IN THE HIGH COURT OF THE FEDERAL CAPITAL TERRITORY, ABUJA HOLDEN AT ABUJA ON TUESDAY, 21 ST DAY OF MAY, 2013 BEFORE HON. JUSTICE SYLVANUS C. ORIJI SUIT NO. FCT/HC/CV/866/2012 BETWEEN LIVING EYES INTERNATIONAL LTD. --- PLAINTIFF AND 1. MINISTER, FEDERAL CAPITAL TERRITORY 2. MINISTER OF STATE, FEDERAL CAPITAL TERRITORY 3. SENATOR BALA MOHAMMED 4. OLOYE OLAJUMOKE MOHAMMED 5. EZEAKO ODI DEFENDANTS RULING This ruling is on the defendants notice of preliminary objection filed on 12/12/2012 challenging the competence of this suit and the jurisdiction of the Honourable Court to entertain it. The grounds of the preliminary objection are: 1. This is an intellectual property matter over which this Honourable Court has no jurisdiction. 2. Exclusive jurisdiction to adjudicate over this suit vests in the Federal High Court. 1
3. The suit is statute-barred in view of section 2(a) of the Public Officers Protection Act, Cap. P41, Laws of the Federation of Nigeria 2004. In support of the application is the written address of Sam T. Ologunorisa, Esq., SAN, learned senior counsel for the defendants. In opposition, Chidel Onuora Esq., learned counsel for the plaintiff, filed a written address on 12/2/2013. On 15/3/2013, Mr. Ologunorisa filed a reply on points of law. At the hearing on 21/3/2013, S. E. O. Maliki Esq. adopted the defendants written addresses. Mr. Onuora adopted the plaintiff s written address. There are two issues for determination which have arisen from the grounds of the preliminary objection. The first is whether this Honourable Court lacks jurisdiction to entertain the plaintiff s suit by virtue of the provisions of section 251(1)(f) of the 1999 Constitution (as amended). The second is whether the plaintiff s suit is statute-barred in the light of the provisions of the Public Officers Protection Act. On the first issue, it is trite law that the jurisdiction of a court to entertain a suit is determined by the plaintiff s claim as endorsed in the statement of claim. In other words, the case put forward by the plaintiff determines the jurisdiction of the court to entertain the suit. See Inakoju v. Adeleke (2007) 4 NWLR (Pt. 1025) 423 and Magaji v. Matari (2000) 8 NWLR (Pt. 670) 722. For a proper understanding of the submissions of counsel, I consider it appropriate to first refer to the facts pleaded by the plaintiff in its statement of claim thus: 2
1. The plaintiff is the publisher of the magazine Welcome to Abuja under the assigned International Standard Serial Number (ISSN) 2141-9035 issued by the National Library of Nigeria for its use to the exclusion of every other person. The three publications of Welcome to Abuja by the plaintiff have been circulated locally and internationally. 2. The plaintiff identified the administrative authorities of the Federal Capital Territory (FCT) as possible partners. It made a proposal to the 1 st defendant requesting a partnership in the publication of the said magazine. In October 2010, one Mr. Jubrin Shaba took the plaintiff s chief executive (Mr. Nicholas Ezechie) to one Mr. Nosike Ogbuenyi (the special assistant to the Hon. Minister, FCT at that time). Mr. Ezechie discussed the publication with Mr. Ogbuenyi and gave copies of the magazine to him along with a written proposal on a partnering contract with the FCT authorities. Mr. Ezechie also had discussions with the 5 th defendant (a deputy director [Information] in the office of the 1 st defendant) on the benefits of the magazine. He gave copies of the publication and the proposal to the 5 th defendant. 3. After several efforts to get the partnership contract with the FCT, the plaintiff received a letter dated 25/10/2011 signed by H. Jamilah Tangaza (a senior special assistant [Information and Media] to the FCT Minister). He welcomed the initiative and promised to seek approval for the purchase of copies of Welcome to Abuja. 3
4. While the plaintiff had concluded plans with its printers abroad in readiness to supply any number of copies of the magazine which the defendants may request, it received another letter dated 19/12/2011 signed by V. O. Unoarumi cancelling the proposed partnership on account of an existing in-house publication. Upon reading the letter, Mr. Ezechie demanded to see a copy of the said in-house publication of the FCT, but was shown the plaintiff s publication. 5. Thereafter, on 17/1/2012, the plaintiff received a letter from its foreign partner, Premier Advisory Services, breaking off its partnership with it on account of an existing publication in circulation in the same title and on the same subject (Welcome to Abuja) resulting seriously to a loss to the plaintiff. The plaintiff pleaded the publication by the defendants in the same title Welcome to Abuja printed in Germany. 6. The publication by the defendants misrepresented to the public that the 1 st & 3 rd defendants and the 2 nd & 4 th defendants are respectively publisher and deputy publisher of the magazine Welcome to Abuja a statement capable of causing and actually caused serious injury to the business of the plaintiff. Since the said publication and circulation by the defendants, it has posed a serious threat to plaintiff s business and has depressed its opportunity with local advertisers and foreign market opportunities. The plaintiff operates in Abuja, Nigeria and abroad and share the same market with the defendants and the public will surely be confused about the publications as both have the same title. 4
The plaintiff therefore claims these reliefs against the defendants: 1. A declaration that the defendants conduct in infringing plaintiff s title constitutes an abuse of office. 2. $1.5 million (One million, five hundred thousand Pounds Sterling) or its Naira equivalent being special damages resulting from the infringement by defendants of plaintiff s Magazine title, Welcome to Abuja. 3. $7.5 million (Seven million, five hundred thousand Pounds Sterling) being general damages resulting from the infringement by defendants of plaintiff s Magazine title, Welcome to Abuja. 4. A perpetual injunction restraining defendants, their agents and privies from the continued use of plaintiff s title, Welcome To Abuja. The learned senior counsel for the defendants argued that from the statement of claim, the plaintiff alleges that the defendants converted its intellectual property i.e. a publication titled: Welcome to Abuja over which it claimed it had an International Standard Serial Number (ISSN). He posited that the plaintiff s suit is an intellectual property matter. The phrase intellectual property covers a wide range of law and includes copyright, trademarks and patent. It was submitted that by virtue of section 251(1)(f) of the 1999 Constitution (as amended), only the Federal High Court has jurisdiction to entertain any civil suit involving or relating 5
to copyright, patent, designs, trade marks, passing-off, etc. The learned Senior Advocate of Nigeria concluded that this Court lacks jurisdiction to entertain this suit, citing the case of Madukolu v. Nkemdilim (1962) 2 All NLR 581. On the other hand, the learned counsel for the plaintiff argued that the defendants submission that the subject matter of the plaintiff s suit is simply one of intellectual property is parochial. He conceded that the act of the defendants complained of by the plaintiff touches on the broad subject of intellectual property, a subject which accommodates the common law tort of passing-off. However, Mr. Onoura argued that the plaintiff s action traverses several heads of action including the common law torts of negligence, breach of confidence, deceit, interference with contract and passing-off. It was further argued that infringement of title otherwise called passing-off is a common law tort. The plaintiff s action did not arise from (or stand on) any Federal Enactment relating to copyright, patent, designs and trademarks such as the Copyright Act or the Trademarks Act. The plaintiff s counsel concluded that the plaintiff does not have a registered trademark over the title Welcome to Abuja so as to bring the passing-off within the exclusive jurisdiction of the Federal High Court. For support, he relied on the decision in Ayman Enterprises Ltd. v. Akuma Industries Ltd. (2003) 44 WRN 64; (2003) 12 NWLR (Pt. 836) 22. Now, the first ground of the preliminary objection is predicated on section 251(1)(f) of the 1999 Constitution (as amended). It provides: 6
251(1) Notwithstanding anything to the contrary contained in this Constitution and in addition to such other jurisdiction as may be conferred upon it by an Act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil causes and matters (f) any Federal enactment relating to copyright, patent, designs, trade marks and passing-off, industrial designs and merchandise marks, business names, commercial and industrial monopolies, combines and trusts, standards of goods and commodities and industrial standards. It is necessary to first identify the plaintiff s cause of action. The view of the learned SAN is that the plaintiff alleges that the defendants converted its intellectual property i.e. a publication titled: Welcome to Abuja. For his part, the learned counsel for the plaintiff posited that the plaintiff s action traverses several heads of action including the common law torts of negligence, breach of confidence, deceit, interference with contract and passing-off. It seems to me that from the averments in the statement of claim, the plaintiff s suit complains mainly of the defendants alleged infringement of its magazine title or trade mark Welcome to Abuja and passing-off. Moreover, the claims of the plaintiff eloquently attest to the fact that the action is mainly about infringement by defendants of plaintiff s Magazine title, Welcome to Abuja. I am unable to see any averment or claim in respect of negligence or interference/breach of contract as contended by Mr. Onuora. 7
Having found that the plaintiff s suit is about the alleged infringement or passing-off by the defendants of the magazine title or trade mark Welcome to Abuja, which court (as between this Court and the Federal High Court) has jurisdiction to entertain the suit? Before I forget, it is not in dispute that the trade mark or magazine title Welcome of Abuja is not registered. In Ayman Enterprises Ltd. v. Akuma Industries Ltd. (supra) cited by the plaintiff s counsel, the plaintiff/appellant instituted an action against the defendants/respondents in the Federal High Court, Lagos claiming, in the main, orders of injunction and damages for passing-off of the trade mark of the appellant s product New Queens which was not registered. The appellant also filed both a motion ex parte and a motion on notice for Anton-Piller injunction. On 1/7/96, the trial court granted the ex parte application and adjourned the suit for the hearing of the motion on notice. On 12/7/96, the respondents filed a motion on notice praying the trial court to set aside the ex parte order. The trial court consolidated the two applications. After hearing the arguments of counsel for the parties, the trial court refused the respondents application to set aside the ex parte order and granted the appellant s motion on notice for Anton-Piller injunction. The respondents appealed to the Court of Appeal. The Court of Appeal allowed the appeal and set aside the ruling of the trial court, but nevertheless held that the trial court had jurisdiction to entertain the suit. Dissatisfied, the appellant appealed to the Supreme Court while the respondents cross-appealed on the aspect of the decision of the Court of 8
Appeal that the trial court had jurisdiction to entertain the suit. In resolving the cross-appeal, the Supreme Court interpreted section 230(1)(f) of the 1979 Constitution (as amended by Decree 107 of 1993), which is similar to section 251(1)(f) of the 1999 Constitution (as amended). It was held that for the Federal High Court to have jurisdiction over a passing-off claim arising from infringement of a trade mark, the trade mark allegedly infringed must have been registered. It was further held that the Federal High Court will only have jurisdiction to entertain an action for passing-off arising from an infringement of a registered trade mark, and the action must have arisen in relation to a Federal enactment. In the words of his lordship, Muhammadu Lawal Uwais, CJN at pages 50-51, paragraphs H-B: It seems to me the jurisdiction of the Federal High Court to deal with actions on passing-off depends on the registration of trade marks as provided by section 3 of the Trade Marks Act, Cap. 436 and section 230 subsection (1)(f) of the 1999 Constitution now section 251(1)(f) of the 1999 Constitution See Patkun Industries Ltd. v. Niger Shoes Manufacturing Co. Ltd. (1988) 5 NWLR (Pt. 93) 138. When the trade mark is unregistered, as in the present case, then the cause of action for passing-off is in common law for tort and action can now be brought in a State High Court in view of the provisions of section 272 subsection (1) of the 1999 Constitution However, in the case of Omnia Nig. Ltd. v. Dyketrade Ltd. (2007) 15 NWLR (Pt. 1058) 576 cited by the learned SAN in his reply on points of law, the plaintiff/respondent adopted the trade mark Super Rocket for its 9
grinding stones for the washing of terrazzo floors. The trade mark was not registered as at the date when the writ of summons was filed. However, before the filing of the statement of claim, it was registered in Nigeria under No. 51136 in class 19 with effect from 10/10/91. The respondent sold substantial quantities of the grinding stones all over Nigeria and had acquired substantial reputation and good will in the trade mark. In December 1992, the defendant/appellant imported consignments of grinding stones branded Super Rocket and sold them. The respondent s claim was that the use of the trade mark Super Rocket by the appellant has infringed its trade mark and was thereby passing-off its grinding stones as and for the respondent s products. One of the issues before the Supreme Court arising from an interlocutory appeal was whether the Court of Appeal was right in holding that the Federal High Court had jurisdiction to entertain a claim instituted upon an unregistered trade mark. The appellant s counsel submitted that the Federal High Court lacks jurisdiction to entertain a claim upon an unregistered trade mark. He relied on the case of Ayman Enterprises Ltd. v. Akuma Industries Ltd. (supra). After reviewing the submissions of counsel and the authorities cited including section 251(1)(f) of the 1999 Constitution, his lordship, Aloma Mariam Mukhtar, JSC (as he then was, now CJN) who presided and read the leading judgment of the Supreme Court held at page 606, paragraphs B-C: The Federal High Court therefore has jurisdiction to hear and determine the claim for passing-off, and I subscribe to the learned 10
counsel for the respondent s argument that the said court has jurisdiction whether or not that claim arises from the infringement of a registered or unregistered trade mark. At any rate, even if the claim was based on the infringement of an unregistered trade mark, as at the time the statement of claim was filed, the trade mark had already been registered. (Underlining mine). By the immutable doctrine of stare decisis or judicial precedent, this Court is bound by the decisions of the Supreme Court. In Omnia Nig. Ltd. v. Dyketrade Ltd., there appears to be a departure from the decision in Ayman Enterprises Ltd. v. Akuma Industries Ltd. For the avoidance of doubt, the decision in the later case is that the Federal High Court has jurisdiction to entertain a suit whether or not the claim arises from the infringement of a registered or unregistered trade mark. It is trite that where there are two inconsistent decisions of a court on an issue, the later in time is to be preferred. See Cardoso v. Daniel (1986) 2 NWLR (Pt. 20) 1 and Seriki v. Solaru (1965) NMLR 1. This is the principle of posterior construction. Therefore, this Court will follow the decision in Omnia Nig. Ltd. v. Dyketrade Ltd. The effect will be that the Federal High Court has jurisdiction to entertain the plaintiff s suit for alleged passing-off or infringement of the plaintiff s magazine title Welcome to Abuja. In other words, this Court lacks the jurisdiction to entertain this suit. Having come to this conclusion, what is the proper order to make? The learned senior counsel for the defendants urged the Court to strike out the 11
suit while the learned counsel for the plaintiff urged the Court to transfer the matter to the Federal High Court. In Aluminium Manufacturing Co. (Nig.) Ltd. v. N.P.A. (1987) 1 NWLR (Pt. 51) 475, the question that arose for determination was whether there is power in a State High Court - in that case the Lagos State High Court - to transfer a matter which it has no jurisdiction to entertain. The Court answered the question in the negative and held that in such cases, the order it has power to make is an order striking out the action. The above decision answers the question under focus. I only need to add that the power of a court to transfer a matter where it finds that it has no jurisdiction can only be conferred by a substantive law such as the law establishing the court. An example is the power of the Federal High Court to transfer cases under section 22(2) of the Federal High Court Act. In my respectful opinion, the proper order to make is to strike out this suit. In the light of the foregoing, there is no need to consider the second issue for determination. The suit is hereby struck out. I make no order as to costs. HON. JUSTICE S. C. ORIJI (JUDGE) Appearance: 1. Chidel Onuora Esq. for the plaintiff. 2. S. E. O. Maliki Esq. for the defendant. 12
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