The Plaintiff, a limited liability company incorporated in Ghana stated that it was the registered proprietor of Industrial Design Number AP/D/00149 which it used for the manufacture of insect repellant/air fresheners.

It was its case that this registration had been valid and subsisting since 2008. It was also Plaintiff’s case that it had since 2007 manufactured and distributed/sold large quantities of insect repellants/air fresheners and therefore the product had become well known in Ghana.

The Plaintiff averred that the Defendant trading under the names and styles Ansun Trading Enterprise and Appeb Trading Enterprise had infringed the Plaintiff’s Industrial Design No. AP/D/00149. It particularized the infringement by accusing the Defendants of causing insect repellant/air fresheners to be manufactured in the Plaintiff’s registered design without its consent. In doing so, the Plaintiff contended that Defendant had caused it to suffer loss and damage. As a result, the Plaintiff claimed against the Defendant the following reliefs:

i. A Declaration that the Defendant has infringed the Plaintiff’s Industrial Design No. AP/D/00149

ii. An injunction restraining the Defendant whether by himself, his servants or agents or any of them or otherwise from howsoever from doing the following acts that is to say infringing the Plaintiff’s Industrial Design no. AP/D/00149 by using or causing same to be used to manufacture and import for marketing, distribution and sale in Ghana, air freshener and insect repellant products or any other products.

iii. An order directing the Defendant trading respectively as ANSUN TRADING ENTERPRISE and APPEB TRADING ENTERPRISE to deliver up to the Plaintiff or to any person or entity as the Court may direct, all of the infringing goods in the possession, custody, and control of the Defendant trading respectively as ANSUN TRADING ENTERPRISE and APPEB TRADING ENTERPRISE.

iv. An order as to directions for the disposal of the said infringing goods by destruction.

v. An inquiry as to the damages sustained by the Plaintiff OR IN THE ALTERNATIVE an account of that part of the profits obtained by the Defendant trading respectively as ANSUN TRADING ENTERPRISE and APPEB TRADING ENTERPRISE to which the Plaintiff is entitled.

vi. An order for the payment by the Defendant trading respectively as ANSUN TRADING ENTERPRISE and APPEB TRADING ENTERPRISE of all sums found due to the Plaintiff upon taking such inquiry or account, together with interest thereon at the prevailing commercial bank rate of interest.

vii. Costs including Plaintiff’s Counsel’s legal fees.

The Defendants in their amended Statement of Defence filed on 4^th April 2017 denied dealing in any manner with the Plaintiff’s design number AP/D/00149. They contended as follows:

a. That they have not at any time infringed on the Plaintiff’s Industrial Design Number AP/D/00149 as they did not manufacture the product in question.

b. That the said product was manufactured in China by GUANGZHOU DREAMFINE CHEMICAL COMPANY LIMITED and that the Defendants only bought the product from the company in China and imported same into Ghana for retail.

c. That the Defendant registered the said product with the Food and Drugs Authority of Ghana and who issued them with the authority to market the product in Ghana since August, 2016….

d. That there is nothing in the Plaintiff’s alleged design which the Defendants copied and the goods which the Defendants imported do not bear any resemblance to that of the Plaintiff.

e. That the Defendants applied for the registration of a trademark BAY BAY in December 2014 which application was granted by the Registrar of Trademarks under the Trade Marks Act, 2004. …

f. That in further response ……of the Plaintiff’s Statement of Claim, the Defendants aver that only 800 cartons of BAY BAY Air Refreshers/Insect Repellent were imported into the country and that the Defendants have no knowledge of any special design of the Plaintiff or any other person, since similar products were on sale in Ghana.

The issues forwarded to this court for trial were:

1. Whether or not the Defendants under the Trade Name of BAY BAY imported, distributed and put out for sale in the country products which infringe Plaintiff’s industrial design No. AP/D/00149?

2. Whether or not the Defendant imported 800 cartons or 1,400 cartons of the alleged infringing products into the country?

3. Whether or not the Plaintiff is entitled to its claims?

4. Any other issues arising from the pleadings.

Whether or not the Defendants under the Trade Name of BAY BAY imported, distributed and put out for sale in the country products which infringe Plaintiff’s industrial design No. AP/D/00149?

The Plaintiff is a limited liability company registered in Ghana. Exhibits A and B attached to its representative’s witness statement evidences that the Plaintiff was registered on 7^th March 2000 and was given a Certificate to Commence Business on 8^th March 2000.

In section 2 of the Harare Protocol of 1982 as amended in November 2017 it is stated as follows:

(1)The African Regional Intellectual Property Organization (ARIPO) is empowered to grant patents and to register utility models and industrial designs and to administer such patents, utility models and industrial designs on behalf of Contracting States in accordance with the provisions of the Protocol, through its Secretariat (hereinafter referred to as “the Office”).

(2) Patents granted or utility models and industrial designs registered by virtue of this Protocol shall respectively be called ARIPO patents, ARIPO utility models and ARIPO industrial designs.

(3) The ARIPO patent or ARIPO utility model or ARIPO industrial design shall in each of the Contracting States for which it is granted or registered, as the case may be, have the effect of, and be subject to the same conditions as, a national patent granted, or utility model and industrial design registered, by that State.

Section 4 which deals with industrial designs enunciates the registration process as follows:

(1) An application for the registration of an industrial design filed shall

(i) identify the applicant;

(ii) contain a reproduction of the industrial design;

(iii) designate the Contracting States for which the registration is requested to have effect;

(iv) be subject to the payment of the prescribed fees.

(2)

(a) The Office shall examine whether the formal requirements for applications have been complied with and, if so, shall accord the appropriate filing date to the application.

(b) If the Office finds that the application does not comply with the formal requirements, it shall notify the applicant accordingly, inviting him to comply with the requirements within the prescribed period. If the applicant does not comply with the requirements within the said period, the Office shall refuse the application.

(c) The Office shall notify each designated State of the fact that an application for the registration of an industrial design has been filed which complies with the prescribed formal requirements.

(3) Before expiration of 6 months from the date of the notification referred to in Sub-section

(2)(c), each designated State may make a written communication to the Office that, if the industrial design is registered by the Office, that registration shall have no effect in its territory for the reason–

(i) that the industrial design is not new,

(ii) that, because of the nature of the industrial design, it cannot be registered or a registration has no effect under the national law of that State, or

(iii) that, in the case of a textile design; it is the subject of a special register.

(4) After the expiration of the said 6 months, the Office shall effect the registration of the industrial design, which shall have effect in those designated States which have not made the communication referred to in Sub-section (3). The Office shall publish the registration.

(5) If the Office refuses the application, the applicant may, within 3 months from being notified of such refusal, request that his application be treated, in any designated State, as an application according to the national law of that State.

(6) On the anniversary of the filing of the application, the ARIPO Office shall collect the prescribed annual maintenance fees, part of which shall be distributed among the designated States concerned as provided for in the regulations. The amount of the fees shall depend on the number of States in respect of which the application or registration is maintained. Provided that it is maintained, the registration of an industrial design effected by the Office shall in each designated State have the same effect as a registration effected or otherwise in force under the applicable national law. The duration of such a registration shall be 10 years from the filing date.

(7) An industrial design registered by the Office shall in each designated State be subject to the provisions of the applicable national law on compulsory licences or the use in the public interest of registered industrial designs.

Exhibit G is an industrial design registered by the African Regional Intellectual Property Organization (ARIPO). The Applicant’s name is given as OM SATNAM (Plaintiff). The Creator is Mirpuri Varsha Suneel and he is designated as the representative of OM SATNAM. The product registered is described as Air refreshners and is in the shape of a cube with a hole running through it. The date of registration is given as 18^th March 2008.

Exhibit H is a Certificate of Registration of Industrial Design. In Exhibit H it is stated that in accordance with instruction 70 of the ARIPO regulations, it is hereby certified that an industrial design having the No: AP/D/00149 has been registered in the name of OM SATNAM LIMITED. The certificate further states that the registration has effect in the following designated contracting States:

Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.

As already stated above in the Protocol, the registration by ARIPO is akin to the registration having taken place in a member state. Sections 23 and 24 of the Industrial Designs Act, 2003 (Act 660) states:

23. An international treaty in respect of industrial property to which the country is a party is applicable to matters dealt with by this Act, and in the case of a conflict with a provision of this Act, the provisions of the international treaty shall prevail.

24. An international application may designate Ghana for an industrial design under the Harare Protocol.

The Court finds that the Plaintiff had registered its Industrial Design with ARIPO. The court also finds that the registration with ARIPO had the same effect as if it had been registered under the laws of Ghana. The Plaintiff has a legally protected industrial design. Having found that registration under the auspices of ARIPO has the same effect as if the registration had taken place under Act 660, the question remaining outstanding is:

Has the Defendant infringed upon the Plaintiff’s industrial design? As stated succinctly by

Chief Justice Wood in F. K. A. Ltd v. Sarkodie (2009) SCGLR 65 @ 69:

“the main issue for the court to determine is simply that, on a preponderance of the probabilities, whose story is more probable than not?”

Paragraph 5 of the Plaintiff’s Statement of Claim states:

The Defendant trading as ANSUN TRADING ENTERPRISE and APPEB TRADING ENTERPRISE has infringed the Plaintiff’s Industrial Design No. AP/D/00149.

PARTICULARS

(i) The Defendant trading as ASUN TRADING ENTERPRISE, has prior to the commencement of this instant action, infringed on the Plaintiff’s Industrial Design by causing insect repellant/air fresheners to be manufactured in the Plaintiff’s said registered design, without the Plaintiff’s consent, and has imported a minimum of one thousand four hundred (1,400) cartons of the said product into Ghana.

(ii) The Defendant trading as APPEB TRADING ENTERPRISE has, since January 27^th 2016 and without the Plaintiff’s consent, marketed, distributed and sold in Ghana, particularly Accra and Kumasi, the said insect repellent/air fresheners imported into Ghana by the Defendant trading as ANSUN TRADING ENTERPRISE.

In their Amended Statement of Defence filed on 4^th April 2017, the Defendants stated at paragraph 5 the following:

The Defendants do not admit Paragraph 5 of the Plaintiff’s Statement of Defence and shall at the trial contend as follows:

a. That they have not at any time infringed on the Plaintiff’s Industrial Design Number AP/D/00149 as they did not manufacture the product in question.

b. That the said product was manufactured in China by GUANGZHOU DREAMFINE CHEMICAL COMPANY LIMITED and that the Defendants only bought the product from the company in China and imported same into Ghana for retail.

c. That the Defendant registered the said product with the FOOD AND DRUG AUTHORITY of Ghana and who issued them with the authority to market the product in Ghana since August 2016. The Certificate of the FOOD AND DRUG AUTHORITY issued to the Defendants and dated 18^th December 2015 shall be relied upon at the trial of this action.

d. That there is nothing in the Plaintiff’s alleged design which the Defendants copied and the goods which the Defendants imported do not bear any resemblance to that of the Plaintiff.

e. That the Defendants applied for the registration of a trademark BAYBAY in December 2014 which application was granted by the Registrar of Trade Marks under the Trade Marks Act, 2004. All relevant correspondence and documents will be relied upon at the trial of this action.

f. That in further response to paragraph 5 (I) of the Plaintiff’s Statement of Claim, the Defendants aver that only 800 cartons of BAYBAY Air Refreshers were imported into the country and that the Defendants have no knowledge of any special design of the Plaintiff or any other person, since similar products were on sale in Ghana.

The Court finds that the Plaintiff has had the industrial design of a cube with holes running through it registered with ARIPO (See Exhibit G). As a result it is eligible to enjoy the rights conferred by registration as delineated in Section 9 of Act 660. Section 9 states:

(1) The exploitation of a registered industrial design by persons other than the registered owner shall require the consent of the owner.

(2) For the purposes of subsection (1), “exploitation” of a registered industrial design means the making, selling, importing or otherwise distributing for commercial purposes, articles bearing or embodying a design which is a copy or substantially a copy of the industrial design.

(3) The rights conferred by registration are not applicable to acts in respect of articles which have been put on the market in any country by the registered owner or with the registered owner’s consent.

(4) The registered owner may, in addition to any other rights, remedies or actions available under an enactment, institute court proceedings against a person who infringes the industrial design or who performs an act which makes it likely that infringement will occur.

The Defendants have by their defence averred that they did not infringe the Plaintiff’s design as they did not manufacture the product. They have however admitted importing the product into the country. The court has already found that the Plaintiff had a valid registration of an industrial design AP/D/00149 with ARIPO. What the court now has to find out is whether the product they have imported is a copy or substantially a copy of the Plaintiff’s Industrial Design. Have they by this admission, fallen within the definition of “exploitation” of a registered industrial design as explained by Act 660 as meaning the making, selling, importing or otherwise distributing for commercial purposes, articles bearing or embodying a design which is a copy or substantially a copy of the industrial design? The court has seen for itself the Exhibit P series. Exhibit P is a picture of the Plaintiff’s product packaged as Refreshner/Insect Repellant and labeled SATNAM. The Defendants’ product is also packaged as BayBay Refreshner/insect Repellant. Exhibit P1 is a picture which has both the packaged and unpackaged versions of both products. There is a similarity in both designs. This similarity is more marked in Exhibit P2 a picture which puts the Plaintiff’s product side by side with the Defendants’ product. The physical product itself was tendered in evidence as Exhibit P3 as belonging to the Plaintiff and Exhibit P4 as belonging to the Defendant. Exhibit P4 is substantially a copy of Exhibit P3.

The Defendants have imported a product which bears a substantial resemblance to the Plaintiff’s and this fact is contrary to their assertion that the goods which the Defendants imported do not bear any resemblance to that of the Plaintiff. In cross-examination of the Defendant on 15^th May 2018, the following information came to light:

Q: You would agree with me that Exhibit P3 and P4 are made of the same shape and design as found in Exhibit G.

A: That is correct.

Q: And you would agree that Exhibit P3 is a product of OM Satnam Ltd.

A: Yes. That is correct.

Q: I am putting it to you that Exhibit G confirms per the design and shape of your Insect Repellant/Air Freshener was not created by you but by Mr. Mirpuri. Correct?

A: That is not correct because Mr. Mirpuri made all these design for his product under the Air Freshener and Exhibit G confirms the name to be Air Freshener. What I imported into Ghana market is Air Freshener/Insect Repellant and the job my Repellant would do, his ordinary Air Refreshener cannot do. His Air Freshener only deodorizes the place, my BayBay Air Freshener/Repellent deodorizes the place and drives insects away. All other similar writings or features found on my product compared to the Plaintiff’s products were not registered for the Plaintiff ……

The Court is mindful of the fact that the Defendant has applied to the Registrar-General’s Department to and has been granted registration of BayBay as a trade mark. (See Exhibits 3 and 4). This trade mark is in respect of the name BayBay and has nothing to do with the industrial design which has been registered in Plaintiff’s name. Exhibit 5 which is a Certificate of Registration from the Food and Drugs Authority is in respect of BayBay Crawling and Insecticide Spray and has also nothing to do with the Plaintiff’s Industrial Design. The possession of Exhibits 3, 4 and 5 do not derogate from the fact that the Defendants have infringed the Industrial Design which is the sole preserve of the Plaintiff.

The fact that the Plaintiff’s product is an air freshener and the Defendants’ products performs the function of both air fresheners and insect repellant is of no moment. The issue of importance is that the Defendant has infringed on Plaintiff’s industrial design and the court holds so accordingly. The Defence has also contended that there were similar products on the market. Unfortunately, these similar products were not the subject matter of the dispute before this court. What is the subject matter are the products imported into Ghana by the Defendants. Defence Counsel in his address has referred to the case of Hammond v. Odoi and argued that the Plaintiff never pleaded in his Statement of Claim that his industrial design consisted of four cubes with a plastic rod. However, the Court notes that the Plaintiff did tender in evidence, Exhibit G in corroboration of the fact that it had registered the square block with a hole as its industrial design. Section 7(1) of the Evidence Act, 1975 NRCD 323 has it thus:

“Corroboration consists of evidence from which a reasonable inference can be drawn which confirms in a material particular the evidence to be corroborated and connects the relevant person with the crime, claim or defence.”

The Defence has admitted importing into Ghana, the products which bear a similarity to the Plaintiff’s registered design but has denied manufacturing the products themselves. See the case of In Re Asere Stool; Nikoi Olai Amontia IV (substituted by Tafo Amon II) v. Akotia Oworsika III (substituted by) Laryea Ayiku III (2005-2006) SCGLR 637 where the court held that the whole point of pleadings was to avoid surprise to a party’s adversary and to identify or clarify the issues submitted to the court. In the instant case, there is no evidence that the Defendants were taken by surprise by the evidence the Plaintiff gave. The Plaintiff was clear in its pleadings that it had come to court for an infringement of its industrial design. The Defendants were emphatic that they had not infringed on any such design and that they were not the manufacturers of the products said to have infringed on Plaintiff’s design. How were the Defendants able to put up such a defence had they not known why they had been sued in the first instance? By admitting that they had caused to be imported into Ghana, the said products, they had admitted a fact advantageous to the Plaintiff’s case. See Re: Asere Stool; (supra) Both Defendants filed a single defence.  It was to the 2^nd Defendant that the goods were consigned. The 2^nd Defendant has caused the importation of goods which infringed the Plaintiff’s registered design. The Plaintiff is entitled to the following

i. A Declaration that the Defendant has infringed the Plaintiff’s Industrial Design No. AP/D/00149

ii. An injunction restraining the Defendant whether by himself, his servants or agents or any of them or otherwise from howsoever from doing the following acts that is to say infringing the Plaintiff’s Industrial Design no. AP/D/00149 by using or causing same to be used to manufacture and import for marketing, distribution and sale in Ghana, air freshener and insect repellant products or any other products.

iii. An order directing the Registrar of this Court to take custody of all of the infringing goods kept in storage following this court’s order of 14^th April 2016.

iv. An order as to directions for the disposal of the said infringing goods by destruction.

Consequently, this Court orders the destruction of the goods currently held in storage by the Registrar in the presence of officials of the Accra Metropolitan Assembly (AMA) and the Environmental Protection Agency (EPA). All the expenses involved in this venture are to be borne by the Defendants. Now the court will turn its attention to the issue of whether or not the 2^nd Defendant imported 800 cartons or 1,400 cartons of the alleged infringing products into the country? It is the Plaintiff’s case that the Defendants have imported 1,400 cartons of the air fresheners which have its industrial design. In its Particulars the Plaintiff has deposed to the following:

(i) The Defendant trading as ANSUN TRADING ENTERPRISE, has prior to the commencement of this instant action, infringed on the Plaintiff’s Industrial Design by causing insect repellent/air fresheners to be manufactured in the Plaintiff’s said design, without the Plaintiff’s consent, and has imported a minimum of 1,400 cartons of the said product into Ghana.

(i) The Defendant trading as APPEB TRADING ENTERPRISE has, since January 27^th 2016 and without the Plaintiff’s consent, marketed, distributed and sold in Ghana, particularly Accra and Kumasi, the insect repellent/air freshener imported into Ghana by the Defendant trading as ANSUN TRADING ENTERPRISE.

The Defendants have admitted to the importation of 800 cartons. He who alleges must prove and therefore the onus lay on the Plaintiff to prove what it has asserted. Aside of the Plaintiff’s pleadings that 1,400 cartons had been imported into the country, the following information was also elicited from its representative in cross-examination on 17^th April 2018:

Q: Mr. Mirpuri, look at paragraph 23 of your witness statement, you claim that to the best of your knowledge the Defendants have imported not less than 1400 boxes of the product into the country.

A: Yes. My Lord. This information I obtained from the girls working with the Defendant because when I saw this product in the market, I immediately investigated to know who brought it in the country.

Q: What is the name of the girl who told you that the Defendant imported 1,400 boxes?

A: … I did not ask for her name because I was mainly concerned as to where this product was coming from.

Q: You know that the Defendant has also filed a witness statement in this case.

A: My Lord, I heard this from my Counsel but I have not seen it myself.

Q: So you don’t know how many cartons or boxes the Defendant imported into the country?

A: My Lord, I heard my Counsel saying it was 800 cartons that the Defendant says.

Q: Do you believe that figure?

A: No. My Lord.

Q: You know that the Defendant supported his claim with customs papers and invoices and packing list?

A: My Lord, I cannot say exactly how many quantities the Defendant declared at the port because it could also be possible that you have more quantity in the container and to declare less.

In the age old case of Mojolagbe v. Larbi and others (1959) GLR 190, the court had this to say:

“Where a party makes an averment capable of proof in some positive way e.g. by producing documents, description of things, reference to other facts, instances or circumstances and his averment is denied, he does not prove it by merely going into the witness box and repeating this averment on oath or having it repeated on oath by his witnesses. He proves it by producing other evidence of facts and circumstances from which the court can be satisfied that what he avers is true.”

The court continued by saying:

“Proof in law is the establishment of facts by proper legal means i.e. the establishment of an averment by admissible evidence. When a party makes an averment… he is unlikely to be held by the court to have sufficiently proved that averment by merely going into the witness box and repeating that averment on oath if he does not adduce that corroborative evidence which if his averment is true is bound to exist.”

The Plaintiff neither provided evidence of its assertion that more than 1,400 cartons had been imported into the country. He relied on information he said he had received from a girl who used to work with the Defendant. This girl was never called to give evidence. There is no corroboration of the Plaintiff’s assertion. In this wise, it would have been prudent to call the girl he had referred to as a material witness to testify. See the case of Owusu v. Tabiri (1987/88) GLR 287 where the Defendant claimed that the issue before the court was res judicata as it had been settled by a chief at a valid arbitration. The Plaintiff on the other hand argued that what took place before the chief was a negotiated settlement. The court held that since the onus of proof was on the Defendant who asserted that there was a valid arbitration, his failure to call the chief was fatal to his claim. Similarly, the onus was on the Plaintiff to lead evidence that would suggest that the Defendants had imported more goods than what they had admitted to.

In Ackah v. Pergah Transport Ltd (2010) SCGLR 728 @ 736 the court held:

It is a basic principle of the law on evidence that a party who bears the burden of proof is to produce the required evidence of the facts in issue that has the quality of credibility short of which his claim may fail. The method of producing evidence is varied and includes the testimonies of the party and material witnesses, admissible hearsay, documentary and things (often described as real evidence) without which the party might not succeed to establish the requisite degree of credibility concerning a fact in the mind of the court or tribunal of fact such as a jury. It is trite law that matters that are capable of proof must be proved by producing sufficient evidence so that on all the evidence a reasonable mind could conclude that the existence of the fact is more reasonable than its non-existence.

See also Section 12(1) of the Evidence Act which provides as follows:

Except as otherwise provided by law, the burden of persuasion requires proof by a preponderance of the probabilities.

Section 12(2):

Preponderance of the probabilities’ means that degree of certainty of belief in the mind of the tribunal of fact or the court by which it is convinced that the existence of a fact is more probable than its non-existence.

In Re Ashalley Botwe Lands: Adjetey Agbosu & Others v. Ebenezer Nikoi Kotey & Others (2003/2004) 1 SCGLR 420 @ 444 the court held as follows:

It is trite learning that by the statutory provisions of the Evidence Decree, 1975 (NRCD 323), the burden of producing evidence in any given case is not fixed but shifts from party to party at various stages of the trial depending on the issue(s) asserted or denied.

The Court speaking through Brobbey JSC@ 464-465, had this to say:

The effect of Sections 11(1) and 14 and similar sections in the Evidence Decree, 1975 may be described as follows: A litigant who is the Defendant in a civil case does not need to prove anything; the plaintiff who took the defendant to court has to prove what he claims he is entitled to from the defendant. At the same time if a court has to make a determination of a factor of an issue, and that determination depends on evaluation of facts and evidence, the defendant must realize that the determination cannot be made on nothing. If the defendant desires the determination to be made in his favour, then he has the duty to help his own cause by adducing before the court such facts or evidence that will induce the determination to be made in his favour.

A defendant need not prove anything but if he wanted a ruling to be in his favour, he needed to adduce that kind of evidence which would inure to his benefit. The Defendants have asserted that they imported 800 cartons of the goods complained of. Exhibits 6 F and 6 H which are an invoice and a packing list dated 3^rd December 2015 show that 800 cartons of Insect Repellant were dispatched to the 2^nd Defendant in Ghana from Guangzhou Dream Fine Chemical Co. Ltd in China. The Plaintiff on the other hand has only repeated his evidence as proof of his assertions. In the absence of any evidence to the contrary, the Court finds that it was 800 boxes and not 1,400 boxes of products which were imported by the 2^nd Defendant. If more than that was indeed imported, there is no evidence of this.

Whether or not the Plaintiff is entitled to its claims?

The Plaintiff has claimed an amount of GH¢121,079.26 as the total profit made out of the sale of 714 cartons of the insect repellant. In its Exhibit U, it has set out the figures of GH¢135,660.00 as the total sales revenue. From that sales revenue has been deducted the sum of the total cost of the repellant which has been put at GH¢14,580.00. When this figure is deducted from the total sale price of GH¢135,660.00 the Plaintiff arrives at the figure of GH¢121,079.26. From Exhibits 6G and 7, the court could however make a deduction of the profit margin.

The unit price for a carton of the goods was $42.60. When the unit price is multiplied by the quantity of 800 cartons, the total cost of the goods as per Exhibit 6G is $34,080.00. The sea freight of $2,250.00 was for 800 cartons of insect repellants and 1200 cartons of mosquito coils. When the freight pro rata is worked out, i.e. 2000÷800 multiplied by $2,250.00, the freight for the repellants would come to $900 making the total price of the goods worth $34,980.00. When this is divided by 800, each carton would cost $43.725.

The Defendant has calculated the cedi equivalent using the exchange rate of GH¢3.95 to $1.00 Exhibits Q1 and Q2 show that the product was retailed for GH¢190.00 per carton. The Defendant has put the cost price in cedis as being GH¢172.71. When the cost price is deducted from the actual sale price of GH¢190.00, the profit margin is GH¢17.29. The Plaintiff has provided evidence of how much the sale price of goods were in its Exhibits Q1 and Q2. The profit would be obtained by deducting the cost price from the sale price. Out of 800 cartons, the court has seized 86 cartons (see Exhibit 8). The sale price of 714 cartons at GH¢190 per carton equals GH¢135,660.00. But this figure does not translate into profits. The gross profit would be derived from multiplying the profit from each carton against the total number of cartons sold i.e. 714. (See Exhibit 7). When the cost price of 172.71 is multiplied by 714, a total of GH¢123,314.94 is derived. The gross profit would be the difference between these 2 figures i.e. GH¢135,660.00 and GH¢123,314.94 GH¢12,345.06. After deducting duties and transportation cost (amounting to GH¢4,600+GH¢266.00) the actual profit is calculated at GH¢7,479.06.

In the case of Fosua & Adu-Poku v. Dufie (deceased) and Adu-Poku Mensah (2009) SCGLR 316, the court held that Section 11(4) of the Evidence Act, 1975 NRCD 323 put the obligation in civil proceedings of producing evidence on a party to produce sufficient evidence so that on all the evidence, a reasonable mind could conclude that the existence of the fact was more probable than its non-existence. From the analysis made above, the figures quoted by the Defendants are more realistic than those quoted by the Plaintiff. The Plaintiff would be entitled to the amount of GH¢7,479.06 payable with interest at the prevailing commercial bank rate from 28^th February 2016 (since that is the date the Plaintiff had notice of Defendants’ infringing conduct) up to and inclusive of the date of final payment. The Plaintiff has also made a claim for costs incurred with regards to instant suit. In addition to the profits, it has claimed total direct costs involved and total costs incurred in protecting the infringed design. The Plaintiff was required in the circumstances to particularize and to prove its actual loss. These would come under the heading Special Damages. In the case of Delmas Agency Ghana Ltd v. Food Distributors International Ltd (2007/2008) SCGLR 748 the court had this to say:

Special damages are distinct from general damages. General damages are such as the law will presume to be the natural or probable consequence of the Defendant’s acts. It arises by inference of law and therefore need not be proved by evidence. The law implies general damage in every infringement of an absolute right. The catch is that only nominal damages are awarded. Where the Plaintiff has suffered a properly quantifiable loss, he must plead specifically his loss and prove it strictly. If he does not, he is not entitled to anything unless general damages are also appropriate.

In the case of Yamusah v. Mahama & Another, (1991) GLR 551, it was held that special damages were based on facts within the peculiar knowledge of the Plaintiff, so he must first plead them and then go on to prove them strictly in court and that these must not be too remote. See also the case of Andreas Bschor GMBH & Co v. B. W. C. Ltd (2008) 4 GMJ 203 where the court quoting from Stroms Bruks Aktie Bolag v. Hutchinson (1905) AC 515 @ 525-526 per Lord Macnaghten had this to say:

“Special Damages are such as the law will not infer from the nature of the act. They do not follow in ordinary course. They are exceptional in their character and therefore, they must be claimed specially and proved strictly.”

In Tema Oil Refinery v. African Automobile Ltd (2011) 2 SCGLR 907 @ 931 where the court quoting with approval Attorney General v. Faroe Atlantic Co Ltd (2005/2006) SCGLR 271 @290 stated:

‘Special Damages, on the other hand, are such a loss as the law will presume to be the consequence of the Defendant’s act, but depend at least, on the special circumstances of the case. They must therefore be explicitly claimed on the pleadings….”

The Plaintiff has particularized not in its pleadings but in its Exhibit T, the following sums it said it had expended in mounting this suit. These are as follows:

1. Baybay Trademark Search Conducted at Registrar-General’s Department GH¢417.00. US$ 100 (Receipt dated 2^nd February 2016)

2. Registration Enquiry on ANSUN ENTERPISE at Registrar-General’s Department GH¢25.00 (Receipt dated 2^nd February 2016)

3. Registration Enquiry on APPEB ENTERPRISE at Registrar-General’s Department

6. Security Fees/Watchman fees (night security) GH¢3,200 (May 2016 – December 2016) (8 months @ 400 per month)

         9. Transportation of 86 cartons of seized goods

Did the Plaintiff make the above expenditure as it claims? The burden of producing evidence of a particular fact is initially on the party with the burden of persuasion as to that fact (See Section 17(2) of the Evidence Act). This burden continues to shift depending on the nature of evidence adduced by the parties and their witnesses.

The Plaintiff did not tender in evidence receipts indicating the amounts that it had actually expended. In some instances, reference was made to receipts but alas, no such receipt was tendered in evidence. In Zabrama v. Segbedzi (1991) 2 GLR 221, the court held that the correct proposition of the law was that a person who makes an assertion or averment which is denied by his opponent has the burden to establish that his averment or assertion is true. He does not discharge this burden unless he leads admissible and credible evidence from which the fact(s) he asserts can properly and safely be inferred. This position was re-affirmed in the case of Continental Plastics Ltd v. IMC Industries (2009) SCGLR 298 @ 306-307. In the case of Dzaisu v. Ghana Breweries Ltd (2007/2008) SCGLR 539 it was held that a bare assertion of a party of his pleadings in the witness box without proof did not shift the evidential burden onto the other party. One is also reminded of Blay J.S.C. in Chahin & Sons v. Epope Printing Press [1963] 1 G.L.R. 163 at 168, S.C. when he said:

“They (i.e. the plaintiffs-respondents), merely presented a list of articles they alleged they had lost, fixed prices to them, and without attempting in any way to prove their values, expected the court to award them damages to the tune of the amounts claimed”.

There was no attempt by the Plaintiff to lead evidence to show how they arrived at these figures. In Botchway v SIC (1993/94) 1 GLR 89 the court held that it was seriously handicapped in evaluating the damage done and financial loss suffered by the Plaintiff as no evidence was led to establish same. This court is similarly handicapped due to the non-existence of evidence. The Plaintiff was required to plead, particularize and prove its claims in special damages. In the case of Okudzeto Ablakwa (No. 2) vs. Attorney General & Another [2012] 2 SCGLR 845 the court held at p. 867 that:

“If a person goes to court to make an allegation, the onus is on him to lead evidence to prove that allegation, unless the allegation is admitted. If he fails to do that, the ruling on that allegation will go against him. Stated more explicitly, a party cannot win a case in court if the case is based on an allegation which he fails to prove or establish. This rule is further buttressed by section 17 (b) which, emphasizes on the party on whom lies the duty to start leading evidence…”

The court has not seen proof of Plaintiff’s claims for the colossal amounts it has endorsed on its writ and therefore refuses to grant same.

The Plaintiff has also listed the following which it has labeled as: The total costs incurred in protecting the infringed design. These are as follows:

                        DESCRIPTION                                                  AMOUNT                                      REMARKS

Plaintiff in its particulars of claim has stated in paragraph 5(ii):

The Defendant trading as APPEB TRADING ENTERPRISE has, since January 27^th 2016 and without the Plaintiff’s consent, marketed, distributed and sold in Ghana, particularly Accra and Kumasi, the said insect repellant/air fresheners imported into Ghana by the Defendant trading as ANSUN TRADING ENTERPRISE.

So if the Defendant commenced its marketing, distribution and sale in Ghana in January 2016, why would a claim be made by the Plaintiff for past expenses which predated the Defendants’ infringing conduct? Why should the Defendants be made to pay for retrospective expenses? The court will not award this figure captioned total costs incurred in protecting the infringed design. The Plaintiff was required to establish its case on a preponderance of probabilities. See Sections 10(1), 11(1) and 11(4) of the Evidence Act, 1975 NRCD 323.

Section 10(1)

For the purposes of this Act, the burden of persuasion means the obligation of a party to establish a requisite degree of belief concerning a fact in the mind of the tribunal of fact or the court.

Section 11(1)

For the purposes of this Act, the burden of producing evidence means the obligation of a party to introduce sufficient evidence to avoid a ruling against him on the issue.

Section 11(4)

In other circumstances the burden of producing evidence requires a party to produce sufficient evidence so that on all the evidence a reasonable mind could conclude that the existence of the fact was more probable than its non-existence.

The rules of evidence required the parties to make out their claims on a balance of probabilities. In the case of Takoradi Flour Mills v. Samir Faris (2005/2006) SCGLR 882 at 900 the court said:

in assessing the balance of probabilities, all the evidence, be it that of the Plaintiff or the Defendant must be considered and the party in whose favour the balance tilts is the person whose case is the more probable of the rival versions and is deserving of a favourable verdict.

The court finds that the total profit made by the Defendants in embarking on this venture that has landed them in court to be GH¢7,479.06. That is the figure the Plaintiff is entitled to recover from the Defendants payable with interest from 28^th February 2016 up to and inclusive of the day of final payment since that is the date at which the Plaintiff had notice of Defendants’ infringing conduct. The court finds also that the Defendants did infringe the Plaintiff’s registered industrial design. The Plaintiff is entitled to an award in damages for this infringement. Though the Plaintiff did not plead, particularize and prove special damages, it has proven infringing conduct on the Defendants’ part which would entitle it to general damages. In the case of Yungdon Industries Ltd v. Roro Service (2005/2006) SCGLR 816 the court held that general damages was such as the law would presume to be the natural or probable consequence of the Defendant’s act. It would arise by inference of law and therefore be unnecessary to be proved by evidence and might be averred generally. See also Delmas Agency Ghana Ltd v. Food Distributors International Ltd (2007/2008) SCGLR 748, where the court held that general damages is such as the law would presume to be the natural and probable consequence of the Defendant’s act. It arises by inference of law and therefore need not be proved by evidence. The law implies general damages in every infringement of an absolute right. The catch is that only nominal damages are awarded.

Furthermore, it is provided for in Order 63 r. 8 subrules (1) and (2) of the High Court Civil Procedure Rules 2004 (CI 47) thus:

1. Where in an action for actual or threatened infringement of an intellectual property right the infringement is proved, the Court may order the party responsible for the infringement to pay to the rights holder damages which are adequate to compensate for the injury, the right holder has suffered.

2. The Court may in addition to awarding damages under subrule (1), order a person whom it has found to have infringed the property right of a right holder to pay the costs of the right holder.

An award in the sum of GH¢60,000.00 is made against the Defendants for their infringing conduct. Costs follow the event and are at the discretion of the court. In addition to the provision in Order 63 r 8(2), it is also provided for in Order 74 r. 2(3), 2(4) and 2(5) of the High Court Civil Procedure Rules, 2004 CI 47 thus:

(3) Without prejudice to the powers and discretion of the Court, an award of cost shall ordinarily be designed to

(a) compensate for expenses reasonably incurred and court fees paid by the party in whose favour the award is made and

(b) provide reasonable remuneration for the lawyer of that party in respect of work done by the lawyer.

(4) In assessing the amount of costs to be awarded to any party, the Court may have regard to

(a) the amount of expenses, including travel expenses, reasonably incurred by that party or that party's lawyer or both in relation to the proceedings;

(b) the amount of court fees paid by that party or that party's lawyer in relation to the proceedings;

(c) the length and complexity of the proceedings;

(d) the conduct of the parties and their lawyers during the proceedings: and

(e) any previous order as to costs made in the proceedings.

(5) When the Court adjudges or orders any costs to be paid, the amount of the costs shall, if practicable, be summarily determined by the Court at the time of making the judgment or order, and shall be stated in the order.

It is in this Court’s view that the Defendants would have been best served by taking advantage of the pre-trial mediation session to settle this matter. Instead they decided to battle it out in court. It is not for nothing that the good book puts the benefits of alternative dispute resolution neatly in Matthew 5:25-26 (King James Version) thus:

25. Agree with thine adversary quickly while thou art in the way with him; lest at any time the adversary deliver thee to the Judge, and the Judge deliver thee to the officer, and though be cast into prison.

26. Verily I say unto thee, Thou shalt by no means come out thence, till thou hast paid the uttermost farthing.

By defending this suit, the Defendants had sown the seed and were bound to reap the harvest bitter though it may be. Having considered all the factors listed in Order 74 of CI 47, costs of GH¢20,000.00 is awarded against Defendants. In sum, the Plaintiff is entitled to GH¢7,479.06 together with interest from 28^th February 2016, up to and inclusive of the date of final payment. The Plaintiff is also entitled to GH¢60,000.00 in general damages and an additional GH¢20,000.00 in costs.

(SGD)

JENNIFER A. DODOO

JUSTICE OF THE HIGH COURT