ALBAN PHARMACY LIMITED V. STERLING PRODUCTS INT. INC

• Pages: 235-239

ALBAN PHARMACY LIMITED V.

STERLING PRODUCTS (NT. INC. 235

ALBAN PHARMACY LIMITED V. STERLING

PRODUCTS INT. INC.

ALBAN PHARMACY LIMITED



RESPONDENTS

V

STERLING PRODUCTS INTERNATIONAL



APPELLANTS

INC.

SUIT NO. SC 459/1966

SUPREME COURT OF NIGERIA

ADEMOLA,



C.J.N.

LEWIS,



J.S.C.

MADARIKAN,



J.S.C.

1st November, 1968.

Trade Marks - Application for registration - Onus on applicant to satisfy Registrar

that Trade Mark applied for not likely to deceive or cause confusion - Question

is whether a person who sees proposed Trade Mark in the absence of the

other Trade Mark would be liable to be deceived.

ISSUES:

1.

In the matter of application for registration of a Trade Mark, on whom lies the

onus of satisfying the Registrar that the Trade Mark applied for is not likely to

deceive or cause confusion.

2.

How should a trial judge approach and resolve the question of whether two

Trade Marks are so similar as to be likely to deceive or cause confusion.

FACTS:

The appellants were the proprietors of the trade Mark "Castoria" which is reg-

istered in Nigeria. A sample of the product was put in evidence, it was a medical

product in Class 3, a special laxative for growing children and the mark on the

bottle was a tiny picture of five children. The respondents, Alban Pharmacy

Limited, on 3rd May 1962, applied under the Trade Marks Act (Cap.199) to the

Registrar of Trade Marks for the registration as Trade Mark the word "Casorina"

for goods in Class 3 which is a medicinal product. The mark showed the device

of a baby in a large picture on the bottle bearing the word "Casorina". The ap-

pellants raised an objection to the registration on the ground that the proposed

Trade Mark "Casorina" was so simi ar to their registered Trade Mark "Castoria" as

to be calculated to deceive and that the respondents who sought to register "Ca-

sorina" had not discharged the onus that lay upon them of showing that if their

Trade Mark was registered there will be no deception. The trial judge found for

the respondents in holding the two Trade Marks were different, and that the onus

of proving that deception might ark.° was on the appellant. Thereupon, the Appel-

lant appealed to the Supreme Court.

HELD:

1. In the matter of application for registration of a Trade Mark, the onus is on the

applicant to satisfy the Registrar that the Trade Mark applied for is not likely to

deceive or cause confusion, so that refusal to register does not involve the

conclusion that the resemblance is such that either an infringement section or

a passing off would succeed. The trial judge was therefore in error when he