ACCRA - A.D 2016
GEORGINA ACHIAA - (Plaintiff/Respondent)
DON EMILIO COMPANY LIMITED - (Defendant/Appellant)

DATE:  14TH APRIL, 2016
CIVIL APPEAL NO:  H1/143/2015


By an amended writ of summons accompanied by a Statement of Claim, the Plaintiff, a business woman trading under the name and style of Supergeona Enterprises claimed against the Defendant for the following reliefs:-

“(i) A declaration that the Plaintiff is the sole accredited representative of Mast-Jagermeister AG and a distributor of Jagermeister drink in Ghana.

(ii) A declaration that the acts of the Defendant as set out in the Statement of Claim amounts to acts of unfair competition within the meaning ascribed to the term in the Protection Against Unfair Competition Act (2000), Act 589.

(iii) An order from the Court restraining the Defendant from importation, sale and distribution of the said drink in Ghana without reference to her.

 (iv) General damages.”


The Plaintiff claims that she is a businesswoman trading under the name and style of Supergeona Enterprises. By a letter dated 10th January, 2002, she was appointed the sole agent in Ghana for the sale of the alcoholic beverage, herb liqueur Jagermeister by Mast-Jagermeister AG of Germany, the manufacturers of the product. The said Mast-Jagermeister AG has duly registered in Ghana, the trademark ‘Jagermeister’ in respect of the said alcoholic beverage herb liqueur.


By, a power of Attorney dated 23rd September, 2005 she was appointed by Mast-Jagermeister AG their lawful attorney in Ghana to do amongst others, represent their company and products before the Food and Drugs Board. Pursuant to the said power of attorney, she duly registered on behalf of Mast-Jagermeister AG the said herb liqueur with the Foods and Drugs Board. Since 1996 and prior to her appointment as the sole agent, she has been distributing the said herb liqueur in Ghana and has nurtured the subject matter in Ghana and popularized its patronage through advertisements and promotions over the years. It came to her attention that the Defendant, a Limited Liability Company who engages in the sale of alcoholic beverages, without any reference to her as the sole agent of Mast-Jagermeister AG in respect of the said herb liqueur, have been importing from other sources other than Mast-Jagermeister AG of Germany the herb liqueur and distributing same. The Defendant when confronted by the Plaintiff apologized and gave an undertaking before the Food and Drugs Board never to repeat its unlawful act.


After the apology, the Defendant placed orders with her for the purchase for distribution, quantities of the said herb liqueur. However, notwithstanding the Defendant’s apology, and notwithstanding the fact that the Defendant had duly acknowledged her as the sole agent for the herb liqueur, the Defendant continues to import and distribute the said herb liqueur without reference to her. The Plaintiff contended that the Defendant’s action constitutes an act of Unfair Competition within the meaning of the term Unfair Competition as contained in the Protection Against Unfair Competition Act 2000, (Act 589).


The Plaintiff claimed further that by virtue of her appointment as a sole agent, she is required to and has incurred considerable expense in advertising and promoting the product in Ghana and the Defendant by its act of Unfair Competition, is benefitting from the goodwill built up by the Plaintiff to her detriment. Hence the issuance of the writ.


The Defendant per its second amended Statement of Defence filed on 11th July, 2013 denied that the Defendant is precluded by the Power of Attorney granted the Plaintiff by Mast-Jagermeister AG and the Sole Agency Agreement between the Plaintiff and the Manufacturer-Company from importing and selling the Jagermeister herb liqueur in Ghana. The Defendant contended that as third party to the agency agreement they were not bound by the terms or conditions contained therein. The Defendant contended further that, since there was no Non-circumventive and Trade Agreement between the Plaintiff and the Defendant so as to preclude the Defendant from importing and selling the disputed drink, the latter could import and sell same.


The Defendant claimed that it had lawfully and legitimately been importing the said liqueur into the country from Helia Company Limited, their suppliers in Germany, for over 8 years. The Defendant added that the said Helia Company Limited has been lawfully and legally authorized by Mast-Jagermeister to supply the disputed drink to anybody including the Defendant without restriction.


With respect to the registration of the product by the Plaintiff at the Food and Drugs Board, the Defendant averred that the registration did not confer on any registered party the sole agency rights in the product registered but the registration was to certify that the product was safe for consumption.


The Defendant denied acknowledging the Plaintiff as the sole agent of the product and though admitted that they purchased quantities of the disputed drinks from the Plaintiff averred that its decision was anything but voluntary as it was done under duress from a certain representative of the Food and Drugs Board. The Defendant contended that its conduct in respect of importing and distributing the drink was consistent with honest commercial dealings and practices and therefore did not violate any provision of the Protection Against Unfair Competition Act 2000 (Act 589).


After a full trial, the High Court on 13th October, 2014 entered judgment in favour of the Plaintiff for all the reliefs endorsed in the Writ of Summons. The Court, perpetually restrained the Defendant whether by itself, directors, officers, howsoever and by whomsoever from importing, distributing, selling or by any means dealing in the Jagermeister Herb drink without the consent of the Plaintiff the exclusive importer, distributer and dealer in the said product in Ghana. The High Court further awarded general damages in favour of the Plaintiff in the sum of (Gh75,000.00) and costs of (Gh10,000.00).


By a Notice of Appeal filed on 4th November, 2014, the Defendant’s appealed on the omnibus ground that:


“(i) Judgment is against the weight of the evidence adduced before the trial Court”.


The Defendant reserved a right to file further and other grounds upon receipt of the proceedings. Thus on 17th November 2014, the Defendant filed the following additional grounds of appeal:-


“1. The Learned Judge erred when he misconstrued Exhibit ‘B’ by holding that the said exhibit precluded the Defendant Defendant from importing and distributing the Jagermeister drink in Ghana.

2. The Learned Judge erred when he held that the Plaintiff or her donor, MAST-JAGERMEISTER AG of Germany, had any trademark or proprietary interest in the Jagermeister drinks imported and distributed by the Defendant.

3. The Learned Judge erred by holding that the Defendant’s importation and distribution of the Jagermiester drink in Ghana amounted to passing off.


4. The Learned Judge erred by holding that the Defendant’s importation and distribution of the said Jagermeister drink in Ghana contravened the provisions of the Protection Against Unfair Competition Act (2000), Act 589.

5. The amount awarded as general damages was excessive and unjustified having regard to the above additional grounds of Appeal.”


I will consider the grounds of appeal in the sequence in which they were argued by counsel for the Defendant/Appellant herein after referred to as Appellant” in his written submission of case as follows:-


“(i) The Learned Trial Judge erred when he misconstrued Exhibit ‘B’ by holding that the said exhibit precluded the Defendant from importing and distributing the Jagermeister drink in Ghana”.


In arguing this ground of appeal, the Appellant contended that the interpretation and conclusion put on the evidence adduced before the Trial Court, particularly Exhibit ‘B’ was erroneous. The Appellant contended further that, the wording in Exhibit ‘B’ is clear and unambiguous. Though the Appellant conceded that in Exhibit ‘B’, the manufacturers appointed the Respondent as its sole agent in Ghana but stated that no other company in Ghana is supplied by the said manufacturer, Exhibit ‘B’ could lead to three “implications” namely:-


“1) That the manufacturers can only supply the product in Ghana through the Respondent.

2) The Respondent could source the product from sources other than the manufacturers having the authority so to do; and

3) That other individuals or companies including the Appellant, could lawfully and legitimately import and distribute the product in Ghana so long as they were not sourcing the product from the Manufacturer.


Exhibit ‘B’ reads as follows:


“To Whom It May Concern”


Dear Sir,


This is to confirm that we are the producer and brand owner of the herb liqueur JAGERMEISTER, for the territory of Ghana, we exclusively appointed (sic).



Super-Geona Enterprise

P.O. Box.16781





Tel:  ++233 21 66 44 26


Fax: ++ 233 21 66 98 67


Our sole agent for both, the domestic and the Duty-free market for our brand JAGERMEISTER.

No other company in Ghana is supplied by us”.


Section 3 of the Trademarks Act 2004 (Act 664), registration of a trademark by a person confers an exclusive right to use the trademark on that person.


In order for the trademark owner and a manufacturer as in the instant case to effectively organize the distribution of its product, it may decide to create commercial territories in various countries in the world. It is also a way for the trademark owner to reinforce selective and exclusive distributive networks. To effectively control these distributive channels of its products the trademark owner may appoint an agent as the sole or exclusive distributor for the product within an identified territory. In Exhibit ‘B’, Mast-Jagermeister AG as producers and trademark owners of the brand Jagermeister herb liqueur appointed the Respondent exclusively as their sole agent in the territory of Ghana in respect of the said brand liqueur. This fact has not been disputed by the Appellant in its written submission. However, the Appellant is urging this Court to imply from the wording of the last paragraph in Exhibit ‘B’ that the Appellant as third parties to Exhibit ‘B’ could import the product into Ghana so long as they did not do so from the manufacturer. The Appellants argued further that, in the absence of a non-circumvention and trade exclusivity agreement between the manufacturer and the Respondent, they could import the products into Ghana.



In the instant case circumvention neither arises nor is applicable as the Jagermeister liqueur is a subject matter of a trademark and not copyright. This is because “circumvention” as defined in


EDITION) PAGE 260 IS: “the act of by passing, avoiding, removing, reactivating or impairing a technological measure or device that controls access to a work protected by U.S copyright law”.


We cannot look for the true and proper intent of the manufacturer and the Respondent without looking holistically at the dealings between the parties and the surrounding circumstances. See the Supreme Court decision in P.Y. ATTA VRS. KINGSMAN [2007-2008] SCGLR 946. Apart from Exhibit ‘B’ the Respondent tendered Exhibit ‘E’, the Power of Attorney without any objection from the Appellant. In Exhibit ‘E’, Mast Jagermeister AG confirmed the nomination and appointment of the Respondent as its sole and exclusive agent in the territory of Ghana. The Respondent as the lawful attorney of Mast Jagermeister in the said Exhibit ‘E’ was empowered inter alia to:-


      “ - import, warehouse and distribute our product Jagermeister, register promote and

-       advertise our product Jagermeister in Ghana;

-       execute marketing activities in co-operation with our company;

-       commence and defend any action in respect of the importation, warehousing and distribution of our product Jagermeister in Ghana”.


In our view, it will lead to absurdity should we attempt to accept the “implications being urged on us by the Appellants in respect of Exhibit ‘B’ when it is clear that the Respondent was given wide powers in Exhibit ‘E’ concerning the importation, distribution and marketing among others in respect of the product. When the Appellant’s act got to the knowledge of the Respondent’s suppliers, they by Exhibit ‘Q’ warned the Appellant to stop their illegal act.


Suffice to state that the Trial Judge’s finding concerning Exhibit ‘B’ was a direct determination of issue 1 which was set down for trial namely:-


“Whether or not the Plaintiff is the sole accredited representative of the Mast-Jagermeister AG drink in Ghana”.


The next ground of appeal argued by the Appellant reads that:-


“The Learned Trial Judge erred when he held that the Plaintiff donor, Mast Jagermeiter AG of Germany had any trademark or proprietary interest in Jagermeister drinks imported and distributed in Ghana”.


The Respondent tendered in evidence Exhibit ‘C’ - Certificate of Registration of a Trade Mark and Exhibit ‘D’ - Certificate of Renewal without any objection from the Appellant. Thus prima facie the ownership of the Trademark “Jagermeister” in the Respondent’s donor in law cannot be disputed. However the Appellant argues that, the right of a registered holder of a trademark is by no means absolute in view of the Trademarks Act, Section 9(b) which provides that:-


“The right conferred by registration of a mark shall not extend to acts in respect of articles which have been put on the market in any country by the registered owner or with the consent of the owner”.


The Appellant contended that under Doctrine of Exhaustion or the First Sale Doctrine applied in the case of SEBASTIAN INTERNATIONAL VRS. LONG DRUG STORES CORP; 53 F.3D1073, it was held that under the first sale doctrine, there is no trademark infringement where the Defendant is reselling a genuine good that bears the trademark.


With due respect to Learned Counsel for the Appellant, this case is distinguished from the case cited supra in that the Respondent did not sue for infringement of trademark under Act 664.


The Respondent’s action is based on Protection Against Unfair Competition Act, 2000 (Act 589). The preamble to Act 589 states that it is “AN ACT to provide protection against Unfair Competition and related matters’. Read together with the substantive provisions and also the short title of the Act, there is no doubt that the purpose of the Act is to provide for protection of businesses and commercial activities of the citizenry against unfair competition by other persons. The Court is thus bound to take steps to protect an injured party where the Court finds that a person is engaged in an unfair competition with another in any business or commercial activities. Section 8 of Act 589 makes provisions for civil remedies for persons who have suffered or are likely to suffer Unfair Competition. Since the action is not proceedings related to trademark or its infringement, all the arguments which Appellant’s Counsel have made under this ground are in our view irrelevant to this case.


We will consider the following grounds together namely:-


“The Trial Judge erred by holding that the Defendant’s importation and distribution of the said Jagermeister drink in Ghana contravened the provisions of the Protection Against Unfair Competition Act, 2000 (Act 589)” and


“The Learned Trial Judge erred by holding that the Appellant’s importation and distribution of the Jagermeister drink in Ghana amounted to passing off and the amount awarded as damages was excessive and unjustified having regard to the above additional grounds of appeal”.


Counsel for the Appellant argued that the Respondent failed to particularize the nature of the Unfair Competition and failed to lead evidence at the trial how the Appellant’s conduct amounted to Unfair Competition under Act 589. Counsel argued further that, it is difficult to see having regard to Section 2(2) of Act 589 how the Appellant’s importation and distribution of the product in dispute in Ghana damages Respondent’s supposed goodwill in respect to the Jagermeister drink.


Counsel submitted that the originality of the Jagermeister products imported into the country by the Appellant was never in issue. There was no evidence also on record to suggest that the Jagermeister products as imported into and distributed by the Appellant were fake or not the same product as that of the Respondent’s so as to amount to passing off.


Counsel further argued that, there was no evidence that the Appellant was selling another drink and holding it to the public as Jagermeister. Counsel submitted therefore that it was erroneous for the Trial Judge to hold that the Appellant was engaged in passing-off and then use same to award damages against the Appellant. Counsel submitted further that, since there was no infringement of the Respondent’s rights occasioned by the Appellant, the damages so awarded were not only excessive but unjustified.


We would have endorsed the submissions of Counsel for the Appellant in an appropriate case of infringements of trademark and not in the instant case.


Suffice to state that, contrary to the assertion of Counsel for the Appellant, there is overwhelming evidence on record to support the findings by the Trial Judge that the Appellant was engaged in Unfair Competition. As the Learned Trial Judge stated in paragraph 7 and 8 of the judgment:-


“(7) According to the Plaintiff she has been dealing with the


German Company since 1995 and had spent a substantial amount of money and other resources in the promotion and advertising of the product.


She testified that, apart from advertisements on television, radio and bill boards, she had branded public transports such as the Metro Mass buses all in an attempt to popularize the use of the product in Ghana. With respect to the advertisements and promotions, Plaintiff tendered Exhibits ‘J’ ‘J1’ and ‘J6’ photographs of bill boards, branded vehicles as well as Exhibits ‘K’, ‘K1’ to ‘K18’ being receipts for payments to the Ghana Broadcasting Company for adverts placed by the Plaintiff on their net works. Further, Exhibits ‘L’, ‘L1’ to ‘L19’ are payment receipts issued to Plaintiff by City Media Ltd. for Oman F.M. with respect to radio adverts placed and paid for by the Plaintiff.


“(8) The Plaintiff further tendered Exhibits ‘M’, ‘M1’ to ‘M2’

being receipts issued by the Metro Mass Transport Company while Exhibit ‘N’ are payment receipts issued by Daily Graphic and the Mirror News Papers to the Plaintiff to promote the product. Exhibit ‘P’ is the payment receipt for printing, Art Works posted on ‘207’ Commercial buses for the promotion of the product.


We endorse the above statements entirely and add that a scrutiny of the documents mentioned above clearly shows that the initial advertisement of the product by the Respondent on the Ghanaian market was on 23rd July, 1996 (Exhibit ‘K14’) with the Ghana Broadcasting Corporation. The Appellant on the other hand testified that it had been importing the liqueur in dispute for about eight (8) years from a company called Helia Supply Systems of Germany, and had also invested into promoting the drink in dispute.


Unlike the Respondent who provided copious documentary evidence to substantiate her oral evidence and averments in her pleadings, the Appellant provided no evidence to support any promotions or advertisement it had undertaken in respect to the subject matter indispute. Instead, the Appellant tendered Exhibit ‘2’, ‘2A’ to ‘2E’ which are not evidence of purchase but fax invoices from Helia Supply Systems in respect of various products including the product in dispute dating from 30/09/2011 when the action had already been instituted. The Trial Judge did not accept the Appellants assertion that the “free-tasting” that it allowed people to have was advertisement but found it as rather ‘strange’ which we cannot fault. The Appellant did not also proffer any evidence to substantiate its assertion that its supplier Helia Company Limited of Germany has lawfully and legally been authorized by Mast-Jagermeister, to supply the disputed drink to anybody including the Appellant without restriction in the territory of Ghana.


As stated earlier, we are unable to agree with the Appellant that the Trial Judge made a finding that the Appellant had committed the tort of passing off as that issued did not arise. In determining the quantum of damages to award in favour of the Respondent, the Trial Judge stated that he was going to be guided by the guidelines set out by His Lordship Marful Sau JA (Sitting as an Additional High Court Judge) in the unreported case of FAUSTINA NYARKO VRS. O.M. SANTAM LTD. SUIT NO.1PR/1/2006 delivered on 15th July, 2008. The Trial Judge stated that in that unreported case, the additional High Court Judge relied on types of damages recognized by the Courts in passing off actions which falls within the class of actions now statutorily provided for under (Act 589). It is therefore clear that it was the guidelines set out in respect of damages that the Trial Judge in the instant case relied on and not because the instant case is a passing off action. Moreso, the Learned Trial Judge specifically stated in paragraph 38 of the judgment that:-


“From the evidence adduced in the instant suit, I find that the Plaintiff is entitled to damages for their unfair and unlawful act(Emphasis ours).


It is therefore clear from the judgment that the Trial Judge awarded damages to the Respondent not because of the commission of the tort of passing off but for the unlawful and unfair acts.


In awarding the general damages the Learned Trial Judge took into consideration the evidence adduced at the trial and made the following findings in paragraph 28 and 30 of the judgment as follows:-


“(28) From the evidence, the Defendant had merely taken advantage

of the Plaintiff’s hard work and investment and has violated her sole agency as importer and distributor of the products in Ghana thereby overreaching the Plaintiff by an unlawful invasion of her territory. From the evidence the Defendant’s conduct was detrimental to the sole goodwill the Plaintiff could have enjoyed for promoting the product in Ghana at enormous expenses. And in spite of protests and warnings by the Plaintiff, the Defendant continued to flood the market with the product over which the Plaintiff has exclusive right of distributorship”.

 “(30)  I have no doubt whatsoever that Defendant’s conduct not only resulted in pecuniary loss to the Plaintiff but that it constituted acts of unfair competition which entitles Plaintiff to the protection of the law”.


In the view of the Trial Judge, the Appellant’s conduct was likely to damage the goodwill of the Plaintiff and her principals whether or not any confusion arose which to the Trial Judge was inconsequential.


Under Section 7 of Act 589 it provided that:-


“In additional to the acts and practices referred to in Sections 1 to 6 an act or a practice in the course of industrial or commercial activities that is contrary to honest practices constitutes on act of Unfair Competition.”


We found it pertinent to quote the section supra because the Appellant strenuously argued that it fails to see with regards to Section 2(2) of Act 589 how the Appellants importation and distribution of the product in dispute in Ghana damages the Respondent’s supposed goodwill with respect to the Jagermeister drink.


In the case of IRC VRS. MALLER & CO. MARGARINE [1901] AC AT 224 LORD MACAUGHTER described goodwill in the following terms:-


“Goodwill is the benefit and advantage of the good-name, reputation and connection of a business. It is the attractive force that brings in custom. It is the one thing which distinguish an old established business from a new business at its first start. The goodwill of a business must emanate from particular centre or source. However, widely or extended may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates. Goodwill is composed of a variety of elements. It differs in its composition in different trades and in different businesses in the same trade”.


In our view and from the case cited supra, goodwill is wide enough to encompass other intangible assets and elements and not limited to what has been numerated under Section 2 of the Act. Goodwill may include the ability to attain and sustain a

significant level of recognition and acceptance in a market, patronage, and ability to earn income and or profit from it. It is the infringement of the intangible proprietary rights in the goodwill attached to the product that is the tort.


In considering whether the Appellants act amounted to a dilution of the Respondent’s goodwill, the Trial Judge rightly stated inter alia in paragraph 37 of the judgment as follows:-


“In the peculiar circumstances of this case, I think the losses suffered by the Plaintiff to trade and profit and her potential trade and profit naturally resulted in the dilution of her customer base.”


We therefore find the general damages awarded in favour of the Respondent as just and fair under the circumstances, as well as the cost.


For these reasons, the appeal is dismissed in its entirety. We accordingly affirm the judgment of the High Court dated 13th October, 2014


Cost of Gh3000 awarded in favour of Plaintiff/Respondent against Defendant/Respondent.