The battle for turf between mosquito coils

‘Supreme Black’ Floors ‘Heaven’



By J. Ato Kobbie



Menkish Impex Limited, importers and distributors of ‘Heaven’ mosquito coil, last month failed in a lawsuit against rival White Unicorn Trading Limited, distributors of ‘Supreme Black” mosquito coil, when the Commercial Division of the High Court, dismissed their action seeking to get the latter to withdraw ‘Supreme Black,’ claiming it was misrepresenting their brand and deceiving the public.



Dismissing the plaintiff’s suit, the presiding judge, Mrs. Justice Cecelia Sowah, said that the plaintiff failed to prove its claim that Defendants had not infringed on their trademark nor done anything with the intention to mislead or deceive the public.



THE CLAIM

The Plaintiffs, Menkish Impex had gone to court seeking:

An injunction to restrain defendant, whether by themselves, their agents, servants, assigns etc., from infringing with plaintiffs’ registered Trade Mark No. 32529 dated 5th May, 2002 and also from passing off defendant’s goods as if they were those of plaintiff.



The plaintiff again sought for damages from White Unicorn Trading Limited, the defendant, for passing off ‘Supreme Black’ as ‘Heaven’.



Plaintiff again sought damages for the passing off of the plaintiff’s goods by the defendant and injury to plaintiff’s goodwill; destruction of the defendant’s unsold stock of ‘Supreme Black’ as well, as well as any order or orders that the court may deem fit.



Menkish Impex had accused White Unicorn of engaging in unfair trade practices by its conduct in breach of the provisions of the Protection against Unfair Competition Act, 2000, Act 589.



According to the plaintiffs, “the defendant has been perpetrating an act of confusion in the course of their commercial activities, with respect to the plaintiffs enterprise; in particular the presentation of its mosquito coils in very similar colour and package style, and formatting the imprints (get-up) of their products like those of plaintiff, which practice constitutes unfair competition.”



The plaintiff continued that the defendant by the conduct was likely to damage the reputation of Menkish Impex by “diluting the goodwill attached to the appearance and presentation of the aforesaid product.”



Again, Plaintiff accused White Unicorn of continuing to “mislead the public with respect to their mosquito coils, particularly its appearance and presentation as if they were those of the plaintiff.”



In his evidence in court, Vijay Moolchandali, a director of Menkish Impex, argued before the court that its brand, ‘Heaven,’ is the leading selling brand of mosquito coil, the most advertised and of the best quality. He said defendants had packaged their brand, ‘Supreme Black’ in “identical words from the sides with a different name, and very similar to my product, which is unfair trade practice.”



Vijay continued that “The words on each side of the box are identical, the colours are also identical and the unfortunate people who use the mosquito coil are not able to see the difference,” adding that “My registered colours have been used, the words have been used, each and every sentence have been copied on top of the box.”



DECISION

In its ruling on Thursday 1st April, 2010, the court held that, “except for its name Heaven, the plaintiff did not establish any other distinguishing feature of its product,” and therefore finds it surprising that the arguments of the plaintiff appeared to “diminish its obvious distinguishing feature and rather look at other not so noticeable details of its ‘total get-up’ which are not even registered.”

According to the court, “where infringement is alleged the test for comparison marks is whether the products are identical,” adding that “where the marks or products are not identical [as I have found in this case] but merely similar, infringement depends on the likelihood of confusion. This has been held to include likelihood of association with the trademark. The absence of likelihood of confusion has been held to be fatal to plaintiff’s case,” citing the case of Spalding Vs Gamage [1915] 32 RPC 273].

The court held that “from the evidence it is evident that plaintiff’s main objection is not about the front or the back of the package where the names of the products and the registered features are prominently displayed, but the sides of the package. According to him, it is the side of the boxes that show when mosquito coils are packed on store shelves, and customers would not be able to tell the difference as the sides of the product were identical.”

The court observed that “proof of deception or the likelihood of deception is essential in a passing off action. The onus is on the plaintiff to adduce the necessary evidence to prove the deception or its likelihood. The court decides the likelihood of deception on a balance of probabilities, considering the likelihood of a substantial number of consumers being misled into purchasing the defendant’s product in the belief that it is the plaintiff’s product.”

The court then said after considering the testimony of plaintiff appeared to be “an exaggerated and simplistic view of how potential consumers make their choice of mosquito coil.”

The court observed that “It is an undeniable fact that in Ghana, mosquito coils are advertised by name,” adding that plaintiff neither called evidence to support its claim of the likelihood of confusion nor of damage suffered.

The court ruled that it was not enough for the Plaintiff to allege that its product is the number one brand, well advertised and have bill boards all over Ghana,” because “This is a bare assertion unsupported by any evidence.”

The court continued that “The Plaintiff had to prove that the square box, yellow colour and the style of the box have become distinctive of the ‘Heaven’ and that the use of the square box, yellow colour by the Defendant is calculated to deceive the public,” adding that “Except for demonstrating that the two products were similar if one looked at it from the side, there was no convincing proof that this was meant to deceive. Indeed, the plaintiff admitted in cross examination that customers asked for Coils by name and not by the packaging. I hold that the plaintiff failed to discharge the burden of persuasion placed by section 14 of the Evidence Act 1975, NRCD 323 on the party, who must prove the existence or non-existence of a fact which is essential to the claim or defence he is asserting.”

The court further held that after examining exhibits of the two mosquito coils it came to “the same conclusion reached by the Registrar of trademarks and the Board of the FDB” respectively that “one cannot fail to observe upon the most casual observation that the two products are easily distinguishable.”

Justice Sowah continued, “I find plaintiffs assertion that the sides of the coils could mislead the public into buying SUPREME when they intended to buy HEAVEN to be farfetched. I find the square box and yellow colour is not distinctive of Plaintiff’s HEAVEN mosquito coil. I also find that other features, decorations and marks on Defendant’s SUPREME box are completely different from that of the Plaintiff.”

Continuing the court held that “The mark ‘SUPREME’ and the decoration on the Defendant’s box clearly identify the mosquito coil as the Defendant’s own goods,” and that “other words on the boxes such as “black”, 10 mosquito coils, and perfectly perfumed, as well as the images of mosquitoes on the boxes are merely descriptive of the product, and no party can claim a monopoly over these words.”

The plaintiffs were represented by Mr. Franklin Adza Codjoe, while Mrs. Marietta Brew Appiah-Opong represented the defendants.