Saturday, May 4, 2019 5:21 pm
Legal fireworks are set to resume at a Federal High Court sitting in Lagos as two confectionary giants, OK Foods limited and Cadbury UK limited and its Nigerian subsidiary have instituted action over the use of generic trade dresses, colours and shapes in the production of TOP MINT Candy sweet.
In the suit, OK Foods slammed N260 million suit on Cadbury UK limited, Cadbury Nigeria Plc and Registrar of Trade marks asking the court to declare that the design and appearance of its Top Mint Candy do not constitute pass off of TOM-TOM produced by the defendants.
In a statement of claim filled before the court, OK foods Limited alleged that it applied for the registration of the trademark TOP MINT on the 15th of April 2005 and was issued a certificate of Trade Mark RTM 73440 by the Registrar of Trade mark and for over 13 years TOP MINT has been a popular brand with Nigerian consumers and it is strongly associated with menthols flavoured candy.
The company further noted that the label/ get up and trade dress up were approved and registered by National Agency for food and Drug Administration and control (NAFDAC).
However, OK Foods claimed that it is been consistently harassed, threatened and intimidated by Cadbury (UK) Limited through series of cease and desist letters alleging that its TOP MINT shape, design and colours are confusingly similar and infriging on its TOM TOM .
It added that Cadbury had consequently demanded that it should immediately cease further manufacturing, promotion, marketing and offering for sale of its TOP MINT candy because of its confusing similarity to TOM TOM.
But in the suit, OK Foods contended that TOP MINT is not similar nor can it be confused with TOM TOM whether orally or visually.
It also asserted that Cadbury company cannot claim sole ownership of the black and white combination in the candy/confectionery industry as the black and white colour is generically used color combination in the candy/confectionery industry with many other manufacturers using the two combination.
OK Foods avers that it has suffered huge financial losses due to the threat, intimidation, harassment caused to its business by letters from the Cadbury’s solicitors threatening its business and legitimate use of its TOP MINT trademark.
Consequently, OK FOODS while demanding for the sum of N25 0million as general damages against Cadbury (UK) limited for the undue harassment and threat caused to its business and legitimate use of its TOP MINT trade Mark is also claiming the sum of N10 million being the cost of prosecuting the legal action.
The plaintiff is also urging the court to restrain Cadbury (UK) Limited and Cadbury Nigeria Plc and their agents from harassing or preventing it from legitimate use of its TOP MINT and restrain them from monopolising the use of generic trade, colours, shapes in the course of trade.
The plaintiff is also urging the court to order Cadbury (UK) limited to issue a written letter of apology to it within seven days of the date of judgment.
However Cadbury (UK) Limited and Cadbury Nigeria Plc in their statement of defence filed before the court asserted that they are registered proprietors of the TOM TOM with trade mark registration 248430516449327 at the Trade mark registry.
In addition, Cadbury Nigeria Plc asserted that has exclusively manufactured and has been associated with TOM TOM brand since 1970.
The defendants deny OK FOOD’s claim that TOP MINT candy is distinctive and not confusingly similar to any other brand of candy in the market.
The defendants said they discovered in September 2018 that the candy TOP MINT was being sold in the market with similar black and white stripes as its TOM TOM strong menthol candy.
Consequently, the defendants said they instructed their solicitors in Nigeria to write a cease and desist letters to the plaintiff.
But they denied that the letters to OK Foods amounted to harassment, threats and intimidation while they also contended that the plaintiff is trading on the goodwill of the TOM TOM brand by adopting black and white colour patterns of its TOM TOM strong Menthol Candy.
Cadbury therefore urged the court to restrain the plaintiff from further copying the black and white colour and pattern of the TOM TOM which, according to them, constitutes passing off.
The defendants also urged the court to order the plaintiff to pay them the sum of N5 million as general damages and interest on same from January 2019 at the rate of 21% per annum until judgment is passed and thereafter at the rate of 20% per annum and N10million as the cost of defending the suit.