|
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 |