APPENTENG MENSAH & CO. LTD. v. ALPRO INDUSTRIAL PRODUCTS LTD.

JUDGMENT OF HAYFRON-BENJAMIN J.

This is an application by originating motion praying for an order that the register of trade marks be rectified by the removal and expunging therefrom of trade mark No. 16180 registered without sufficient cause in the name of the respondents and for such other order or orders as the court may deem fit.

[p.81]

The applicants are the exclusive agents, distributors and representatives in Ghana of Messrs. Henri Dorot of Clapham Road, London, England, who are manufacturers of a skin lightening cream under the trade name of Dorot, sold in the United Kingdom and also exported for sale and distribution in Ghana. This name has for many years been registered as a trade mark in the United Kingdom under the trade mark registration No. B.893306. When the applicants secured the exclusive agency in Ghana as the representatives and distributors of the United Kingdom company, they applied for the registration in Ghana of the trade mark Dorot in respect of the skin lightening cream distributed by them. This registration was effected on 8 September 1966 under class 48 with registration No. 14659.

The applicants claim that the respondents are importing skin lightening cream in bulk from a company in England known as Amarnani Ltd. together with empty tubes bearing the name Dorin in which the lightening cream is filled in Ghana for sale and distribution within Ghana. They further claim that both Armanai Ltd. and the respondents have adopted this strategy to escape an action for infringement of trade mark in England because the use of the word Dorin on empty tubes exported to Ghana would not in England normally constitute an infringement of the trade mark of Messrs. Henri Dorot. The respondents registered Dorin as their trade mark under class 48 with the No. 16180 on 20 January 1969. The applicants say that they were not aware of the respondents' application for registration and became aware of this when the respondents' products appeared on the market. They further say that the respondents were fully aware of the applicants' trade mark Dorot when they applied for registration of Dorin.

The gravamen of the applicants' complaint is set out in paragraphs (13) and (14) of their affidavit in support of the application in which they stated:

“(13) That the name Dorin so nearly resembles the name Dorot previously registered by the applicants that it has caused confusion to the public and has deceived the public into believing that the Dorin skin