LABELLING THE PRODUCT OF A COMPETITOR AS IMITATION IS TRADE LIBEL NOT A TRADEMARK INFRINGEMENT

The Respondent, a manufacturer and distributor of ballpoint pens, claimed that the Appellants published a false and offensive advertisement in national newspapers disparaging the Respondent’s product.

The Appellants had caused the publication of an advertisement depicting the Respondent’s pen which contained the words, “avoid imitation”.

The Respondent sued the Appellants at the High Court of Lagos State for libel, claiming damages in the sum of N10,000,000.00 (Ten Million Naira); and an order of perpetual injunction restraining the Appellants from further printing, issuing, publishing or circulating libelous materials about its products.

The Appellants filed a preliminary objection challenging the jurisdiction of the Lagos State High Court, contending that the Federal High Court has exclusive jurisdiction over the matter which involved the parties’ trademarks. The Appellants also contended that the suit constituted an abuse of court process.

The trial court struck out the objection and ruled that it has jurisdiction to entertain the suit. The Appellants appealed against this interlocutory decision to the Court of Appeal. The appeal was dismissed.

Further dissatisfied, the Appellants appealed to the Supreme Court.One of the issues raised for determination was:

“Whether on the totality of the materials before the Court of Appeal, the learned trial Judge was right in finding that the cause of action in the suit was founded in the tort of trade libel and not in trademark and therefore the High Court of Lagos State has jurisdiction to hear and determine the Respondent's suit.”

In support of this issue, learned counsel for the Appellants argued that the publication in question did not constitute the tort of trade libel. Rather, the issue revolves around the infringement of the Appellants' trademark and that falls squarely within the exclusive jurisdiction of the Federal High Court.

Learned counsel to the Respondent argued that in order to determine its jurisdiction, the trial court will consider the writ of summons and statement of claim. Counsel posited that the claim is based on the alleged false and malicious publication by the Appellants which impugned the Respondent's Charzin ballpoint pens, and that the trademark of the Respondent was not in issue in this case.

The Supreme Court noted that the Respondent’s claim is that the Appellants, by their publications in national newspapers, portrayed the Respondent's product as fake or imitation. The Court upheld the concurrent findings of the Court of Appeal and Lagos State High Court that the claim was based on a trade libel and does not involve trademark.

The Supreme Court unanimously dismissed the appeal, holding per Rhodes-Vivour, JSC that:

“My lords, section 230 (i) (f) of Decree No-107 of 1993 or section 251 (i) (f) of the 1999 Constitution confers jurisdiction on the Federal High Court to hear civil causes and matters relating to copy right, patent, designs, trademarks and passing of, industrial designs and merchandise marks etc. Section 272 (3) of the Constitution confers jurisdiction on the Federal High Court to hear questions as to whether the term of office of a member of the House of Assembly of a State, a Governor or Deputy Governor has ceased or become vacant. None of the above is applicable as the trademark "CHARZIN" was not in issue. What was in issue was the false publication to the reading public to avoid imitation. The publication refers to "CHARZIN" ball point pens as an imitation. The averments in the statement of claim do not complain about trade mark infringement of the mark "CHARZIN" rather it complains of the false and malicious publication warning the reading public to avoid "charzin" which is an imitation. That is the effect of "avoid imitation". This is clearly a cause of action that falls into the tort of libel and not copyright or trade mark as spelt out by the provisions of section 230 (1) (f) of Decree No. 107 of 1993 or Section 251(i) (f) of the Constitution. Since the claims are for libel and injunction, the State High Court and not the Federal High Court has jurisdiction to hear the plaintiff/respondents claims. Both courts below were correct.”

SOCIETE BIC S.A.  & ORS. v. CHARZIN INDUSTRIES LTD (2014) 4 CLRN