Paint Trademark Suit: Tex And Trowel Are Generic Terms, No Company Has Exclusive Use Of Them, Court Holds

A Federal High Court sitting in Ikoyi, Lagos, on Thursday, June 13, 2019, delivered judgment in suit no FHC/L/CS/1587/15 between Portland Paints & Products Nigeria Plc (the Plaintiff) and Voda Paints Limited (the Defendant).

‎Delivering the landmark judgment in favour of the Defendant, Justice Olatoregun held inter alia, that the words ‘Tex’ and ‘Trowel’ are generic words used in the Paints Industry, and that no one company should be given exclusive use of these words that cannot be subjected to the exclusive use of any company or individual. The Court further found no similarity between the Plaintiff’s Sandtex Trowel and the Defendant’s Vodatex Trowel.

According to the Court

“The question then is: can ‘Vodatex Trowel’ be mistaken for ‘Sandtex Trowel’ by the mere look and sound of the syllables? Can confusion arise, say in the course of a telephone conversation? Both are trowel paints. Are the two products confusingly similar to the extent of deceiving the Nigerian public? I have examined the case put forward by both parties. In my view, the average man can clearly see the difference between the two products. Looking at Exhibits B and C visually, you cannot see any similarity. Phonetically, ‘Sandtex’ appears to have 2 syllables- Sand-Tex while ‘Vodatex’ appears to have 3 syllables Vo-Da-Tex. The get up of the buckets are totally different. The educated and the illiterate should be able to see the difference. I do not find that any tangible conclusion can occur.”

‎TheNigeriaLawyer had earlier reported that the Plaintiff was represented by Femi Fajolu, Esq of G.O. Sodipo & Co while the Defendant was represented by Messrs Folarin Aluko and Damilola Amore, Partners in the Law Firm of Trumann Rockwood Solicitors. Mr Folarin Aluko is the current Chairman of the Nigerian Bar Association, Abuja Branch and President of the Intellectual Property Lawyers Association.

In the case, the Plaintiff claimed to be the sole manufacturer of trowel paint in Nigeria, and sought inter alia, to stop the Defendant from manufacturing Trowel Paints. On their part, the Defendant’s Counsel argued that the Plaintiff’s requests are anti-competitive. The Defendant’s Lawyers argued that granting the exclusive right over a generic word to an individual or company would be injurious to the entire Paint Industry and to Nigeria’s developing economy, creating a precedent for unscrupulous companies to pursue unfair monopolies against industry competition.

‎Both Voda Paints Limited and Portland Paints & Products Nigeria are industry leaders in Nigeria’s paint industry. This decision will ensure that other companies in the Nigerian Paint Industry can continue to manufacture and market trowel paints.

Portland Paints, a subsidiary of UAC Nigeria, has undergone significant restructuring in recent times. Boardroom mogul, Mr. Larry Ettah resigned from the Board of Directors, effective July 20, 2018, following suit, Mr. Abdul Bello resigned from the board effective December 31, 2018, while Mr. Mukhtar Yakasai resigned effective January 31, 2019.