Note for readers: This report is of a summarised law report of the decision. The ratio is stated as the report states it. The full judgment should be read before the proposition is relied upon in argument, and the observations under WHAT IT MEANS are this publication’s, not the Court’s.

THE CASE

INTERNATIONAL TOBACCO (NIG) LTD & ORS v. B.A.T. (NIG) LTD & ANOR

SUPREME COURT OF NIGERIA

Coram: OKORO; MUSA ABBA-AJI; OGUNWUMIJU; ABUBAKAR; AGIM, JJ.SC

Reported at (2024) 4 CLRN, in association with ALP NG & Co.

Counsel: F. Olukoya, Esq. for the Interested Party/Appellant.

FACTS

British American Tobacco Nigeria Limited and Benson & Hedges (Overseas) Limited, the Respondents, were the proprietors of registered trade marks associated with the “Benson & Hedges” brand of cigarettes. These included:

  • Trademark No. 60722, described as the “Benson & Hedges” gold-colour label mark; and
  • Trademark No. 56629, bearing the “Turn to Gold” slogan.

Benson & Hedges cigarettes had been marketed and sold in Nigeria in distinctive gold-coloured packaging for a considerable period.

International Tobacco Nigeria Limited, Ololade Ogunniyi and Ronke Ogunniyi, the Appellants, were distributors of a different brand of cigarettes known as “Tradition”, manufactured by the Interested Party/Appellant. Tradition cigarettes were introduced into the Nigerian market in or around 2005 and were sold in gold-coloured packaging.

The Respondents sued at the Federal High Court, Ilorin, alleging, among other things, infringement of their registered trade marks. The complaint principally concerned the similarity between the gold-coloured packaging used for Tradition cigarettes and that associated with Benson & Hedges.

At trial the Respondents relied on their trade mark registration certificates and other documentary evidence relating to the brand, including materials showing the gold-coloured packaging and the advertisements associated with it. Evidence was also given of the long-standing use and public recognition of the gold-coloured packaging in connection with Benson & Hedges cigarettes.

The Federal High Court found for the Respondents, holding that the gold-coloured packaging constituted a distinctive part of their registered trade mark and that the Tradition pack infringed it.

The Court of Appeal affirmed, holding that the gold-coloured packaging formed part of the distinctive features of the registered mark and that the presentation of Tradition cigarettes was sufficiently similar to give rise to infringement.

Following that decision, Johann Wilhelm von Eicken GmbH, the Interested Party/Appellant, obtained leave of the Supreme Court to appeal.

ISSUE

“Whether the sale by the Defendants/Appellants of the cigarette brand as ‘Tradition’ packaged in a gold-coloured pack infringed any of the 2nd Plaintiff/Respondent’s registered trademarks, particularly trademark No. 60722.”

ARGUMENTS FOR THE APPELLANTS

Counsel argued that the gold colour appearing on the Benson & Hedges packaging did not form part of the registered trade marks.

A colour would only constitute part of a registered trade mark where the registration expressly identified or limited the trade mark to that particular colour. The mere fact that a trade mark was represented in a particular colour in the registration documents did not, without more, mean that the proprietor had obtained an exclusive right over that colour.

The relevant registration documents contained no statement limiting the trade marks to the colour gold or to any other colour. The gold colour could not therefore properly be regarded as having been registered as part of the marks. The protection afforded to the Respondents was confined to the marks as actually registered and could not be extended to the colour merely because it appeared prominently on the packaging.

Counsel further contended that long or extensive use could not alter the scope of the registered trade marks. Although such use might have caused consumers to associate the gold packaging with Benson & Hedges, that association did not of itself convert the colour into a registered component of the marks. To hold otherwise would effectively confer on the Respondents an exclusive proprietary right over a feature which they had not registered. The gold colour should accordingly be treated as an unregistered element of the overall packaging rather than as part of the registered trade marks.

ARGUMENTS FOR THE RESPONDENTS

Counsel argued that the gold colour formed part of the registered Benson & Hedges trade mark as represented in the registration certificate. The colour was not merely decorative but had become a distinctive feature of the brand through its long-standing use, commercial exploitation and extensive advertising.

The absence of an express limitation to the colour gold did not prevent the colour from forming part of the registered mark. The trade mark was registered in the form in which it appeared, including its distinctive gold colouring, and there was no evidence excluding the colour from the scope of the registration.

The consistent use of the gold-coloured packaging had made the colour strongly associated with Benson & Hedges cigarettes. The colour was therefore an important identifying component of the mark, particularly when considered alongside the other features of the registered mark and the “Turn to Gold” branding. The Appellants’ use of a substantially similar gold presentation could accordingly amount to infringement.

The Supreme Court held:

A specified colour will have trade mark significance and be recognised as part of a trade mark where it is an essential component or part of the mark and serves to identify the proprietor’s goods and distinguish them from those of others. Such a colour is not to be treated merely as decoration or embellishment.

The distinctive character of a colour or other component may be reinforced by long or extensive use, particularly where the feature has become so closely associated with the proprietor’s goods that consumers readily identify the goods by that feature.

In the instant case, the Court found that the gold colour was an essential component of the Respondents’ registered trade mark. The registration and the evidence before the Court showed that the gold colour formed part of the representation of the Benson & Hedges mark and was used together with the other features of the brand to identify the Respondents’ cigarettes.

The gold-coloured packaging of the Appellants’ Tradition cigarettes accordingly infringed Trademark No. 60722, the use of the gold presentation being such as would cause the relevant consumers to associate the Appellants’ cigarettes with the Respondents’ brand.

The Court affirmed the findings of the lower courts. The issue was resolved in favour of the Respondents.

The proposition the Court states is narrower than the headline it will attract. Gold has not been awarded to anybody. What the Court held is that where a colour is an essential component of a composite registered mark, and operates with the other features of that mark to identify the proprietor’s goods, it is part of the mark and is protected as part of it.

Three limits follow, and each will decide a future case.

It is a composite test. The Court did not find that gold alone identified the Respondents. It found that the gold formed part of the representation of the mark and was “used together with the other features of the brand”. A competitor is not barred from using gold on a cigarette pack; it is barred from a gold presentation that, taken with everything else on the pack, is likely to cause confusion.

Confusion remains the operative question. The Court’s conclusion rests on the finding that the relevant consumers would associate the two products. Infringement under the Trade Marks Act turns on use of a mark identical with, or so nearly resembling, the registered mark as to be likely to deceive or cause confusion in the course of trade in relation to the registered goods. Colour was the route to that finding, not a substitute for it.

The register still governs. The Court’s reasoning proceeds from what the certificate represented, not from an abstract proposition that colours are protectable. That is the hinge of the case, and it is examined next.

2. The question the summary does not answer is the one every practitioner will ask: what of the statutory colour provision?

The Appellants’ argument was precise and it was not weak: a colour forms part of a registered mark only where the registration identifies or limits the mark to that colour, and here there was no limiting statement.

Nigerian law has a provision addressed to exactly this. The Trade Marks Act provides that a trade mark may be limited in whole or in part to one or more specified colours, that any such limitation is to be taken into account in deciding the mark’s distinctive character, and that if and so far as a trade mark is registered without limitation of colour, it is deemed to be registered for all colours.

That deeming provision is capable of being read two ways, and the two readings produce opposite results.

Read one way, it assists the proprietor: a mark registered without limitation is protected in every colour, so the Respondents’ rights extend to the gold presentation and to any other.

Read the other way, it assists the defendant: if the mark is deemed to exist in all colours, colour is by definition not a distinguishing feature of it, and the proprietor cannot assert a monopoly in one colour as an element of the registration.

The report as summarised does not record the Court resolving that tension by reference to the provision. It records the Court resting on the representation borne by the certificate  the mark being described in the register as the “gold-colour label mark” reinforced by acquired distinctiveness. If the register entry itself identified the mark as a gold-colour label, the case is considerably narrower than the general proposition it will be cited for: the colour was claimed on the face of the registration, and the decision is an application of ordinary principle rather than an extension of it.

Before this authority is cited for the proposition that an unlimited registration protects a colour, the full judgment must be read and the register entry for Trademark No. 60722 obtained. Those two documents decide how wide the case actually is.

3. What was achieved here is normally the work of passing off, and that matters for everyone without a registration

Get-up the colour, shape, layout and overall visual impression of a product’s packaging has traditionally been protected in Nigeria not by the Trade Marks Act but by the common law tort of passing off, which requires goodwill in the get-up, a misrepresentation likely to deceive, and damage.

The significance of this decision for a proprietor is that it brings a get-up feature inside the registered-mark regime, where the advantages are substantial: there is no need to prove goodwill from scratch in every action, the registration is prima facie evidence of title, and the statutory remedies follow.

The significance for everybody else is the reverse. Nigeria’s Trade Marks Act dates from 1965, and its definition of a “mark” is a list — device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination of these. A colour standing alone is not in that list, and nothing in this decision makes a single colour registrable as such in Nigeria. A proprietor who wants colour protection must still obtain it the way the Respondents did: by registering a composite mark in which the colour appears, and by building the evidence of use that makes the colour distinctive.

That is worth setting against the international position. The TRIPS Agreement, to which Nigeria is bound as a member of the World Trade Organisation, provides that any sign capable of distinguishing goods may constitute a trade mark and expressly contemplates combinations of colours. The jurisdictions that register single-colour marks require the colour to be defined with precision by an international colour code rather than a description and require proof of acquired distinctiveness, and registrations that fail the precision test have been struck down.

Nigeria’s statute has not been amended to reflect any of this. There is no provision for colour marks, sound marks, scent marks or three-dimensional marks, and the long-pending legislation to consolidate and modernise industrial property law has not been passed. This decision does, within the limits of a 1965 Act, what that Act was never drafted to do and the fact that the Supreme Court had to do it through the “essential component” route is itself the argument for reform.

4. The practical consequences for filing, which are immediate

For proprietors:

  • File in colour, and say so. Where colour matters commercially, the application should include a limitation as to colour and should specify the colour precisely by international reference rather than by name. “Gold” is a family of colours; a code is one colour.
  • Register the label as a label. The Respondents were protected because they held a registered label mark in which the colour appeared, not merely a word mark. A word mark alone would not have carried the colour.
  • Keep the evidence. Duration of use, advertising expenditure, sales volumes, campaign materials and the slogan that ties the colour to the brand — the “Turn to Gold” mark did real work here — are what converts a colour from decoration into an essential component. That evidence must be assembled before the dispute, not after.
  • Register a series and the variants. Packaging evolves; registrations do not update themselves.

For defendants and new entrants:

  • A defence is not the only answer. If a colour has been treated as part of a registration that does not claim it, the remedy is an application to rectify or expunge the entry, which attacks the registration rather than merely resisting the action. That application is made to the Federal High Court or to the Registrar.
  • Common to the trade, and functional. Evidence that a colour is in general use in the relevant trade, or that it performs a function rather than identifying origin, goes directly to whether it can be an “essential component” distinguishing one trader’s goods.
  • Clearance searches must now look at colour. A search of word and device marks that ignores the colour in which a competitor’s label is registered is no longer a complete search.

5. The procedural point is a useful one and should not be lost behind the trade mark law

Johann Wilhelm von Eicken GmbH was not a party in the courts below. It is the manufacturer whose product was being distributed, and it appealed to the Supreme Court by leave, as the Interested Party/Appellant.

That is the operation of the appellate provision of the Constitution under which a right of appeal to the Supreme Court from the Court of Appeal is exercisable at the instance of a party, or, with the leave of the Court of Appeal or of the Supreme Court, at the instance of any other person having an interest in the matter.

The lesson is practical and it recurs in commercial litigation. A manufacturer whose goods are the subject of an infringement action against its distributors is bound in substance by the outcome even though it is not on the record, and will often learn of the case only when the judgment affects its market. The route back in is leave to appeal as an interested person and a manufacturer in that position should seek to be joined at first instance rather than rely on it.

6. The irony the judgment cannot have been asked to consider

There is a question this decision raises that belongs squarely to a Nigerian legal readership, and it is not a trade mark question.

The National Tobacco Control Act 2015 and the regulations made under it restrict tobacco advertising and promotion and prescribe graphic health warnings occupying a stipulated proportion of the pack. The international direction of travel in tobacco control, which Nigeria’s framework follows, is standardised or plain packaging the removal from cigarette packs of colour, logo, imagery and get-up altogether, leaving only the brand name in a prescribed typeface on a prescribed drab background. Several jurisdictions have adopted it.

A judgment recognising gold as an essential component of a cigarette trade mark arrives in a regulatory environment that is moving, in principle, to abolish colour on cigarette packs entirely. If Nigeria were to adopt plain packaging, the right the Respondents have just vindicated would be worth nothing in practice, because nobody would be permitted to use a colour at all.

That is not merely ironic. It is the basis of an argument, and the argument has been run elsewhere: that stripping a pack of its get-up expropriates a proprietary right in a trade mark, engaging the guarantee in section 44(1) of the Constitution against compulsory acquisition of property without compensation.

The answer to that argument is, in this publication’s view, a complete one, and it should be stated now rather than after the regulations are made.

A trade mark is a right to exclude, not a right to use. Registration confers on the proprietor the exclusive right to prevent others from using the mark on the registered goods. It does not confer a positive entitlement to put the mark into commerce free of regulation, any more than a registered pharmaceutical trade mark entitles its owner to sell a banned drug.

Plain packaging takes nothing from anyone. There is no acquisition and no transfer. The proprietor retains the mark, retains the register entry, and retains the right to stop others using it. Section 44 is directed at acquisition of property, and a restriction on the manner in which property may be used is not an acquisition.

And section 45 is in terms. The Constitution permits laws reasonably justifiable in a democratic society in the interest of public health. Tobacco control is the paradigm case.

None of this arose before the Supreme Court and nothing in the judgment touches it. But the first tobacco company to be served with plain-packaging regulations in Nigeria will cite this decision, and the regulator should know in advance what the answer is.

Follow Our WhatsApp Channel ______________________________________________________________________________________________________

[A MUST HAVE] Evidence Act Demystified With Recent And Contemporary Cases And Materials

“Evidence Act: Complete Annotation” by renowned legal experts Sanni & Etti.

Available now for NGN 40,000 at ASC Publications, 10, Boyle Street, Onikan, Lagos. Beside High Court, TBS. Email publications@ayindesanni.com or WhatsApp +2347056667384. Purchase Link: https://paystack.com/buy/evidence-act-complete-annotation

______________________________________________________________________ “Enhance Legal Practice With Authoritative Reports” — Alexander Payne Offers Comprehensive Law Reports, Spanning Over A Century Of Nigerian Jurisprudence

Interested buyers are encouraged to place their orders and enquiries via: 0704 444 4777, 0704 444 4999, 0818 199 9888 Website: www.alexandernigeria.com

______________________________________________________________________