(HIGH COURT)

OMDURMAN OPTICAL & WATCHES COMPANY v. MOHAMED

ALl ABBAS

HC.CS-3o-1967

Principles

  Trade Mark—” Calculated to deceive “—Means “likely to deceive “—Trade Marks Ordinance 1931, S. 6 (9) Trade Mark—Confusion—Not included in Sudanese statutory law—May be pleaded— Onus of proof lies upon plaintiff

The test of infringement is that the use of the mark, or of a similar mark, by others than the proprietor, is calculated to cause their goods to be bought as his either through deception, or likelihood of deception, confusion or likelihood of confusion. The onus of

Advocates: M. I. Khalil & A. Abdel Gadir …………………………. for plaintiffs

Kamal Mahmoud & El Hassein El Hassan……………………………. for defendant

proving whether confusion has arisen or is likely to arise lies upon plaintiffs.

Judgment

Salah Eddin Hassan J. March 11, 1969:— This is an infringement action of a registered trade mark with the alternative claim based on a passing-off action.

The suit was raised by advocates Mohamed Ibrahim Khalil and Ahmed Abdel Gadir on behalf of the plaintiffs (Omdurman Optical and Watches Company) against defendant (Mohamed Ali Abbas) who is a trader carrying on business under the name of (Ahlia Optical and Watches Co.). Defendant is represented by advocate Kamal Mahmoud. Plaintiffs are the registered owners of trade mark “Hunna Omdurman” in respect of the watches and clocks made specially for them and sold by them in the Sudan.

Plaintiffs based their claim on an allegation that defendant infringed their said registered trade mark by importing and selling watches bearing on their face the word “Omdurman “; and in the alternative they allege that defendant has wrongfully sold and is selling watches having an appearance and get up, and bearing a name, so nearly resembling their watches as to be calculated to deceive the public into believing that their watches are those of plaintiffs’, thus injuring the right of property in the plaintiff. In consequence the plaintiff claimed:

1. An injunction to restrain defendant by himself or by his servants, agents, or partners (if any) from infringing plaintiffs’ said trade mark.

2 . An injunction restraining defendant by himself or by his servants, agents or partners, (if any) from selling or offering for sale any watches or clocks by or under the name of “Omdurman “.

3 . An account of profits and payment of the amount shown to be due to plaintiff on the taking of such account or in the alternative damages estimated at £S.5000.000m/ms. plus costs of this action.

In their final submission plaintiffs have dropped their claim for an account of profits and restricted it only to damages.

Both parties amicably settled their terms of reference by drafting their admissions and issues which were also approved by the court. In order to complete the picture, I am going to rewrite the Issues and Admission agreed upon. This will further convenience and sequence.

ISSUES:

Admissions:

1.Plaintiff, is a firm carrying on the business, inter alla, of importing, selling and repairing watches and clocks. Defendant is a trader carrying on the like business under the business name “ Ahlia Optical and Watches Co.”.

2. Plaintiff applied for registration in the Sudan of the trade mark “Omdurman” but the Registrar of Trade Marks refused registration of the said mark on the ground of its geographical signification. Consequently plaintiff applied for and secured the registration of the trade mark “Hunna Omdu in respect of watches specially made for them and sold by them in the Sudan. The said trade mark was published under No. 8310 in Gazette No. 990 of December 15, 1963.

3  . Plaintiffs are selling up to the present day watches bearing on their face the words “Hunna Omdurman “.

4.Since 1966 defendant has imported and is selling watches bearing on their face the words "Omdurman"

5. Plaintiffs by their letters of August 25, and September 7, 1967, requested defendant to stop the sale of watches bearing on their  face the word " Omdurman"

issues:

1.Were the plaintiffs between 1961 and 1963 selling in the Sudan watches made for them by manufacturers in France bearing on their face the word “Omdurman”? (On plaintiffs)

2 .If answer to Q.I. is Yes, did the said manufacturers in 1961 secure the registration in France of the trade mark “Omdurman” in respect of watches made by them specially for plaintiffs?

3 .Did the watches bearing on their face the words “Hunna Omdurman” continue to be asked for and sold and to be generally known by the name of “Omdurman”?

4 .Has defendant infringed plaintiffs’ trade mark by importing and selling watches bearing on their face the word "omdurman"?

                                                                            OR

Has defendant wrongfully sold and is selling watches having an appearance and get-up and bearing a name so nearly resembling

those of plaintiffs’ watches as to be calculated to deceive and mislead the public into the belief that his watches are those of plaintiffs and by so doing passed his watches as those of plaintiffs?

.5 To what relief, if any, is plaintiff entitled?

Unfortunately, I have neither seen nor heard any of the witnesses either for plaintiffs or defendant. Thus I may be a little handicapped in matters touching the personal credibility of the witnesses.

As I see it plaintiffs succeeded in discharging the burden of the first issue. The plaintiffs themselves gave evidence that during the period 1961—. 63 he was selling in the Sudan watches made for them by manufacture in France bearing on their face the word “Omdurman.” In support of his statement he submitted to the court (Doc. A) which contains nine deliveries of these watches by a French company during the period February 9, I961to December 26, 1961, bearing the mark “Omdurman.” These delivery orders are certified true copies and duly stamped. It may be urged that (Doc. A) only covers 1961 but does not refer to 19621 and 1963. The gap has been filled by the evidence of the witnesses who used to deal in these watches. Moreover, it has been proved that plaintiff tried to obtain registration of the mark “Omdurman” and when he failed for geographical reasons he registered the mark as “Hunna Omdurman” in 1964. During the period in which he was making an effort to register the mark “Omdurman” it is only natural to expect that the deliveries continued. Moreover, there is a presumption of fact as to continuance; that is, that things or circumstances, once proved to have existed in a certain state at a particular time, continue to exist in that state for a reasonable period thereafter; see (R. v. Lumbley, Crown Cases Reserved 1969, 6. 196). It has been proved that in 1961 plaintiff imported these watches bearing the mark “Omdurman.” It has also been proved that during 1962—63 and 1964 he was making strenuous efforts to get the mark registered. No doubt the import of the watches continued and when registration of “Hunna Omdurman” was secured the import of watches “Hunna Omdurman” continued also.

The answer to the second issue is very obvious. Plaintiffs submitted Doc. B, a copy of the registration certificate of the mark “Omdurman” in France by the supplier company. This is the best evidence available in the circumstances. The registration was effected in May 1961. Defendant tried to defeat the allegation of plaintiffs by saying that he himself used to import since 1955 watches bearing the mark “Omdurman.” He submitted some documents, namely, Doc. A and Doc. D. They purport to be two receipts in connection with the deliveries of watches bearing the mark “Omdurman” from an Egyptian company in1955.These receipts are written in pencil and are neither certified nor stamped. In

my opinion their evidentiary value is extremely doubtful. In support of his contention defendant failed to produce any independent reliable evidence. The other documents (F and E) do not refer to the word “Omdurmafl” in any way. What we are running after is not the importation of any watches by defendant but only of watches bearing the mark “Omdurman.” Defendant no doubt failed in his allegations.

I am not happy about framing issue No. 3 which in my opinion comprises nothing but pure evidence which will only help in determining issue No. 4. So I am going to ignore it at this stage and step into issue No. 4 which reads:

“Has defendant infringed plaintiffs’ trade mark by importing and selling watches bearing on their face the word ‘Omdurman"?

Before answering this issue, I should first enumerate the established facts:

Plaintiffs used to import from France and sell in the Sudan watches

bearing the mark “Omdurman” since 1961 to 1963.

In May 1961, plaintiffs obtained registration of the said trade mark “Omdurman” in France in the name of the French company. Plaintiffs attempted to register the said mark in the Sudan but failed to obtain registration because of its geographical significance. At last he added the word “Hunna” to Omdurman as a way out to obtain registration in the Sudan. The said registration of “Hunna Omdurman” was finally completed in 1964. In 1966 defendant started to import and sell in the Sudan French watches bearing the mark “Omdurman.” Despite the mark “Hunna Omdurman” in plaintiffs’ watches the purchasers used to ask for it with reference to Omdurman only (see evidence of P.W.2 and P.W.4, who are both independent witnesses).

In an infringment action plaintiff complains that the defendant has infringed his trade mark by taking it in its entirety, or by taking a substantial portion of it, or by colourably imitating it, and he relies on his statutory title to the exclusive use of the mark in question for goods of a specified kind.

According to the Trade Marks Ordinance, 1931, s. 2, a trade mark has been defined as a mark used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with or offering for sale. The italicised words are the relevant part of our present case.

In the Trade Marks Ordinance, we do not find a specific definition of what constitutes an infringement but it could be extracted from a com bination of subsections, i.e. the definition of “Trade Mark” in section 2,

I already mentioned; secondly, from section 6 which deals with the restrictions on registrations; paragraph 9 runs to say in respect of trade marks not capable of registration

“a mark identical with one belonging to a different proprietor which is already on the register in respect of such goods, or so nearly resembling such trade mark as to be calculated to deceive.”

Also section 20 of the same Ordinance says

“subject to any limitation and conditions, entered upon the register, the registration of a person as a proprietor of a trade mark, shall if valid give to such person the right to the exclusive use of such trade mark upon or in connection with the goods in respect of which it is registered.”

From these sections, we can safely say that the test of infringement is that the use of the mark, or of a similar mark, by others than the proprietor is calculated to cause their goods to be bought as his (see Edward v. Dennis (1885) 30 Ch.D 454) When are their goods bought or may be bought as his? It is either through deception or likelihood of deception, and I will add also confusion or likelihood of confusion. The words calculated to deceive are specifically mentioned in the Ordinance but the word confusion does not come into the picture. Mr. Justice Imam in Hamza Mohamed El Chabrawishi v. Boxall & Co. Ltd. (AC-CS-440-1960 (1963) S.L.J.R. 95) ruled that so long as the Trade Marks Ordinance 1931 does not include the words “or cause confusion” a mere plea of “confusion” may not be made, with due respect, I believe that this decision is per incuriarn as it ignored a previous judgment of the Court of Appeal in Kamil Abdel Shah eed & Sons v. Board & Sons Ltd., AC-REV-97 1951 (unreported), in which confusion was not excluded as alien to our law of trade marks. Per Mr. Justice Stanley- Baker in page 3 of his judgment

“applying these criteria, we think that there were sufficient grounds upon which the judge could find as he did, that there was liability to confusion by reason of the similarity between the two marks and between the goods in respect of which they were used.”

In an action for infringement the onus of proving whether confusion has arisen or is likely to arise is upon the plaintiffs. In our present case plaintiffs proved by ample evidence that despite the addition of “Hunna” to his trade mark on the watches nevertheless the purchasers continued to demand them as “Omdurman “. The word “Omdurman “, no doubt, is the essential feature of plaintiffs’ registered trade mark “Hunna Omdurman’ and once it is found that the essential feature of a mark has been taken it is immaterial that defendant had used additional words or devices on the mark he had used. In this case defendant has taken the essential feature of plaintiffs’ work without any addition so to speak. In Stone & Co. Ltd. V. Steelace Manufacturing Co. Ltd., the Court of Appeal held that an advertisment of ‘ Alligator Pattern Belting” was an infringe ment of the trade mark “Alligator” as the expression might be understood as indicating, that the goods were those of the proprietors of the trade mark “ Alligator “. In Kerly, on Trade Marks (8th ed. 1960) p. 263, it says:

“If a word forming part of, or a whole of, a mark has come in the trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader.”

As mentioned before despite the registration of “Hunna Omdurman” plaintiffs watches used to be demanded with reference to Omdurman"ادببى ساعه امدرمان"  It is relevant to quote here the quotation from Vol. 38, Halsbury, Laws of England (3ed. 1962), adopted by Mr. Justice Stanley-Baker, at page 3 of his judgment in Kamil Abdel Shaheed & Sons v. Board & Sons Ltd., AC-REV-97-1957 and referred to by the learned advocates for plaintiffs in their submission:

“The general principle is to refuse registration if there is any possibility of confusion in fair and normal use. Primarily the comparison is between the marks as a whole, but if the proposed mark contains some distinctive feature, appearing in the former mark, this may be a ground for rejection. A mark will be rejected if there is liability to confusion by eye or ear, and further whether the marks may suggest the same idea or lead to the goods being described by the same name. In making the comparison the tribunal bears in mind that the marks will not normally be seen side by side and guards against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the former mark. Amongst the circumstances of user are the class of goods, the class of persons likely to become purchasers and whether in user the mark may be liable to become partially effaced or be represented on a small scale or in a mode or position which will render it difficult to see the details.”

I have compared the watches myself and in my opinion the similarity between them is so striking that if there is no writing on them one can never distinguish one from the other.

These watches according to the evidence heard are usually bought by lower middle class strata. The fact that one set of watches bears an English inscription while another set bears an Arabic one does not necessarily lead the buyer to think that the two sets belong to different traders. To quote with approval from the submission of plaintiffs’ advocate

“There is no reason why the ordinary buyer shall not regard them as two species of the goods owned by the same trader. Indeed this is more likely especially in the case of a buyer who does not read English and to whom the only difference constituted by the omission of the word ‘Hunna’ from the set of watches is likely to be blurred.”

A lot of English decisions point that the persons to be considered in estimating whether the resemblance between the marks in question is likely to deceive are all of those who are likely to become purchasers of the goods upon which marks are used, provided that such persons use ordinary care and intelligence. It was held in Saville Perfumery Ltd. v. June Perfect Ltd ((1941) 58 R.P.C. 147) per Lord Maugham at page 176:

“Where the trade relates to goods largely sold to illiterate or badly educated persons, plaintiff has often established his case although it has been proved that well educated persons have not been deceived.”

As regards the underlined part of this quotation with reference to our case, I believe that the most educated Sudanese when seeing these watches and reading the marks, will no doubt think that they belong to the same proprietor. In Kerly Trade Marks (8th ed. 1960), p. 410 says:

“Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronounciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person’s wants.”

No doubt in mentioning Omdurman and Hunna Omdurman the stress is all upon the word Omdurman and even if the customer or shop assistant ventures to pronounce the word Hunna, it is most probably going to be slurred over the tongue and may hardly be heard.

The same book on page 416 states:

“where the goods of a particular trader have become known by a name derived from his trade mark, any other mark which would be likely to suggest the use of the same name for the goods on which it is used, so resembles the former as to be likely to deceive.”

In our present case we have been convinced that despite the registration of the mark of plaintiffs as “ Hunna Omdurman “ nevertheless their watches continued to be demanded as “Omclurman “. No doubt the use of the word “Omdurman” in similar watches as adopted by the defendant is likely to deceive.

For all the above reasons, plaintiffs succeeded in their infringement action. There is no reason in my opinion to discuss the alternative claim so long as the main succeeded.

So long as plaintiffs succeeded in their infringement action they are entitled to the first relief claimed which is an injunction restraining further infringements. They are also entitled to an account of the profits made by the defendant as a result of the infringement and also to damages. The plaintiffs have elected in their final submission to restrict themselves to a claim for damages only. Following the common law, the mere proof of an infringement entitles the plaintiffs to nominal damages and costs of the action. It the plaintiffs claim substantial damages the onus of showing what loss they had actually sustained by reason of the defendant’s conduct lies upon them. In this plaintiffs never made any attempt to indicate the quantum of damages or any damages at all. If this court attempts to assess the substantial damages in any way its decision will be quite arbitrary. Accordingly, I confined myself to granting only nominal damages which I reckon at £S.5000m/ms plus costs. Decree accordingly