IN THE SUPERIOR COURT OF JUDICATURE
IN THE HIGH COURT
KUMASI - A.D 2019
ERIC AMANKWAH - (Plaintiff/Applicant)
AHOMKA BEVERAGES LIMITED - (Defendant/Respondent)
DATE: 16TH MAY, 2019
SUIT NO: OCC/96/2019
JUDGES: HIS LORDSHIP JUSTICE DR. RICHMOND OSEI-HWERE
EBENEZER ADJEI BEDIAKO FOR THE PLAINTIFF/APPLICANT
DENNIS OSEI ANTWI FOR THE DEFENDANT/RESPONDENT
This ruling is in respect of an application filed on behalf of the Plaintiff (hereinafter called the Applicant) praying the Honourable Court for an order of interlocutory injunction restraining the Defendant (hereinafter called the Respondent) whether acting by himself, servants, agents, assigns or whosoever claiming through and from it from doing any or all of the following act(s) that is:
a. Using the Plaintiff’s brand name, Charlie Ginger Liqueur εbetu Spirit Drink or his logo, symbols and/or brand identified that are similar to those of the Plaintiff particularly Charles Wobetu Spirit Drink or εbetu Spirit Drink
b. producing, stocking, distributing, branding or selling any beverage (alcoholic or otherwise) by name Charles Ginger Liqueur Wobetu Spirit Drink’ or any other brand or name that is the same as, confusingly similar to and passes off as Charlie Ginger Liqueur εbetu Spirit Drink, or εbetu Spirit Drink;
c. doing anything that passes off or possibly passes off or confuses the public with regard to the brand, identity, design and looks of its products on the market as though the same belong to the Plaintiff;
d. enabling, assisting, causing, procuring or authorizing others to do any of the acts mentioned in (a), (b) and (c) supra with regard to the brand, logo, identity and appearance of its product as that of the Plaintiff;
e. doing anything that has the tendency of unfairly competing against the Plaintiff, his business, brand or product;
f. a further order compelling the Defendant to remove from the channels of trade, distribution lines, warehouses and lines of business all products misbranded as Charles Ginger Liqueur Wobetu Spirit Drinkor εbetu Spirit Drink as those products breach and their branding breach the laws of Ghana; and
g. a further order authorizing the officials of the Food and Drug Authority and or the Ghana Police Service to seize from all channels of trade, distribution vans and vehicles all products misbranded as Charles Ginger Liqueur Wobetu Spirit Drinkor εbetu Spirit Drink as those products breach and their branding breach the law of Ghana.
The background facts to the application are that on 9th April, 2019, the Applicant caused a writ of summons and statement of claim to be issued against the Respondent herein seeking the reliefs endorsed thereon. Thereafter, the Applicant was granted an Anton Pillar injunction order upon an ex-parte application on 11th April, 2019. Subsequently, the Applicant herein has filed the present application praying the court for the grant of an interlocutory injunction against the Respondent as per the reliefs stated above.
The grounds of the application are stated in the affidavit in support of the motion filed on 23rd April, 2019.
The Respondent is opposed to the application and has demonstrated its opposition in an affidavit in opposition filed on 15th May, 2019.
Both counsel (applicant’s and respondent’s) filed their statements of case on 7th May, 2019 and 15th May, 2019 respectively.
In his statement of case, counsel for the applicant, first discussed the procedural law on the grant of interlocutory injunctions. The Applicant’s case as submitted by his learned counsel is that the injunction order is necessitated by the need to protect the unregistered trademark, rendered in common law as passing off. Counsel cited a plethora of authorities including Reckitt & Colma Products Ltd v Borden Inc.  1WLR 491 in explanation of the meaning and the elements of passing off. In the Reckitt case (supra), Lord Oliver held:
“More specifically, it may be expressed in terms of the elements which plaintiff in such an action (for passing off) has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by associating with the identifying ‘get up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or service are offered to the public, such that the ‘get up’ is recognized by the public as distinctive specifically of the plaintiff’s goods and none other.
Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods and services of the claimant… Thirdly, he must demonstrate that he suffers or, in a qua timet action, that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s or services is the same as those offered by the plaintiff.”
Counsel submitted that from the pleadings, affidavit evidence and attached exhibits, the applicant has satisfied the entire requirements for a successful suit relating to passing off against the Respondent. With the support of authorities, he argued that the applicant has a goodwill and reputation in respect of the Charlie Ginger Liqueur εbetu Spirit Drink and the same must be protected. He submitted that the respondent’s passing off of the product amply demonstrates that the applicant has a goodwill. He also argued that there is a striking similarity between the applicant’s product and the respondent’s and that the respondent is misrepresenting to the public that its product emanates from the applicant. Counsel submitted further that as a result of the passing off, the applicant’s goodwill is being depleted and that has occasioned the diminution of his income. Counsel also submitted that the respondent use of the trademark Charles Ginger Liqueur Wobetu Spirit Drinkhas breached the Public Health Act, 2012 (Act 851), section 103(1) and (2a) and the Protection Against Unfair Competition Act, 2000 (Act 589) section 1(1) and (2). Counsel prayed the court to grant the injunction application, as it is legally and equitably just and convenient to do so.
In his statement of case, counsel for the respondent also cited a plethora of authorities relating to the requirements for the claim of passing off. One of the cases cited was Achiaa vrs Don Emillio Company Ltd.  105 GMJ 323 CA where the Court of Appeal speaking through Irene Charity Larbi (Mrs) JA considered as relevant in prove of goodwill, evidence of the plaintiff detailing receipts of payments issued in respect of advertisement of his product on radio, television, public buses and bill boards for a considerable length of time. He submitted that the applicant has not proven in his affidavit evidence that he has established goodwill in the product in dispute. That, he has not attached any documentary evidence to prove any promotional activity neither has he been able to establish that the product had been on the market for a substantial period of time by reason of any long period of consistent advertisement directed at polarizing the product. On the issue of misrepresentation, counsel submitted that the misrepresentation must be a material misrepresentation and that the deception must be more than monetary and inconsequential. He submitted that the similarity between Charlie Ginger Liqueur εbetu Spirit Drink and Charles Ginger Liqueur Wobetu Spirit Drink does not amount to a material misrepresentation. He cited the case of Marengo v Daily Sketch (1946) per Lord Greene MR in support of this assertion. He also submitted that the applicant has not been able to prove that he has suffered any damage. Counsel also took aim at the alleged statutory breaches levelled against the Respondent. He argued among others that since the applicant is focusing on passing off which is a common law principle, he (applicant) cannot invoke statutory provisions in support of this application.
The grant of interlocutory injunction is governed by Order 25 Rule 1 of the High Court (Civil Procedure) Rules, C.I. 47. Order 25 Rule 1 (1) provides as follows:
‘‘The Court may grant an injunction by an interlocutory order in all cases in which it appears to the Court to be just or convenient to do so, and the order may be made either unconditionally or upon such terms and conditions as the Court considers just.’’
The foremost consideration adopted by the court in the grant of injunction is based on whether on the balance of convenience the grant of the order would be just. As pointed out by the authorities, the jurisdiction to grant an injunction does not confer an arbitrary or unregulated discretion on the court. The twin ethos of ‘‘justice and convenience’’ are key in the determination.
In the Harlsbury Laws of England, 4th Edition, Volume 24, para 919, the authors commented on the meaning of the words ‘just and convenient’’ as follows:
“The words ‘just or convenient’… must be read ‘just as well as convenient’. They do not mean that the court can grant an injunction simply because it thinks it convenient, but means that it should grant an injunction for the protection of rights and the prevention of injury according to legal principles. They confer no arbitrary nor unregulated discretion on the court and do not authorise it to invent new modes of enforcing judgments in substitution for the ordinary modes.”
The Supreme Court in the case of Owusu v Owusu-Ansah [2007-08] SCGLR 870 cited with approval Pountney v. Doegah [1987-88] 1 GLR 111 and held that the grant or refusal of an injunction is at the discretion of the trial court, but that discretion has to be exercised judiciously. In the exercise of such discretion, the trial judge ought to take into consideration the pleadings and affidavit evidence before him. The court must determine whether an applicant has by his pleadings and affidavit established a legal or equitable right which has to be protected by maintaining the status quo until the final determination of the action on its merits.
In the Owusu case supra, the Supreme Court also cited with approval Vanderpuye v Nartey  1GLR 428 at 432 where Amissah J.A. held:
"The governing principle should be whether on the face of the affidavits there is the need to preserve the status quo in order to avoid irreparable damage to the applicant and provided his claim is not frivolous or vexatious. The question for consideration in that regard resolves itself into whether on balance greater harm would be done by the refusal to grant the application than not."
Halsbury’s Laws of England (supra) more specifically posits:
“Where the application is to restrain the exercise of an alleged right, the claimant should show that there are substantial grounds for doubting the existence of the right. The claimant must show that an injunction until the hearing is necessary to protect him against irreparable injury; mere inconvenience is not enough.”
Indeed, mere inconvenience which an applicant may suffer as a result of the status quo is not enough to necessitate the grant of injunction. An applicant must demonstrate that he has a right which ought to be protected and that he will suffer irreparable damage if the respondent is not restrained.
The court has jurisdiction to restrain a defendant from using a trade name colourably resembling that of the plaintiff. Injunction is a key relief in an action for infringement of trademark or an action for tort of passing off.
The applicant has not registered the trade name in dispute. He is not claiming a legal right in the name. What he is claiming is an equitable interest in the trade name, Charlie Ginger Liqueur εbetu Spirit Drink. He claims that the use of the trade name Charles Ginger Liqueur Wobetu Spirit Drink by the respondent has violated his equitable interest. He has therefore taken the instant action to seek protection of his unregistered trademark under the common law tort of passing off together with allegations of statutory breaches on the part of the respondent.
The Black’s Law Dictionary, 9th Edition, 1223 defines passing off as the “act of falsely representing one’s own product as that of another in an attempt to deceive potential buyers”. In her book Intellectual Property Law (Second edition), Jennifer Davis defined passing off at page 193 as “a misrepresentation in the cause of trade by one trader which damages the goodwill of another”. Prof. Stephen Offei in his book, The Law of Torts in Ghana Text, Cases and Materials(2014) defines passing off as follows: “is to sell good or carry on business in such a manner as to mislead the public into the belief that the goods or business of the defendant are the goods or business of the claimant.”
Lord Diplock in Warnink v Townend (1980) RPC 31 identified, from the cases decided before 1980, five characteristics which had to be present in a passing off action. He said:
“My Lords, Spalding v Gamage and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: 1. A misrepresentation 2. Made by a trader in the course of trade 3. To prospective customers of his or ultimate consumers of goods or services supplied by him, 4. Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and 5. Which causes actual damage to business or goodwill of the trader by whom the action is brought or (in a quiatimet action) will probably do so.”
Indeed, the five characteristics of passing off can be discussed under the headings: misrepresentation, goodwill and damages.
The notion that nobody has the right to represent his goods as the goods of somebody else is central to the cause of action in a passing off claim. The principles upon which actions for passing off were founded at the turn of the century were identified by Lord Parker in his well-known speech in A G Spadling& Bros v A.W. Gamage Ltd (1915) 32 RPC 273 cited in BRITISH TELECOMMUNICATIONS PLC V ONE IN A MILLION LTD. (1998) 4 AII ER 476 (CA) as follows:
'This principle is stated by Lord Justice Turner and by Lord Halsbury in the proposition that nobody has any right to represent his goods as the goods of somebody else. It is also sometimes stated in proposition that nobody has the right to pass off his goods as the goods of somebody else. I prefer the former statement, for whatever doubts may be suggested in the earlier authorities, it has long been settled that actual passing off a defendant's goods for the plaintiff's need not be proved as a condition precedent to relief in Equity either by way of injunction or of an inquiry as to profits or damages. Nor need the representation be fraudulently made. It is enough that it has in fact been made, whether fraudulently or otherwise, and that damages may probably ensue, though the complete innocence of the party making it may be a reason for limiting the account of profits to the period subsequent to the date at which he becomes aware of the true facts. The representation is in fact treated as the invasion of a right giving rise at any rate to nominal damages, the inquiry being granted at the plaintiff's risk if he might probably have suffered more than nominal damages."
In the instant case, the applicant was granted license by the Food and Drugs Authority (FDA) in June 19, 2016 to produce for sale Charle Ginger Liqueur Spirit Drink. This is evident by exhibit 2, the certificate of registration issued by the FDA. In November 5, 2018, the FDA by a letter approved the request for change of name of applicant’s product from Charlie Ginger Liqueur Spirit Drink to Charlie Ginger Liqueur εbetu Spirit Drink. See Exhibit 3. The new labels were also approved by the FDA. These moves were in compliance with section 97of the Public Health Act, 2012. It provides:
“Registration of food
(1) A person shall not manufacture, import, export, distribute, sell or supply food or expose food for sale unless the Authority has registered the food.
(2) Subsection (1) does not prevent the importation of samples for purposes of registration of the food.
(3) An application for the registration of a food shall be made to the Authority in the prescribed manner together with the prescribed application fees.
(4) The Authority shall register the food if it is satisfied that the food complies with the prescribed standards, and the manufacturing operations for the food complies with the prescribed current codes of good manufacturing practices.
(5) The Authority may charge fees to cover the cost of carrying out good manufacturing inspection or laboratory investigations in respect of the registration of food.”
Under the Trademarks Act, 2004, it is the Registrar General’s Department which is responsible for the registration of trademarks not the Food and Drugs Authority which is why the applicant is not claiming a legal right to the trademark of the product but an equitable interest. The official documents from the FDA clearly demonstrate that the applicant first registered the product name in 2016, effected a name variation in November, 2018 and is still in active production of the product. I consider the differences in the registration names i.e. Charle Ginger Liqueur Spirit Drink (as appeared on the certificate of registration, Exhibit 2) and Charlie Ginger Liqueur Spirit Drink as a typographical error. The FDA corrected the error by referring to the product as Charlie Ginger Liqueur Spirit Drink in exhibit 3.
In a letter dated 8th January, 2019, the FDA approved a change of the product name of the Respondent from 4Gers Ginger Liqueur Spirit Drink to Charles Ginger Liqueur Spirit Drink. In the said letter (Exhibit AB5) the FDA requested that the Respondent submits final samples bearing the new label for approval.
However, when the Respondent applied to change the product name from Charles Ginger Liqueur Spirit Drink to Charles Ginger Liqueur ɛbetu Spirit Drink (See Exhibit AB6), the FDA responded as follows:
The Managing Director
Ahomka Beverages Limited
P.O. Box AP 44
RE: CHANGE OF PRODUCT NAME
This is to acknowledge receipt of the samples and letter informing the Food and Drugs Authority of the change of your product name from Charles Ginger Liqueur Spirit Drink to Charles Ginger Liqueur ɛbetu Spirit Drink.
The sample submitted has been evaluated and it has been observed to have the same background, design and colour with another registered food product. This contravenes Section 103 (1) and (2a) of the Public Health Act (Act 851, 2012). Section 103 (1) states that 'A person who manufactures, labels, packages, sells or advertises a food in nature, value additives, substance, quality, quantity, composition, merit or safety commits an offence'. Section 103 (2a) also states that 'For the purposes of subsection (1) food is misbranded if it is an imitation of, or resembles any other food or food product in a manner likely to be confused with that food or food product under the name of which it is sold and is not plainly and conspicuously labelled so as to indicate its true character.
You are required to resolve the above mentioned issue for reconsideration.
DELESE A.A. DARKO (MRS)
CHIEF EXECUTIVE OFFICER
Cc: The Legal Department (FDA)”
When the move to change the product name failed, the Respondent applied to the FDA to allow it to exhaust the old labels of Charles Ginger Liqueur Spirit. The FDA in a letter dated 15th February, 2019 responded as follows:
“The Managing Director
Ahomka Beverages Limited
P.O. Box AP 44
RE: PERMISSION TO EXHAUST OLD LABELS OF CHARLES GINGER LIQUEUR SPIRIT
This is to acknowledge receipt of your letter on the above subject.
The Food and Drugs Authority has approved a period of three (3) months to exhaust your current labels of Charles Ginger Liqueur Spirit.
You are to ensure that subsequent products bear the correct FDA approved labels.
DELESE A.A. DARKO (MRS)
CHIEF EXECUTIVE OFFICER
Cc: All Regional Offices (FDA)”
It is clear from the sequence of events based on the evidence on record that the name Charles Ginger Liqueur Wobetu Spirit Drink is unknown to the FDA.
From Exhibits 6, 7, 8, 12, 13, 14 and 15, it is apparent that the Respondent is producing the product namely Charles Ginger Liqueur Wobetu Spirit Drink (the subject of the application) and this is being done without lawful authority.
I have looked at a copy of the Charles Ginger Liqueur Wobetu Spirit Drink label and it is similar to the applicant’s Charles Ginger Liqueur ɛbetu Spirit Drink. The similarity is not just in name but by description of the label as well. The labels of the two products have the same background, design and colour. Exhibit 5 is a photograph of the two products and one can hardly distinguish between the two.
The basis of a passing off action is a false representation. From the evidence on record, I can conclude that the Respondent has misrepresented the product of the Applicant and the misrepresentation is palpably material. In A G Spadling& Bros v A.W. Gamage Ltd (supra) Lord Parker also identified the basis of the cause of action in a passing off suit and the property right which was damaged. He said:
“My Lords, the basis of a passing off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may, of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case, where the representation is implied in the use or imitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant's use of mark, name, or get-up is calculated to deceive. It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on.”
In the instant case, the imitation of the applicant’s trademark by the respondent is phenomenal, as observed early on. The only motivation behind the imitation is to enjoy the goodwill associated with the applicant’s product.
Goodwill is an intangible asset of a firm accruing by good conduct and business performance. It can be defined as the benefit arising from the connection and reputation of the business. Goodwill is generated as the business is carried on and may be augmented with the passage of time. The quality of a product leads to higher patronage and that can aptly be described as an enjoyment of goodwill. Goodwill is affected by things relating to the business – the personality of the owner, the nature and character of the business, its name and reputation etc.
In Commissioners of Inland Revenue v Muller &Co’sMargarine Ltd (1901) AC 217 at 223 (Emphasis added) thus:
‘What is goodwill? It is a thing very easy to describe very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which begins in custom… The goodwill of a business must emanate from a particular centre or source. However, widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates. The description of goodwill as the attractive force bringing in custom is very apt even though the customers may not know or care of the identity of the owner of the goodwill provided that they appreciate that there is such a person and the goods or service’.
I agree with counsel for the applicant that the very fact that the Respondent has consciously and intentionally passed off its product as that of the applicant is a confirmation that the applicant has goodwill on the market. His attempt to change its brand name from Charles Ginger Liqueur Spirit Drink to Charles Ginger Liqueur ɛbetu Spirit Drink was an attempt to cash in on the reputation of the applicant’s trademark. When that failed, it quickly adopted the name Charles Ginger Liqueur Wobetu Spirit Drink at the blind side of the FDA and calculated to deceive by diverting customers from the applicant to itself. It can also be inferred that the product name Charles Ginger Liqueur Wobetu Spirit Drink was adopted to occasion confusion between the two businesses such that the respondent’s business may be seen as an extension of the applicant’s business. The respondent’s conduct is on all fours with the goodwill requirement of a passing off action. It must however be noted that per Exhibit AB 9 the Respondent has applied to the Registrar General’s Department to register the trademark, Charles Wobeto. The said application does not confer on the Respondent the right to use the trade name for its product. It needs the approval of the FDA and the name must also pass the passing off prevention requirement.
On the issue of damages, an action for passing off can be maintained without proof of actual damage.
Goddard LJ in Draper v Trist (1939) 56 RPC 429 explained the principle as follows:
“But, in passing off cases, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business. The law assumes, or presumes, that if the goodwill of a man's business has been interfered with by the passing off of goods, damage results therefrom. He need not wait to show that damage has resulted, he can bring his action as soon as he can prove the passing off; because it is one of the class of cases in which the law presumes that the plaintiff has suffered damage'."
Thus, prove of damage to the goodwill or the likelihood that damage would be caused to the applicant will suffice in the case for passing off. In the instant case, the applicant and the respondent are in the same line of business i.e. the alcoholic beverage industry. They are faced with the same market. The likelihood of the respondent encroaching the market share of the applicant is apparent. The likelihood of damage to the applicant’s business is not far-fetched.
From the foregoing, it has been established that the applicant has an equitable right that must be protected. On a balance of convenience, it will be just to restrain the Respondent whether acting by itself, its servants, workmen, agents, assigns and privies from doing any of the acts indorsed on the motion paper. This is because the respondent appears to have violated the well-established common law principle of passing of and that entitles the applicant to the interlocutory injunction. It must be added that the Respondent also appears to have violated statutes particularly sections 97 and 103 of the Public Health Act, 2012.
A trademark is meant to distinguish the goods made by one person from those made by another person. The court cannot shut its eyes to violation of trademark rules. Doing so will stifle innovation and promote illegality.
In sum, the application succeeds and the order for interlocutory injunction is granted as prayed pending the determination of the substantive suit. The order shall be effective forthwith.
Costs of GHC 5,000.00 awarded against the Respondent.
DR. RICHMOND OSEI-HWERE
JUSTICE OF THE HIGH COURT