• IN THE SUPERIOR COURT OF JUDICATURE
  IN THE HIGH COURT (GENERAL JURISDICTION DIVISION, COURT 6)
  ACCRA - A.D 2016
  

E-VOLUTION INTERNATIONAL - (Plaintiff)

vs.

SPYDER LEE ENTERTAINMENT AND THE REGISTRAR – GENERAL - (Defendant)

JUDGMENT

---

Introduction:

[1] In this case, the Plaintiff seeks injunctive and declaratory reliefs, as well as Costs. At its root, the action arises from a dispute between the Plaintiff and the 1st Defendant, in respect of the use of the name “People’s/Peoples Choice Awards”. The Plaintiff seeks a declaration that it is the rightful and the bona fide owner/registrant under the Trade Mark Act of 2004 (Act 664) and that the 1st Defendant has no rights to the use of the name as against the Plaintiff.

 

[2] By its writ of summons the Plaintiff Company claims against the Defendants the following reliefs:

a. A declaration that the Plaintiff is the bona fide owner of the name “Peoples Choice Awards” as a registered trade mark.

b. A declaration that the registration of “People’s Choice Awards” as a business name in favour of the 1st Defendant is likely to be confused by the public with the registered trade mark of the Plaintiff Company.

c. A declaration that the series of advertisements of the name “Peoples Choice Awards” run at the instance of the 1st Defendant is an infringement of the Plaintiff’s proprietary rights in the said name as a trademark.

d. An order directed at the 2nd Defendant to remove and delete the name “People’s Choice Awards” from its records in favour of the 1st Defendant and a consequential order restraining the 2nd Defendant from registering the said name in favour of any other person or entity.

e. An order directed at the 1st Defendant to cease and desist forthwith from further publication, announcement or advertisements of the said programme or any preparation aimed at its organization or performance.

f. A perpetual injunction restraining the Defendants from interfering with the Plaintiff's proprietary interest in the name “Peoples Choice Awards”.

g. Costs inclusive legal expenses.

 

[3] After the service of the writ and its accompanying statement of claim on the Defendants, appearances were entered after which statements of defence were filed by the Defendants. The 1st Defendant in particular counterclaimed against the Plaintiff for:

i. A declaration that the name People’s Choice Awards is a Registered Business Name of the 1st Defendant.

ii. A declaration that Plaintiff is not the bona fide owner of the Name People’s Choice Awards as it was registered as a trademark after 1st Defendant had registered same as a business name.

iii. An order directed at Plaintiff to desist forthwith from using the name People’s Choice Awards as a trademark.

iv. General Damages for the humiliation caused 1st Defendant by this action,

v. Costs

 

Background Facts:

[4] The Statement of Claim alleges that on February 4, 2011 the Plaintiff Company applied to the 2nd Defendant for the registration of the name “Peoples Choice Awards” with its related mark or logo as a trademark in accordance with the Trademarks Act of 2004 (Act 664). The Plaintiff claims that the name and the related mark was accepted and duly registered in the register of trademarks by the 2nd Defendant and a certificate evidencing the registration was issued dated December 22, 2014.

 

[5] In May 2012, the 1st Defendant applied to register the name “People’s Choice Awards” as a business name in accordance with the Registration of Business Names Act 1962 (Act 151). The record shows that the 2nd Defendant issued a certificate dated June 26, 2012 in favour of the 1st Defendant in the name supra in accordance with Act 151.

 

The Dispute

[6] According to the Plaintiff in November 2014 its officers observed that the 1st Defendant was running series of advertisement to announce a programme dubbed “People’s Choice Awards” and the 1st Defendant requested the public to participate in the selection of deserving personalities for awards for their excellence and meritorious services in various fields of endeavour. The Plaintiff claims that in January 2015 it contacted the 1st Defendant to complain about the use of the name as infringing on its trademark and requested it to desist from the use of the name. The 1st Defendant refused to stop and denied the Plaintiff’s claim on the grounds that it had equally registered the name in favour of its company. The 1^st Defendant asserts that under the law it is rather the 1^st Defendant that has power to use the name in question. The Plaintiff therefore sued seeking the reliefs endorsed on its writ of summons against the Defendants.

 

[7] The Plaintiff issued the writ of summons together with an application for interlocutory injunction to restrain the 1st Defendant from the use of the name, the subject matter of the dispute. The 1st Defendant filed its statement of defence together with an affidavit in opposition to the injunction. The Court differently constituted on February 26, 2015 injuncted both parties until the final determination of the suit.

 

[8] The court agreed with both counsel and further ordered at the application for directions stage on July 2, 2015 when both counsel agreed that the matter be set down and the issues be determined by legal arguments in accordance with Order 33 of the Rules of the High Court since the issues raised are largely legal. The Court also ordered the parties to file written legal submissions on the issues for the expeditious determination of the matter. Whilst the 1st Defendant filed its written legal submission on November 12, 2015 the Plaintiff only filed same on June 9, 2016.

 

Issues for Trial:

[9] At the close of pleadings and at the application for directions stage, the following issues were set down for trial viz:

a. Whether or not the 1st Defendant lawfully registered the name “People’s Choice Awards” as a business name under the Registration of Business Names Act, 1962 (Act 151) prior to the registration of the name as a trademark by the Plaintiff.

b. Whether or not the 1st Defendant or alternatively the Plaintiff has the exclusive right to the use of “the Peoples Choice Awards” having regards to the registration of same as a business name by the 1st Defendant.

c. Whether or not the Plaintiff is entitled to any of its reliefs or at all.

d. Whether or not the 1st Defendant is entitled to any of its reliefs set out in its counterclaim or at all.

 

Plaintiffs’ Case:

[10] The Plaintiff concedes that the centre piece of the litigation are two pieces of legislation, the Trade Marks Act, 2004 (Act 664) and the Registration of Business Names Act, 1962 (Act 151).

 

[11] The Plaintiff contends that having submitted its application in February 2011 and same having been acknowledged by the 2nd Defendant, even though the final certificate was issued in December 2014 the intervening period of three years ought to be presumed to have been used by the 2nd Defendant to conduct its own searches and investigation and therefore per Section 35 of Act 664 the application ought to be deemed as a prima facie evidence of the validity of the original registration of the trade mark.

 

[12] The Plaintiff further concedes that the 1st Defendant successfully and lawfully registered the name, the subject matter of the dispute under Act 151 but contends that it was as a result of the negligence of the officers of the Registrar-General Department. The basis of the argument is that in May 2012, when the 1st Defendant submitted its application for registration, the Plaintiff’s application for registration under Act 664 was already pending and a diligent search would have revealed same for the application to be refused. Having exposed the negligence of the 2nd Defendant therefore, it is the case of the Plaintiff that the 1st Defendant’s registration ought to be deleted pursuant to Section 19 of Act 664 because the names are the same and also the registration under the Trade Marks Act should be protected ahead of Act 151.

 

[13] Further, it is the contention of the Plaintiff that pursuant to Section 6 (7) of Act 664, the Plaintiff’s by its prior application must be deemed to have registered the name Peoples Choice Awards ahead of the 1st Defendant. Plaintiff has further submitted that whilst Section 1 of Act 664 defines a trade mark as any sign or combination of signs which is capable of distinguishing the goods or services of one undertaking from another’s goods and services including names, letters, numerals etc, Act 151 defines a ‘Business Name’ as a name or style under which any business is carried on whether in partnership or otherwise. According to the Plaintiff therefore whilst a trade mark identifies goods and services, a registered business name does not. Further, the Plaintiff has submitted that because the protection afforded a registrant overrides a business name registration, it takes longer to register than a business name and Act 664 itself provides that a trade name cannot be registered as a trade mark and therefore having submitted its application at the time there was no registered trade name or business name, it has an exclusive right to the use of the name and ought to be protected.

 

[14] Based on all of the above, the Plaintiff contends that it is entitled to all of the reliefs endorsed on the writ and therefore implores the Court to grant them and dismiss the Defendant’s counterclaim.

 

Defendant’s Case:

[15] The 1st Defendant on the other hand contends that the Plaintiff is not entitled to its claim and urges on the Court to dismiss same and grants the 1st Defendant’s counterclaim. According to the 1st Defendant, being desirous of organizing an awards scheme it registered its Business Name in May 2012 as required under Act 151 and was issued with a certificate by the 2nd Defendant in June 2012. The 1st Defendant therefore claims that with the registration, it is entitled to use the name exclusively without infringing on the Plaintiff’s or any other person’s right. The 1st Defendant refers to Section 5 of the Trade Marks Act, 2004 Act 664 and submits that at the time the Plaintiff was issued with its registration certificate under the said Act, its registration under Act 151 was already in existence and therefore in accordance with Section 5 of Act 664, the onus was on the Plaintiff to ensure that the trademark and the trade name are not confusing. According to the 1st Defendant, the Plaintiff failed to discharge that onus and therefore it has the sole right of the usage of the name in dispute.

 

[16] The 1st Defendant further posited that issues relating to business names are regulated by Act 151 which defines a business name as the name and style under which a business is carried on whether in partnership or otherwise and submitted that having taken the step to register the business name before the Plaintiff was issued with a certificate of registration under Act 664, it has the exclusive use of the name. Counsel relied on the case of Barclays Bank Ghana Limited v. Lartey & others [1978] GLR 282-289 and the dictum of Edward Wiredu J, (as he then was) for the submission.

 

[17] Further, the 1st Defendant has submitted that based on the principles of Equity, the 1st Defendant is entitled to the exclusive use of the name “The People’s Choice Awards” based on the maxim “Between equities the first in order of time shall prevail”. The 1st Defendant’s counsel submitted that when two parties each have a right to possess something, the one who acquired its interest first should prevail. It therefore reiterated that because it acquired its Registration Certificate under Act 151 in June 2012 and the Plaintiff acquired its final Registration Certificate under Act 664 in December 2014, the 1st Defendant’s certificate of registration should take priority over the Plaintiff which was issued late in time because its legal right was created before the Plaintiff.

 

[18] Finally, the 1st Defendant submitted that the Plaintiff is not entitled to its reliefs because at the time the 1st Defendant applied and was issued with the Certificate of registration under Act 151, it was not in a position to foresee that the Plaintiff shall be granted a certificate of registration under Act 664 because the application was only pending. According to the 1st Defendant having registered the business name under Act 151, choosing to register a trademark is always optional because the business name is the identity of every business and it is one of its valuable assets because it is the official name under which a business entity conducts its business. The 1st Defendant therefore prays the Court to dismiss the Plaintiff’s claim and grants judgment in favour of the 1st Defendant against the Plaintiff “based on principles of equity, fairness and justice” because it lawfully registered the name People’s Choice Awards prior to the trademark registration of the Plaintiff.

 

Analysis & Opinion of the Court:

[19] Deborah E. Bouchoux in her book ‘The Law of Trademarks, Copyrights, Patents, and Trade Secrets” states “a trademark or service mark is a word, name, symbol, or device used to indicate the source, quality, and ownership of a product or service…A trademark or service mark identifies and distinguishes the products or services of one person from those of another”[1].

 

[20] In the Canadian case of Year 2000 Inc. v. Brisson, 1998 CanLII 14786 (ON SC Hoilett J stated the rule that a trademark creates certain rights and protections for registrants of the trademark. It further states that a trademark validly registered, vests in the registrant, the exclusive right to use that trademark and therefore if an unauthorized person employs that trademark to sell, distribute or advertise wares with a confusing trademark or name an infringement occurs under the enabling act, Trade-Marks Act, RSC 1985, C T-13.

 

[21] In our own jurisprudence The Trade Marks Act, 2004 (Act 664) is the applicable statute and it affords protection to registrants. The Plaintiff’s action is premised on the protection given by Act 664. I shall revisit the issue and discuss it in detail when I come to consider the main issue set out.

 

[22] It is noted that although as many as four issues were set down for determination, in the opinion of the court the crucial one which is central to the determination of the dispute between the parties is Issue b. The other issues would be determined after the germane one is resolved although Counsel have submitted on all of them. For, the law is that only those issues which are germane to the determination of a case are those which call for determination by the Court. The trial court is not required to make findings of fact in respect of irrelevant matters on which the parties had led evidence when such findings would not assist in the determination of the issues in the case. See:

 

DOMFE v ADU (1984-86) 1 GLR 653 C/A.

[23] I now proceed to answer the question posed supra as to whether or not the 1st Defendant or alternatively the Plaintiff has the exclusive right to the use of “Peoples/People’s Choice Awards”, having regard to the registration of same as a business name by the 1st Defendant. This issue calls for the examination of what the two Acts stand for and their purposes. Indeed both Acts define their raison d’etre. I shall therefore consider the instant case in the context of the meaning and the purpose of both Acts and evaluate the applicability of both statutes to this dispute.

 

[24] The Registration of Business Names Act, 1962 (ACT 151) Section 1(1) states that:

(1) Subject to the provisions of subsection (2) of this section, there shall be registered in accordance with the provisions of this Act the following persons, that is to say,

(a) every individual having a place of business in Ghana who,

(i) carries on business under a business name which does not consist of his true surname without any addition other than his true first names or the initials thereof; or

(ii) has either before or after the commencement of this Act changed his name, except in the case of a woman in consequence of marriage;

(b) every company carrying on business in Ghana under a business name which does not consist of its corporate name without any addition.

 

[25] Section 2 titled —Manner and Particulars of Registration also states:

 

Every person required under this Act to be registered, shall furnish to the Registrar at his office a statement in writing in the prescribed form containing the following particulars, that is to say,

(a) the business name;

(b) the general nature of the business;

(c) the principal place of the business;

(d) all other places at which the business is carried on;

(e) where the registration to be effected is that of an individual,

(i) his present first name and surname;

(ii) his nationality and, if that nationality is not the nationality of origin, his nationality of origin;

(iii) his usual residence and other business occupation, if any; and

(iv) whether he is under the age of twenty-one years at the date of furnishing the statement and, if so, his date of birth;

(f) where the registration to be effected is that of a company, its corporate name and registered office;

(g) the date of the commencement of the business

 

Section 17, the Interpretation section states "business name" means the name or style under which any business is carried on whether in partnership or otherwise.

 

[26] The Trademark Act, 2004 supra on the other hand at Section 1 defines a trade mark as:

Trade mark means any sign or combination of signs capable of distinguishing the goods or services of one undertaking from the goods or services of other undertakings including words such as personal names, letters, numerals and figurative elements.

 

[27] Section 3 of the Act titled Registration of Trademark provides that:

Registration of a trade mark by any person confers an exclusive right to the use of the trade mark on the person.

 

The exclusivity clause provided to a registrant in Section 3 above is affirmed by Section 9 which further gives a registrant or an owner the right to prevent the use of a similar trademark. Section 9(1) to (4) provides that:

 

Section 9—Rights Conferred by Registration.

(1) A person other than a registered owner of a trade mark shall not use the mark in relation to any goods or services for which the trade mark was registered without the agreement of the owner.

(2)The registered owner may institute court action against any person who infringes a registered trade mark by

(a) using a registered mark without permission; or

(b) performing acts which make it likely that infringement may occur.

(3) No person shall knowingly infringe the rights of the owner of a registered trade mark by using a trade mark in relation to goods or services for which the trade mark was registered without the consent of the owner.

(4) The right of the registered owner under this section shall, in addition to any other remedies, extend to the use of a sign similar to the registered trade mark and use in relation to goods or services similar to those for which the mark has been registered where confusion may arise in the public.

 

[28] Further, Act 664 clothes a trademark registrant or an owner with statutory protection and support in a legal proceeding such as in the instant suit. Section 35 of Act 664 titled ‘Registration to be prima facie Evidence of Validity’ enacts that:

In legal proceedings relating to a registered trade mark including applications under section 20 of this Act, the fact that a person is registered as owner of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of subsequent assignments and transmission of the trade mark.

 

[29] As the Supreme Court explained in Customs, Excise & Preventive Service vs. National Labour Commission & Attorney General [2009] SCGLR 530 in interpreting a statute one may consider the preamble or the long title to that Act. In this case whereas Act 151 preamble states “An Act to consolidate with amendments the law relating to the registration of business names”, Act 664 provides “An Act to provide for the protection of trademarks and for related matters”. Undoubtedly, whilst the preamble of Act 664 lends credence to the fact that the protection of a trademark owner is paramount, that of Act 151 emphasize on registration as the cornerstone.

 

[30] In my opinion, it is clear from the above statutes and the definitions that whereas a business name is simply that, a name, a means to identify a business or an individual and a trading name which does not provide the owner with proprietary rights to that name, a trademark is a property, similar to any other tangible property and it identifies a product or a service, distinguishing it from other similar products or services. Also, the owner has the exclusive right to use the trade mark for the goods and/or services for which it is registered and can prevent another individual from using it. Therefore, a trademark’s purpose and ambit is broader in scope and outreach than a registered business name.

 

[31] On the issue of exclusive use, it has been strongly submitted on behalf of the 1st Defendant that under Act 151 and the authority of the case of Barclays Bank Ghana Limited v. Lartey & others Supra the 1st Defendant has exclusive use of the name, the subject matter of the dispute. It is true that His Lordship, Wiredu J (as he then was) opined that a registration under Act 151protects exclusive use and the rights of the person registering the business name, in the opinion of this court being a Court of co-ordinate jurisdiction, I wish to disagree because that legal proposition is not backed by any provision of Act 151. There is no section cited in Act 151 which clothes a registered business name owner with exclusive use. If the Act does not provide for exclusive use, I do not think that a judicial pronouncement shall suffice in my respectful opinion. In the opinion of the court, if the Legislature intended that the registrants of business names be clothed with exclusivity after registration it would have expressly stated so. On the contrary, and as stated above, Act 664 Section 3 confers exclusive right of use on the owner of a trademark and same was judicially pronounced upon in the unreported case of Fimadex S.A., & Anor Vrs. S.D.T.M.C.I & Anor, Suit No. TIPR/1/2011 delivered on March 28, 2014 by Her Ladyship, Getrude Torkornoo JA, sitting as an additional High Court Judge.

 

[32] It has further been submitted by learned Counsel for the 1st Defendant that based on the principles of equity, the 1st Defendant is entitled to exclusive right to use the name, ‘The Peoples Choice Awards’ based on the maxim between equities the first in order of time shall prevail. According to Counsel the 1st Defendant registered and obtained its certificate in June 2012 whilst the Plaintiff obtained its certificate in December 2014 and therefore having acquired its interest first, it should have the exclusive right of use.

 

[33] In the considered opinion of this court this matter is not a case based on the principles of equity and the maxim relied upon is not applicable, with the utmost deference of Counsel. This is a case based on two statutes one of which is clearly superior and protects creativity, innovation, goods and services and the other a registered name and identity of a business or an individual. Also, whereas a registered trademark is renewable every ten years, a registered business name is renewable annually. See Section 11 of Act 664 and Section 5A of Act 151.

 

[34] Again in respect of which registration was first in time, it is instructive that by the attached respective certificates filed as Exhibit “A” and “C” by the Plaintiff for the interlocutory injunction and agreed by the parties as part of the proceedings, the 1st Defendant’s contention that it’s registration preceded that of the Plaintiff is not accurate. This is because even though the certificate issued to the Plaintiff was signed on December 22, 2014, the certificate itself reads “The Trade Mark shown below has been registered in the Register as of February 4, 2011 in the name of E-VOLUTION INTERNATIONAL LIMITED…” This fact was admitted by the 2nd Defendant in its statement of Defence filed on March 5, 2015 paragraph 2 which is on the docket and also forms part of this proceeding.

 

[35] It comes in the end, I think, to no more than this, that where a person or entity adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept to some degree small differences in name to avert confusion in the minds of the public. But as in this case, the service advertised to be rendered pursuant to the registration of the business name which is the same as the Plaintiff’s trademark allowing same would undoubtedly create confusion in the minds of the public. I am of the view therefore based on the meaning and purpose of the two statutes that the Plaintiff has met its burden of showing that there is the greater likelihood of confusion between its trademark and the registration of the business name of the 1st Defendant. In my view, the ordinary person, or rather the average Ghanaian on the street of Accra New Town, shall be confused by the 1st Defendant’s name if allowed to maintain same and also use same to organize awards and thus made to believe that the Plaintiff service(s) rendered are those of the 1st Defendant.

 

Disposition:

[36] Consequently, based on all of the above and applying the two statutes to the instant dispute, I find and hold that even though the 1st Defendant lawfully registered the name “People’s Choice Awards” as a business name under Act 151, prior to that registration of the name which in the opinion of the Court is the same except the use of the apostrophe, the Plaintiff had already registered same as a trade mark under the Trade Mark Act, Act 664. For this reason, I resolve the central issue set out above in favour of the Plaintiff. I am satisfied that the Plaintiff has been able to prove its case and on the preponderance of probabilities, is entitled to judgment.

 

[37] Having regard to the conclusion I have come to, I enter judgment for the Plaintiff. In the result the court will dismiss the 1st Defendant’s counterclaim and grant all the claims endorsed by the Plaintiff on its writ of summons.

 

[38] I cannot conclude this Judgment without commenting on the unenviable role the 2nd Defendant, the Registrar –General played which has led to this costly litigation between the Plaintiff and the 1st Defendant. I dare say that this was an avoidable litigation had officers working at the 2nd Defendant and given the job of registering business names and trademark worked efficiently and effectively. It is unacceptable that a public body required to make determinations affecting individuals and business’ interest would operate in the way the 2nd Defendant’s did in this matter. As I understand it, it is the same body which received the Plaintiff’s application under the Trademark Act, Act 664 and sent an acknowledgment letter that it was in process. And it was also the same institution which a year after received and registered the name People’s Choice Awards as a Business name for the 1st Defendant, at the time the same name was deemed registered as a Trademark for the Plaintiff until proven otherwise. The question is, what verification and security regimes are in place to avoid such palpable errors? Clearly, a time has come for people working for the public to be more responsible in order to avoid such costly litigation, in which they have always been seen as nominal defendants. The work of those responsible for these two registrations’ leaves much to be desired and as Officers of the public service they failed to acquit themselves as true ambassadors. Ghanaians deserve better.

 

[39] Plaintiff asks for GH₵10,000 cost against the 1st Defendant on the grounds that after they protested and the parties were injuncted they found a way to nevertheless organize the awards. 1st Defendant denies the Plaintiff allegation and submits that the name was not used for the awards. Counsel offers GH₵1,000. The Court awards costs of GH₵5,000.00 in favour of the Plaintiff against the 1st Defendant.