IN THE SUPERIOR COURT OF JUDICATURE
IN THE HIGH COURT (COMMERCIAL DIVISION)
KUMASI - A.D 2018
HAMTA AND SONS LIMITED - (Plaintiff)
AFUA KONADU AND ANOTHER - (Defendant)
DATE: 16 TH NOVEMBER, 2018
SUIT NO: P/OCC 02/2017
JUDGES: DR. RICHMOND OSEI-HWERE JUSTICE OF THE HIGH COURT
SARAH NORKOR ANKU ESQ. FOR KEN ANKU FOR PLAINTIFF/APPLICANT
FREDERICK OWUSU ASARE FOR THE 1ST DEFENDANT/RESPONDENT
This is an application by the Plaintiff/Respondent/Applicant, hereinafter referred to as “the Applicant", praying for an order of variation to the order of Interlocutory Injunction dated 26th October, 2017.
The background to the application is that on 17th July, 2017 the Applicant herein issued a writ of summons against the Defendants herein seeking the following reliefs:
a) A declaration that the plaintiff continues to package, market, distribute and sell its ‘MINAZEN’ spices without any interference from the 1st Defendant, his servants, agents, workmen, distributors, sellers, assigns or otherwise howsoever described.
b) An injunction to restrain the 1stdefendant, whether acting by himself, his servants, agents, workmen or otherwise howsoever described from interfering with plaintiff’s legitimate business, whether by the use of the word mark ‘‘MINAZEN’’ or the word colorable similar thereto or otherwise howsoever described or enabling, assisting, procuring or authorizing any person other than the plaintiff to do any of the acts aforesaid.
c) An order directed at the 2nd Defendant not to take any further step to register the 1st Defendant’s mark and/or dismiss the 1st Defendant’s application to register the Plaintiff’s word mark ‘‘MINAZEN’’.
The 1st Defendant/Applicant/Respondent, hereinafter referred to as “the Respondent” filed a statement of defense rejecting the Applicant’s claims and in her statement of defense she counterclaimed against the Applicant as follows:
a) Declaration that the plaintiff’s food spices in packages is almost the same as the 1st Defendant’s Remie food spices amount to passing off.
b) Declaration that the 1st Defendant is the owner of the trade name and mark ‘MINAZEN’ with its accompanying devices.
c) An order for perpetual injunction restraining the plaintiff from further causing to be manufactured, imported, distributed and /or sold unto the market its passing off food spices or doing anything that offends the intellectual property of the 1st Defendant.
d) General damages
On 19th September, 2017 the Respondent herein filed a motion on notice for an order of interlocutory injunction restraining the Applicant herein, whether by itself, agents, servants, workmen, assigns and all its privies from packaging, marketing, distributing and selling its MINAZEN spices pending the final determination of this case.
After hearing the parties, the court gave the following order:
“Both the applicant and respondent are, however, restrained forthwith from using the MINAZEN trade mark to package their products and subsequently marketing, distributing and selling the same. This order is also applicable to their servants, workmen, agents, assigns and privies.”
And of course, this order was meant to remain valid pending the determination of the substantive suit. In the same ruling, the court, however, allowed the Applicant herein whether by itself, its servants, workmen, agents, assigns and privies to market, distribute and sell the MINAZEN packaged spices which was already in stock subject to the necessary approval by the Food and Drugs Authority. The Applicant is apparently unhappy with the orders of the court and has in this motion on notice which is backed by a 13-paragraph affidavit in support invited the court to vary its orders. The relevant parts of the affidavit in support read as follows:
6. That I am advised by Counsel and believe same to be true that the court ruled that none of the parties have an exclusive right to the mark. It being so, it accords with law, that the mark is free to be used by anyone including the parties, subject to the approval of the FDA, and until such a time that exclusive right is given to or acquired by any of the parties. It is only then, that the owner of the exclusive right can stop the other party from using the said mark.
7. That at the hearing of the said application for interlocutory injunction the Applicant indicated strongly that she was in the process of registering its new label with the appropriate regulatory body being the FDA while indicating in her pleadings that the Respondent herein has never packaged and sold products under the name MINZEN with its correlative label. This is confirmed by the Respondent herself in her pleadings.
8. That the Food and Drugs Authority has finally approved the subject matter of the said ruling thus allowing the Applicant to deal in the said products unhindered. (Copy of approval dated 17th July 2018 attached and marked as exhibit JSH 1). It being so, the continuous restraining order will unfairly defeat the purpose of the said approval, which spans 3 years. This will also defeat the plaintiff’s right to the law court for redress.
9. That in the circumstances it would not be just, fair and convenient for the Applicant to be restrained from dealing in new imports of her products while another trader continues to import, distribute, market and sell the products under the same label (Copy attached and marked as Exhibit JSH 2).
10. That the Respondent herein suffers no hardship under the existing order which restrains both the Plaintiff and 1stDefendant from using MINAZEN package for their products since by the Respondent’s own showing she is not in the market with the subject matter and to that extent has no product to pass off.
11. That in consequence the court is being called upon to do substantial justice by varying the said order of injunction to alleviate the pain and hardship that the Applicant, workmen, privies and assigns are currently going through resulting from the unfairness and injustice of the effects of the existing restraining order.
12. That the 1st Defendant and/or his agents maximizing their strategy of dishonest defensive protection are doing brisk business and in consequence deriving tremendous benefit from the existing order of injunction which seeks to restrain both parties from dealing in any further packaging of the subject matter until final determination of the case whilst the Applicant remains fettered and helpless with harsh interest rates mounting on the Applicants business loan facility.
13. That I am advised by counsel and believe same to be true that the inherent jurisdiction of this Honourable court in such a situation may be invoked to vary its order of injunction so as to do substantial justice to all manner of persons including the Applicant herein and in consequence the interest of justice will be served.
The Respondent herein is opposed to the instant application and has demonstrated that in a 24-paragraph affidavit in opposition to the motion. It is the Respondent’s case that any variation of the court order to allow the Applicant to trade in the trade mark Minazen will be unfair since the latter has not yet acquired the exclusive right to the trademark. Interlocutory injunction like other interim orders of the court are temporary and can be revisited by the court when the circumstances or justice of the moment dictate. The court is vested with the inherent jurisdiction to vary an order made in ongoing proceedings. Variation orders may be triggered by an application of a party or the court may on its own motion vary its void orders or orders rendered by mistake.
In THE REPUBLICVRSHIGH COURT(COMMERCIAL DIV. A) TAMALEEXPARTEDAKPEM ZOBOGUNAA HENRY KALEEM(SUBSTITUTED BY ALHAJI ALHASSAN I. DAKPEMA); DAKPEMA NAA ALHASSAN MOHAMMED DAWUNI (INTERESTED PARTY) Civil Motion No. J5/6/2015 (4TH JUNE 2015), the Supreme Court commented on the discretionary power of the court to vary its own orders as follows:
“The inherent jurisdiction to vary its interim or interlocutory orders is vested in every court during the pendency of the substantive case. It can do so in order to make the meaning and intention clear; it may also do so if the circumstances that led to the order being made have since changed and is having a negative effect; or if it is working unexpected or unintended hardship or injustice. The only limitation is that the order must not be the subject of a pending appeal.”
In the English case of MULLINS v. HOWELL (1879) 11 Ch. D. 763, the court held that even in a case where an interlocutory order was made by the consent of the two parties, it was still possible to vary the order so long as the substantive case was still pending. At page 766 of the report, Jessel MR stated:
“I have no doubt that the Court has jurisdiction to discharge an order made on motion by consent…the court having a sort of general control over orders made on interlocutory applications…the court has jurisdiction over its own orders, and there is a larger discretion as to orders made on interlocutory applications than as to those which are final judgments.”
From the authorities above, it is clear that the court can vary its own orders if:i. there is a change in the circumstances that led to the order; ii. the order has led to an unexpected hardship on a party; iii. the order is void; or iv. made by mistake. The list is certainly not exhaustive but the need for substantial justice is the cornerstone that informs this time honoured jurisdiction of the court. In the instant case, it seems to me that the applicant is challenging the correctness of the orders. It is at the same time canvassing a changing circumstance and hardship which in its estimation have necessitated a variation of the court’s orders. In his written submission, counsel for the applicant concluded as follows:
“In the light of the foregoing paragraphs, it is submitted that the Plaintiff has clearly established that contrary to the position of the 1st Defendant and the conclusion in the Ruling of this Honourable Court on the 26th October 2017, the Plaintiff has the right to use the work mark ‘‘MINAZEN’’ without further harassment by the 1st Defendant until the final determination of the ownership of the mark. Furthermore, by determining that both parties had no exclusive right to the mark, this Honourable Court, in the interest of justice, has the jurisdiction to vary its own decision regarding the effect of its decision.”
On the main, this application is nothing short of an appeal to set aside the orders of the court. The applicant is alleging an error of law on the part of the court and this allegation is borne out of the court’s conclusion that both parties have no exclusive right to the Minazen trademark and the consequent order restraining both parties from using the trademark pending the final determination of the substantive issue in respect of the party who owns the exclusive right. It is trite learning that the grant of interlocutory injunction against a party is closely linked to the party’s inability to proof the existence of a right which must be protected. In view of the competing claims to the use of the trademark and the fact that the Applicant has no exclusive right to the use of the Minazen trademark, the court can exercise its discretionary power to restrain itand the Respondent herein from using the mark in trading pending the determination of the substantive suit. Indeed, the applicant is not alleging that the orders given by the court are void. As observed early on, the applicant is rather challenging the correctness of the decision and that is a matter which ought to be decided by an appellate court. Consequently, I will not be labour on the correctness or otherwise of the decision. Be that as it may, since the applicant is also alleging a change in circumstance and a negative effect of the orders, I will focus my scrutiny on these key considerations in determining whether the orders of the court should be varied. From the affidavit evidence, it is clear that the instant application was bolstered by the recent Food and Drugs Authority’s registration of the applicant’s food product per Exhibit JSH1. This was best told by counsel for the applicant in his written submission thus:
“On 17th July 2018, the F.D.A. registered the label of the MNAZEN spices with registration number FDA/Sc 18-046 for the Plaintiff to the exclusion of all others. The said registration is valid for three years until 17th July 2021. Upon receipt of the registration from F.D.A., the Plaintiff/Applicant applied to this Honourable Court invoking its inherent jurisdiction for variation of its order, in particular, its concluding order as stated on page 12 of the Ruling, to foster trade and to prevent the final collapse of the Plaintiff’s young business which has suffered severe loss as a result of the Ruling of this Honourable Court over a year ago.”
Clearly, the FDA did not register the Minazen label or trademark. In fact, it has no power to do so. All it did was to register the food product in line with the Public Health Act, 2012. Section 97 of the 2012 Act provides:
“Registration of food
97. (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 …”
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. Therefore, the applicant cannot flag the FDA registration document around as a breakthrough in its quest for the acquisition of an exclusive right since it cannot be inferred by no stretch of imagination that the document has vested in it an exclusive right to the use of the Minazen trademark. Thus, there is no change in circumstance so far as the trademark is concerned. On this score, the order of the court cannot be varied. On the hardship consideration, the applicant’s assertion is at odds with the evidence on record. In the interest of substantial justice, the court allowed the applicant to market, distribute and sell the MINAZEN packaged spices which was already in stock. This order was made subject to the necessary approval by the Food and Drugs Authority as dictated by section 96 (supra). What it means is that upon an approval by the FDA (which is a mandatory legal requirement), the applicant was and is still at liberty to market, distribute and sell the food product which were already in stock as at 26th October, 2017.
For me, there was no better way of insulating the applicant from financial loss than this consequential order. It is, therefore, unfair for the applicant to accuse the court of causing an immeasurable harm to its business over the past year. For the foregoing reasons, the application fails. The orders of the court dated 26th October, 2017 still stand. No order as to costs.