3PLR – IN THE MATTER OF AN APPLICATION BY JOHN SINCLAIR, LTD. AND In re BRITISH AMERICAN TOBACCO COMPANY
POLICY, PRACTICE AND PUBLISHING, LAW REPORTS 3PLR
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IN THE MATTER OF AN APPLICATION BY JOHN SINCLAIR, LTD.
AND
In re BRITISH AMERICAN TOBACCO COMPANY
DIVISIONAL COURT, COLONY AND PROTECTORATE, LAGOS
4TH JULY, 1932
3PLR/1932/5 (DC-CPL)
OTHER CITATIONS
BEFORE: WEBBER, C.J.
REPRESENTATION
Palmer for the applicant.
Nelson Cole for the opponents.
MAIN ISSUES
INTELLECTUAL PROPERTY:- Trade mark – Close resemblance in general appearance – Honest desire to distinguish goods from those of everybody else – Distinction between what might mislead a civilized community and an illiterate population – Relevant considerations
MAIN JUDGMENT
The judgment of the Divisional Court was delivered at Lagos on the 4th July, 1932, by
WEBBER, C.J. (acting).
The applicants, Messrs. John Sinclair Ltd., have requested the registration of a trade mark No. 4219 of manufactured tobacco including tobacco, cigars, cigarettes and snuff. The trade mark is represented by a name called Old Castle and beneath is the picture of a castle with three turrets enclosed within what appears to be a shield.
The British American Tobacco Co. Ltd., oppose this registration on the ground that they are the proprietors of a trade mark of which the words Three Castles are a material and essential feature. They aver that the goods to which their trade mark is applied is in extensive use in the Colony and such goods are frequently asked for by reference to the word castle or castles and that it is a common habit of the smoking public to ask for both cigarettes and tobacco by the description castle or castles.” They state that the term Old Castle will in practice become known as “castle,” or when applied to cigarettes as castles.” They contend that the applied for trade mark has such close resemblance to their registered trade mark as to be calculated to deceive and that they will be injured if the applicants are allowed to register the said application as a trade mark.
On the evidence I am satisfied that the common habit of the native smoker in asking for this brand of tobacco, is to designate it by the names of castle or castles as well as by the name of three castles.” In dealing with the question of deception, this Court has by various decisions laid down an established principle that the likelihood of deception varies with the intelligence and education of the consumers and it has repeatedly held that a mark which would certainly not be likely to deceive an educated European may nevertheless be likely to deceive illiterate natives. I am clearly of opinion that the adoption of the words Old castle and the general appearance of the applied for trade mark bear such a close resemblance to the opponents’ registered trade mark as to be calculated to deceive.
I reiterate the remarks of Jessel in re Worthington’s Trade Murk (1.4 Ch. Div. 10.)–remarks which the applicants may well bear in mind and inwardly digest. “If the proprietor of a business is honestly desirous of distinguishing his goods by a trade mark from the goods of everybody else he will choose a mark not in the slightest degree resembling that of anybody else because his anxiety and desire must be that the public shall by no possibility mistake his goods for the goods made by anybody else.” And I re–iterate my own remarks in my judgment in McIver & Co., Ltd. v. Compagnie Francaise de l’Afrique Occidentale (3 N.L.R. 16) To the trained eye of a civilized community there is undoubtedly a considerable difference (here it. is by no means considerable) in the two designs set side by side and the one would hardly be likely to be mistaken for the other, but while broad principles laid down in English cases should be applied, the trade marks laws in this country should be administered with regard to local conditions and, as Osborne, C.J., said in the Houtman case (1912), with a view to protecting not only a vast illiterate population little acquainted with pictorial representations but also the pioneers of trade who have earned a reputation among these illiterate folk by the quality of goods associated with some recognised mark such as a particular bird, animal, tree or other object.”
I am of opinion that the opposition is well founded, and that the application for registration should be refused. Order accordingly and the applicant is to pay the taxed costs of this action.
