
“An order setting aside the
ruling of the Honourable Justice Olotu delivered
on 3rd June 2002 and in its place discharging in its entirety the
order of Ex parte Anton Piller Order
granted on the 28th of February 2002”
I do not see in the above
order similar to the substantive relief. The order of the court was not made
in vacuo but in relation and in
the context of the prayer sought, and should be so construed. The relief
sought by the respondent was in respect of "the ex-parte orders
granted by the Federal High Court (Honourable Justice
Olotu, J) on 28/2/2002 in favour of (1) Group
Danone. (2) Societe Des
Eaux De Volvic" (See
Prayer 1 of the application of the respondent). And so, the Court of Appeal
set aside the ex-parte order of the Federal High Court. At the end of the
case and at the level of granting substantive relief in the event of the
respondent's case succeeding, the court will not grant any ex-parte relief
because there wilt be none at that final stage. At that stage relief No
(iii) for an order of perpetual injunction will be granted.
It is in the light of the
above reasons and the fuller reasons given by my learned brother, Tabai,
JSC, that I too dismiss the appeal. I abide by his orders
as to costs.
Judgment Delivered by
Sunday Akinola Akintan,
JSC
The dispute between the
parties in this appeal centred around allegation
of infringement of trade marks.
The 2nd appellant was the registered owner of the trade
mark "Volvic". It was registered at the Trade
Marks Registrar in 1981 as No, 39259 in Class 32 which it uses for
the manufacture and sale of table water. The respondent company, on the
other hand, was incorporated in 1998 and manufactures and sells table water
in
The appellants, upon discovery
of the respondent's name being similar to their registered trade
marck "Volvic,"
wrote to the Registrar of the Corporate Affairs Commission urging the
registrar to prevail on the respondent to change its name -
Voltic Nigeria Ltd. (RC No. 346209) being
a name similar to their registered Trade Mark "Volvic".
The appellants also applied to the Registrar of Trade Marks to exercise his
power under section 18(7) of the
Trade Marks Act to withdraw the acceptance issued to the respondent's
application for the registration of "La Voltic"
as its trade mark. The Registrar of Trade Marks, acting on the appellants'
request accordingly withdraws the acceptance earlier issued to the
respondent in respect of its application for the registration of "La
Voltic" as its trade mark.
When the appellants discovered
that the respondent was still using the trade mark "La
Vollic" after its acceptance had been withdrawn by the Registrar of
Trade Marks, they instituted an action against the respondent at the Federal
High Court alleging trade mark infringement and claiming injunctive reliefs
among others. The appellants then sought for and obtained ex-parte, an
interim injunction/Anton Piller Order against
the respondent at the Federal High Court on 28th February, 2002.
On 11th March 2002,
the respondent applied to the court for a discharge of the ex-parte order.
The application was considered and refused in a ruling delivered on 3rd
June, 2002.
The respondent was
dissatisfied with the ruling and filed an appeal against it to the Court of
Appeal. While the appeal was pending, the appellants filed at the Federal
High Court Forms 48 and 49 seeking to commit the respondent for contempt.
However, in a ruling delivered on 18th July 2002, the Court of
Appeal set aside the ruling of the Federal High Court by which the Federal
High Court refused to discharge its order of injunction against the
respondent. The present appeal is from the Court of Appeal ruling.
The parties filed their briefs
in this court. The following 3 issues were formulated in the appellants'
brief which are also adopted by the respondent-
1.
Whether the Court of Appeal was right in entertaining the
respondent's application for a suspension of the orders of the Federal High
Court when an application in identical terms and another application for
committal were both pending before the Federal High Court.
2.
Whether the Court of Appeal was competent to set aside the ruling of
the Federal High Court delivered on 3rd June, 2002 to discharge
the orders granted against the respondent.
3.
Whether the Court of Appeal gave equal or any consideration to the
interest of the appellants as it did to the interest of the respondent
before setting aside the ruling of the Federal High Court dated 3rd
of June 2002, and if it did not, whether such a failure ought to vitiate the
ruling of the Court of Appeal."
Each of the above issues and
all other questions raised in the appeal are fully treated in the lead
judgment written by my learned brother, Tabai, JSC and I therefore do not
intend to repeat same.
All I will like to add is that
the court below acted properly in discharging the order made by the trial
High Court having regard to the circumstances of the case. I also believe
that the rush for the committal of the respondent was pre-mature since the
question whether the names "Volvi" and "La
Voltic" are too similar was still pending issue
in action pending before the court. For the above reasons and the fuller
reasons given in the said lead judgment which I also adopt, I dismiss the
appeal with costs as assessed in the lead judgment.
Judgment Delivered by
Mahmud Mohammed,
JSC
This is an appeal against the
decision of the Court of Appeal, Lagos Division, delivered on 18th
July, 2002 setting aside the Ruling of the trial Federal High Court, Lagos
of 3rd June, 2002, in which the Court refused to discharge its
earlier ex-parte order given on 28th February, 2002 restraining
the Respondent in this appeal from infringing the 2nd Appellant's
registered Trade Mark "volvic." The ruling was
delivered after hearing the Respondent's application on notice for the
discharge of the said ex-parte order. On appeal to the Court of Appeal by
the Respondent in this Court, and on the application on notice by the
Respondent pending the hearing and determination of the appeal, granted the
reliefs sought by setting aside the ruling of the trial Federal High Court
of 3rd June, 2002 refusing to discharge the ex-parte order of
injunction and staying the proceedings before the Federal High Court.
Dissatisfied with the ruling of Court of Appeal, the Appellants are before this Court on appeal raising three issues for determination in their Appellant's brief. However, having regard to the circumstances of thi |