INTELLECTUAL PROPERTY LAW II

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Introduction and Historical Antecedent

Patent law deals with new and industrially applicable inventions. The patent system guarantees a
limited term of protection for a person’s invention in return for the inventor’s undertaking to divulge
the details of his invention and to eventually abandon his rights in the invention after the limited period.
Disclosure, which is at the very heart of a grant of a patent must be total as the proprietor is required to
disclose all relevant information pertaining to his invention to make it possible for others to work the
invention after the limited term of protection. The nature of the level of disclosure
expected of a proprietor of a patent was described by Grove J in Young v Rosenthal as follows:
‘Then he (the applicant) is bound so to describe it in his specification as that
any workman acquainted with the subject…would know how to make it; and
the reason of that is this, that if he did not do when the patent expired he
might have some trade mystery which people would not be able actually to
use in accordance with his invention (although they had a right to use is
after his invention had expired) because they would not know how to make
it.’
Once granted, a patent gives the proprietor monopoly over the invention for a limited period. During
the said period, the proprietor can exclude all others from making use of the invention. The patent
holder, during the period of monopoly, will have exclusive economic rights over the invention, such as
selling, offering for sale, making the product, etc. It is, however, worth noting that the monopoly a
proprietor enjoys over an invention is not absolute, since a mechanism, such as compulsory licence or
non-voluntary licence is in place to serve as a safeguard against abuse of such monopoly rights. As is
the case with other intellectual property rights, a patent is a form of personal property that may be
assigned, licensed, or even charged by way of a mortgage.

History
Throughout history, the concept of patents has evolved to strike a balance between rewarding inventors
for their creative efforts and ensuring that society benefits from the dissemination of new knowledge
and technological progress. Patent is an Intellectual Property right that is granted to protect new non-
obvious inventions which are of industrial application. The history of patents reflects the ongoing
pursuit of effective mechanisms to protect intellectual property while promoting innovation and the
public good. Until recently, the purpose of intellectual property law was to give as little protection as

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possible in order to encourage innovation. Historically, therefore, legal protection was granted only
when necessary to encourage invention, and it was limited in time and scope. This is mainly as a result
of knowledge being traditionally viewed as a public good, in order to allow its extensive dissemination
and improvement. This paper traces the history and development of Patent System.

History: From from 500 BC to 19th Century

The concept of patents, designed to incentivize innovation by granting inventors exclusive rights over
their creations, has a rich historical backdrop dating back to ancient times. The formalization of patent
laws began in the mid-1400s with the Venetian Law of 1474, offering inventors protection for their new
inventions. However, during the reign of Elizabeth I, patents were often used to grant monopolies rather
than encourage innovation, leading to criticism and eventual reform with the Monopoly Act of 1624.
This paved the way for limited patent rights for genuine inventions. Early European patent systems,
such as France's in the mid-1500s, introduced innovations like publishing patent descriptions, while
England, under Queen Anne, implemented requirements for detailed patent descriptions to ensure
clarity. The Venetian Patent Statute of 1474 is considered the earliest codified patent system,
emphasizing novelty and usefulness. The Statute of Monopolies (1624) and the British Statute of Anne
(1710) laid the groundwork for modern patent and copyright laws, establishing the concept of
intellectual property and providing legal frameworks to protect inventors and creators. These historical
developments continue to influence contemporary patent laws, promoting innovation and safeguarding
intellectual property rights.

History: Flaws of the Early Patent System

The early patent system suffered from several critical flaws that impeded its efficacy in fostering
innovation and benefiting society. Patents were frequently granted for imported inventions, allowing
individuals to exploit the work of others rather than promoting genuine creativity. Systematic
examination of patents was lacking, constrained by royal privilege and court interventions. Patents
tended to favor the elite, neglecting broader societal welfare. High application fees made patents
inaccessible to all but the wealthy, excluding the working classes from innovation opportunities.
Government-imposed restrictions, including expropriation without compensation, further hindered the
patent system's effectiveness. Performance requirements limited innovation activities to those with
access to capital, stifling broader participation and productivity. These flaws collectively restricted
innovation potential and hindered societal progress during the early stages of the patent system's
development.

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History: Industrial Revolution and Patent System
The emergence of England's patent law by 1700 marked a crucial step towards protecting intellectual
property and setting the stage for the industrial revolution. However, the lack of systematic property
rights in innovation hampered technological progress. Early thinkers like Adam Smith and John Stuart
Mill highlighted the role of patents in fostering economic development, yet concerns arose regarding
monopolistic tendencies and limitations on knowledge access. Notably, the patent system faced
criticism for impeding innovation, as exemplified by the experiences of inventors such as Thomas
Newcomen and James Watt. Moreover, the high costs and inefficiencies of the British patent system
deterred many inventors from seeking patents, while the Netherlands' experience cast doubt on the
system's significance. Despite these challenges, patents still influenced innovation dynamics, albeit not
universally, with industries such as machinery showing greater reliance on patent protection.
Nevertheless, the allure of financial reward through patents coexisted with alternative paths to success,
such as first-mover advantage, demonstrating the complex interplay of incentives in driving innovation
during the eighteenth century.

History: Harmonization of Patent Law

The history of patent law harmonization traces back to the Paris Convention of 1883, with discussions
expanding in 1983 to include an international grace period. Efforts culminated in a draft Treaty
Supplementing the Paris Convention, discussed at the 1991 Diplomatic Conference. Following its
failure, provisions were incorporated into the TRIPS Agreement, addressing various patent-related
issues but leaving others unresolved. Subsequent discussions in WIPO focused on formalities, leading
to the adoption of the Patent Law Treaty in 2000. Efforts to harmonize substantive patent law began in
2000 with the Substantive Patent Law Treaty, but differing views among WIPO Member States halted
negotiations in 2006.

History: Patent Law In Ghana

Today, most countries have established patent offices and comprehensive legal frameworks for granting
and enforcing patents. These systems are designed to protect inventors' rights, encourage innovation,
and promote economic development by fostering a culture of invention and creativity.
Patents law in Ghana dates back to the colonial era when the country was under British rule. The first
patents legislation in Ghana was the Patents and Designs Ordinance of 1871. This law has since been
revised and updated several times. In 1972, Ghana acceded to the Paris Convention for the Protection of
Industrial Property, which further influenced the development of patent laws in the country. In 2003,
Ghana enacted the Patents Act, which is the current legislation governing patents in the country. The

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Act provides for the registration of patents, the rights and obligations of patent holders, and the process
for challenging the validity of patents. Ghana is also a member of the World Trade Organization (WTO)
and the African Regional Intellectual Property Organization (ARIPO), which have further influenced
the development of its patent laws.

Excerpts and Notes from Eugene Ablade Oninku “THE “VERONICA BUCKET” AND THE
INVENTIVE STEP REQUIREMENT UNDER THE PATENT LAW OF GHANA” (2021)
Justification for Patent Law
The justification for a patent system was succinctly captured by Aldous J in Chiron Corporation v
Organon Teknika Ltd (No 10) when he said that almost every country has adopted a patent system
because:

‘…it is generally accepted that the opportunity of acquiring monopoly rights in an invention
stimulates technical progress in at least four ways. First, it encourages research and invention;
secondly, it induces an inventor to disclose his discoveries instead of keeping them secret;
thirdly, it offers a reward for the expense of developing inventions to the state at which they are
commercially practical and, fourthly, it provides an inducement to invest capital in new lines of
production which might not appear profitable if many competing producers embarked on them
simultaneously… It is inherent in any patent system that a patentee will acquire a monopoly
giving him a right to restrict competition and also enabling him to put up or at least maintain
prices. That affects the public and is contrary to the public interest, but it is the recognised price
that has been accepted to be necessary to secure the advantages to which I have referred.’

In line with the reasons stated by Aldous J in Chiron Corporation v Organon Teknika Ltd (No 10),
various theories have been propounded as justification for the existence of a patent system which are
still of relevance [Link] various theories are as follows:
(1) The contract theory
(2) The reward theory
(3) The incentive theory
(4) The natural law or moral rights theory

The Contract Theory

The contract theorists are of the view that there is the need for temporary protection to be afforded
inventions in exchange for making such knowledge associated with the invention available to the public

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after the limited period of protection. The information available to the public after the limited period of
protection will stimulate the creation of new technologies and increase industrial activity. This theory is
manifested through the monopoly rights associated with the patent regime, based upon which a patent
holder is granted protection for a limited period of time to exploit the invention economically to the
exclusion of others, after which the information concerning the invention falls into the public domain
for use by the general public.

The Reward Theory

This school of thought is of the opinion that inventors should be rewarded as a result of their useful
inventions. Theorists belonging to this school of thought, therefore advocate for the law to be used as a
device to safeguard this reward to ensure that inventors can receive sufficient compensation or enjoy
the fruits of their invention. It is in line with this theory that the patent regime grants the proprietors of
inventions the right during the limited period of monopoly to exclude all others from making use of
their inventions. For instance, under Act 657 of Ghana, during the limited period of monopoly, the
patent holder will have exclusive economic rights over the invention, such as selling, offering for sale,
making the product, among others.

The Incentive Theory

This theory builds on the reward theory, which focuses on the compensation packages associated with
being a patent holder. Towards this end, proponents of this theoryadvocate for a strong patent system,
whereby inventors are rewarded for their inventions, which will incentivise others to also come out with
new inventions, as well as to invest the necessary time and capital. This theory has influenced the
patent regime through the protection granted to a patent holder for a limited period of time to exploit
his/her invention economically to the exclusion of others. The economic benefits associated with this
monopoly right, it is believed, will encourage others to come out with other inventions for the public
good.

The Natural Law/ Moral Rights Theory

This theory accords with the views on property rights held by philosophers like John Locke. Proponents
of this theory hold the view that individuals have a property right in their own ideas, which has to be
protected from being infringed upon by others. The main tenets of this theory is that law stems from
morality and that morality is derived from nature. Pursuant to this theory, the patent regime is required
to put in place punitive measures to serve as a deterrent to others from infringing upon the rights of
patent holders. For example, under Act 657 of Ghana, a person who knowingly infringes upon the

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rights of a patent holder is liable to a fine or to a term of imprisonment, unless the exploitation of the
patent is by the government or authorised agent for public interest reasons; the exploitation is based on
a non-voluntary or compulsory licence and in instances where the exploitation falls within the stated
category under section 11(4) of the Act.

It has however been noted by Mazzoleni and Nelson that, the lines between the abovediscussed theories
are sometimes blurry since they can overlap. For instance, being rewarded for an invention, which falls
within the ambit of the reward theory, can invariably motivate others to come out with new inventions
(incentive theory). Also, the monopoly for a limited period in return for the dissemination of
information in respect of the invention, which is attributable to the contract theory, invariably accords
with the natural law or moral rights theory, which advocates for the protection of the inventive ideas
and frowns up any infringement of such idea. It is thus opined that neither of the theories functions on
its own and that a patent regime made up of the combination of all the theories is necessary for the
justification of patent rights.

Patent Rights under Ghanaian Law

The Patents Act of Ghana, 2003 (Act 657) is the legislation that governs the protection and enforcement
of patents in Ghana. A patent has been defined by the Act as the title granted to protect an invention.

Section 1—Definitions of Patents and Inventions.

(1) Patent means the title granted to protect an invention.
(2) Invention means an idea of an inventor which permits in practice the solution to a specific
problem in the field of technology.
(3) An invention may be, or may relate to, a product or a process.

An attempt has also been made under the Act to define an invention to mean an idea of an inventor
which permits in practice the solution to a specific problem in the field of [Link] invention
under the Act may also be in respect of a product or process. Patents are territorial, as a result of which
a grant of a patent in Ghana gives the inventor the rights and protection of the invention only within
Ghana.

Effect of a Grant of Patent under Ghanaian Law

The grant of patent vests in an inventor, exclusive rights of the invention in Ghana for a period of
twenty (20) years commencing from the date of filing the patent application, during which period the

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inventor enjoys the exclusive use of the invention. Annual renewal is however required, failing which
the patent risks being lapsed. The prior consent of the inventor is necessary to exploit the patented
invention, which involves the making, importing, offering for sale, selling and using the product or
process, or stocking the product for the purposes of offering for sale, selling, or using. The patent owner
can also institute legal proceedings against anyone who infringes the patent by exploiting it without his
consent. An invention can however be exploited by the Government of Ghana without the prior consent
of the owner for public interest reasons and for anti-competitive practices, subject to the payment of
adequate remuneration to the patent owner.

Section 11—Rights Conferred by Patent.

(1) The exploitation of the patented invention in the country by a person other than the owner
of the patent shall require the owner's consent.

(2) For the purposes of this section, "exploitation" of a patented invention means any of the
following acts
(a) where the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling and using the product; or
(ii) stocking the product for the purposes of offering for sale, selling or using;
(b) where the patent has been granted in respect of a process:
(i) using the process; or
(ii) doing any of the acts referred to in paragraph (a) in respect of a product obtained
directly by means of the process.

(3) The owner of the patent shall, in addition to any other rights, remedies or actions available
to the owner, have the right, subject to subsection (4) and section 13, to institute court
proceedings against any person who infringes the patent by performing, without the consent of
the owner; any of the acts referred to in subsection (2) or who performs acts which may lead to
infringement.
(5) The right of prior use referred to in paragraph (d) may be transferred or devolve only
together with the enterprise or business, or with that part of the enterprise or business, in which
the use or preparation for use has been made.

(6) At the request of the owner of the patent or of a licensee if the licensee has requested the
owner to institute court proceedings for a specific relief and the owner has refused or failed to

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 do so, the court may grant an injunction to prevent infringement or an imminent infringement,
award damages and grant any other relief provided for in the general law.

(7) For the purpose of civil proceedings in respect of the infringement of rights of the owner, if
the subject matter of a patent is a process for obtaining a product, the court may order the
defendant to prove that the process used to obtain an identical product is different from the
patented process.

Section 12—Duration; Annual Fees.

(1) Subject to subsection (2), a patent shall expire twenty years after the filing date of the
application for the patent.

(2) In order to maintain the patent or patent application, an annual fee shall be paid in advance
to the Registrar for each year, starting one year after the filing date of the application for grant
of the patent.

(3) A period of grace of six months shall be allowed for the late payment of the annual fee on
payment of the prescribed surcharge.

(4) Where an annual fee is not paid in accordance with this section, the patent application shall
be deemed to have been withdrawn or the patent shall lapse.

Basic Requirements for the Grant of Patent under Ghanaian Law

Before a discussion on the basic requirements for the grant of a patent under Ghanaian law, it is
pertinent to state that an application for a patent in Ghana will not be granted if the specification does
not disclose the invention in a manner sufficiently clear and complete for the invention to be carried out
by a person having ordinary skill in the art. The invention is also required to particularly indicate, at
least, one mode known to the applicant for carrying out the invention. The claim or claims must also
define the matter for which protection is sought. These requirements are necessary to ensure that an
applicant for a patent does not withhold any important information necessary to work the invention by a
person skilled in the art when information in respect of the invention falls within the public domain
after the monopoly period is over. In line with this patent law principle, in Novartis AG v Johnson &
Johnson Medical Ltd, the English Court of Appeal revoked a patent for extended wear contact lenses

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for insufficiency. Jacob LJ was of the view that the instructions contained in the patent did not enable
the skilled person, lacking inventive skill, to work the invention over the whole area claimed.

On the issue of the basic requirements of patentability under Ghanaian law, it can be gleaned from Act
657 that in order for an invention to receive patent protection it has to be new, it must involve an
inventive step, it must be industrially applicable, and must not also be excluded from patent
protection under the Act. It is important to add that all the aforementioned requirements must be met
before a patent application will be granted under Ghanaian law.

The following inventions, even if they are inventions within the meaning of section 1, are
excluded from patent protection:
(a) discoveries, scientific theories and mathematical methods;

(b) schemes, rules or methods for doing business, performing purely mental acts or playing
games;

(c) methods for treatment of the human or animal body by surgery or therapy, as well as
diagnostic methods practised on the human or animal body; this provision shall not apply to
products for use in any of those methods.

(d) inventions, the prevention within the country of the commercial exploitation of which is
necessary to protect public order or morality, which includes:
(i) the protection of human, animal or plant life or health; or
(ii) the avoidance of serious prejudice to the environment; if the exclusion is not made
because the exploitation is prohibited,

(e) plants and animals other than micro-organisms;

(f) biological processes for the protection of plants or animals other than non-biological and
micro-biological processes; and

(g) plant varieties.

Section 3—Patentable Inventions.

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 (1) An invention is patentable if it is new, involves an inventive step and is industrially
applicable.

(2) An invention is new if it is not anticipated by a prior art.

(3) Prior art shall consist of everything disclosed to the public, anywhere in the world, by
publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing
or, where appropriate,the priority date, of the application claiming the invention.

(4) For the purposes of subsection (3), disclosure to the public of the invention shall not be
taken into consideration if it occurred within twelve months preceding the filing date or, where
applicable, the priority date of the application, and if it was by reason or in consequence of acts
committed by the applicant or the applicant's predecessor in title or of an abuse committed by a
third party with regard to the applicant or the applicant's predecessor in title.

(5) An invention shall be considered as involving an inventive step if, having regard to the
prior art relevant to the application claiming the invention and as defined in subsection (3), it
would not have been obvious to a person having ordinary skill in the art.

(5) An invention shall be considered industrially applicable if it can be made or used in any
kind of industry.

Novelty Requirement (Invention must be new; not anticipated by prior art)

To qualify for the grant of a patent, the invention is required to be new. In the contemporary world
where most inventions build on prior knowledge, the novelty and inventive step requirements are in
place to ensure that patents protect technology that crosses the threshold of triviality, in order to prevent
a situation where a slight improvement in an existing technology can substitute an earlier patent,
thereby depriving the current patent holder of his profit.

Section 3(2) of Act 657 of Ghana has assigned a special meaning to the term ‘new’ as an invention that
is not anticipated by the prior art. The prior art has also been defined by the Act as consisting of
everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral
disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the
application claiming the invention. Also, the disclosure to the public of the invention shall not be taken

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into consideration if it occurred within twelve months preceding the filing date or, where applicable, the
priority date of the application, and if it was by reason or in consequence of acts committed by the
applicant or the applicant's predecessor in title or of abuse committed by a third party with regard to the
applicant or the applicant's predecessor in title.

The prior art consists of everything disclosed to the public, anywhere in the world – Windsurfing
International v. Tabur Marine. By publication in tangible form – In Re Hall Or by oral disclosure,
by use or in any other way. Publication or disclosure of novelty destroying matter must be prior to the
filing date or, where appropriate, the priority date, of the application claiming the invention.

Will matters conveyed in confidence anticipate an invention?

It was held further in Pall Corporation v. Commercial Hydraulics [1990] FSR 329 that delivering
samples to persons in confidence who knew that they were experimental and secret did not make the
invention available to the public, and so did not prejudice the novelty of the invention.

Disclosure to a person or persons in confidence does not invalidate a patent but disclosure to a person in
the absence of an implied or express obligation of confidence will destroy the novelty, even if the
person chooses on his own to keep it a secret. This is known as a de facto secrecy which destroys the
novelty of the invention. Oral disclosures will however not destroy the novelty of an invention if they
are made in confidence, whether implied or express. The prior art consists of everything disclosed to
the public, anywhere in the world, and the acts or series of acts that constitute the publication of the
invention do not have to be done on a wide scale. Thus, in Windsurfing International Inc v Tabur
Marine (Great Britain) Ltd, an application for the grant of a patent in respect of a sailboard was
declared invalid for lack of novelty (as well as lack of inventive step), because a similar sailboard had
earlier been built and used in public for a few weekends at a caravan site at Hayling Island in
Hampshire by a 12-year-old boy.

If the disclosure in respect of the invention is made even to a single member of the public under
circumstances that would not impute confidence, either implied or express, that would suffice to make
it available to the public --- Lux Traffic Controls Ltd v Pike Signals Ltd (1993) RPC 107.

The definition of the prior art under section 3(3) of Act 657 of Ghana demonstrates that the novelty step
basically deals with whether or not the invention has been anticipated by a previous patent, or by

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publication, either in tangible form or orally or use anywhere in the world. The prior art is in effect
intended to establish that there is no evidence that the invention was already published as at the filing or
the priority date.

Inventive Step Requirement

For an invention to qualify for the grant of a patent under Ghanaian law, it must also embody an
inventive step. An invention shall be considered as embodying an inventive step if, having regard to the
prior art relevant to the application claiming the invention and as defined in subsection (3), it would not
have been obvious to a person having ordinary skill in the art.

The word ‘obvious’ has not been defined by Act 657 of Ghana. However, it has been stated that it is not
necessary to go beyond the dictionary definition but to take it to mean ‘very plain’.48 The ordinary
skilled person in the art does not need to have inventive faculties but can be someone or a team of
persons with a wide knowledge of the technology within which the invention lies. The critical issue is
therefore whether the invention would be obvious to such ordinary skilled person(s). In Pfizer Ltd’s
Patent, this ordinary skilled person in the art has been described as someone who is required to offer an
objective test and someone who neither misses the obvious nor stumbles on the inventive; one who has
looked at and read publicly available documents and who knows of public uses in the prior art.

Whether or not an invention is obvious is a question of law and fact. For instance, in Lux Traffic
Controls Ltd v Pike Signals Ltd, the defendant claimed that the plaintiff’s second patent in relation to
traffic signal controls was invalid on a number of grounds. The defendant without adducing any
evidence to substantiate its claim argued that the second patent was obvious. However, owing to the
lack of evidence to buttress this claim, the court expressed surprise that the invention had not been
proposed before it if that was the case.

Due to the difficulty associated with the determination of the inventive step requirement, the courts
have proffered guiding principles to aid in such determination. In Windsurfing International Inc v
Tabur Marine (Great Britain) Ltd, the four-step formulation principle to test the obviousness of an
invention is as follows:

(1) Identify the ‘inventive step’ embodied in the patent

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 (2) Impute to a normally skilled but unimaginative addressee what was common general
knowledge in the art at the priority date;

(3) Identify the differences, if any, between the matter cited as part of the state of the art and
the alleged invention; and

(4) Decide whether those differences, viewed without any knowledge of the alleged invention,
constitute steps that would have been obvious to the skilled man or whether they require a
degree of innovation.
The four-step formulation in Windsurfing was subsequently reformulated by the Court of Appeal in
Pozzoli SpA v BDMO SA, where Jacob LJ suggested that the Windsurfingtest would be better restated
as follows:
(1)(a)Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common knowledge of that person.
(2) Identify the inventive concept of the claim in question or if that cannot readily be done,
construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state
of the art’ and the inventive concept of the claim or the claim construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences
constitute steps that would have been obvious to the person skilled in the art, or do they require
any degree of invention?

Jacob LJ’s reformulation of the test has been applied in a number of cases, such as Aerotel Ltd v
Wavecrest Group Enterprises Ltd, Dyson Technology Ltd v Samsung Gwangju Electronics Co
Ltd , etc.

Despite the popularity of the Windsurfing/Pozzoli test among judges, section 3(5) of Act 657 of Ghana
gives a statutory definition of an inventive step, which is straight forward and needs just a one-step test,
which is whether the invention is not obvious to a person having ordinary skill in the art. The one-step
test under Act 657 can be formulated to enquire whether, based on the opinion of a person with total
knowledge of the state of the art, the invention was obvious at its priority date.

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As noted, granting patents to seemingly obvious inventions is contrary to public policy, as well as the
aim of patent law, whose object has always been to encourage genuine inventions without imposing
undue restraint upon normal industrial development.

Merely taking two known older inventions and sticking them together to achieve a known result
without more will not necessarily be regarded as an inventive step. For example, in Williams v Nye,
the plaintiff took out a patent for an improved mincing machine made up of a combination of two old
machines: a mincing machine and a filling machine. What the plaintiff did was to take the cutter from
one machine and simply replace it with the cutter from the other machine. When the plaintiff sued the
defendant for infringement of the patent, the defendant claimed that the patent was invalid, and this
claim was successful because the court held that there was an insufficient invention. The court per
Cotton LJ reasoned as follows:

…in order to maintain a patent, there must be a sufficient exercise of the inventive power or
inventive faculty. Sometimes very slight alterations will produce very important results, and
there may be in those very slight alterations very great ingenuity exercised or shown to be
exercised by the patentee.

Even though, per the dictum of Cotton LJ in Williams v Nye, the court accepted that a slight alteration
which produces important results can be the result of ingenuity and thus be considered as having an
inventive step.

In order to put matters into proper context, I will set out the salient facts and holding of the court in
Haberman v Jackel International Ltd. This case had to do with a relatively uncomplicated invention,
comprising a cup known as the ‘Anyway cup’, which design involved what was a simple idea, which is
the use of a simple slit valve to prevent leakage of fluid from the outlet of a training cup for infants to
assist young children in making the transition from suckling to proper feeding. Against the patent, it
was argued that what had been proffered was a simple solution to a known problem, using readily
available materials. On the patentee’s part, it was asserted that the inventiveness lay in the fact that the
cup sealed between sips and so avoiding leakage. The court however held that the patentee had crossed
the threshold of inventive step and thus held as follows:

‘Mrs. Haberman has taken a very small and simple step but it appears to me to be a step which
any one of the many people in this trade could have taken at any time over at least the

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 preceding ten years or more. In view of the obvious benefits which would flow from it. I have
come to the conclusion that had it really been obvious to those in the art it would have been
found by others earlier…(but) it fell to a comparative outsider to see it. It is not obvious… Mrs.
Haberman’s patent discloses something sufficiently inventive to deserve the grant of a
monopoly.’

Although the decision of the court in Haberman is praiseworthy to the extent that it seeks to promote
innovations that involve small steps, provided they embody sufficient invention, it is respectfully
submitted that the line of reasoning by Laddie J in that case which seems to suggest that ‘if the
invention had been obvious to those in the art it would have been found by others earlier,’ is
problematic. This is because that line of reasoning seems to suggest that an invention is not obvious
simply because others have not taken the steps to come out with that invention within a particular art. It
is further submitted that such a line of reasoning runs the risk of whittling down the inventive step
requirement, thereby granting monopolies easily.

The decision in Haberman can however be contrasted with the decision in Williams v Nye because
whereas in Haberman, the improvement introduced by the invention was based on an appreciable level
of ingenuity due to its ability to automatically prevent leakage, which was a remarkable improvement
on the existing technology, in Williams v Nye, the plaintiff merely combined two older inventions to
achieve a known result without more. The plaintiff simply took the cutter from one machine and
replaced it with the cutter from the other machine. It was on that basis that the court held that there was
an insufficient invention.

Industrial Applicability Test

The next requirement under section 3(1) of Act 657 is that the invention is capable of industrial
application. According to Act 657, an invention shall be considered industrially applicable if it can be
made or used in any kind of industry. It can be gleaned from the definition of the industrial applicability
concept under Act 657 that this requirement simply requires that the invention should be something that
can be produced or used industrially. It has also been noted that from the definition of an industrial
application under section 3(1) of Act 657, it appears there is no limit as to which industry the invention
could be applicable.65 It is this industrial application requirement that distinguishes patents from other
forms of intellectual property such as original works of copyright, and also demonstrates the practical
nature of patent law. The meaning of the term ‘industry’ was construed broadly to include all

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manufacturing, extracting, and processing activities of enterprises that are carried out continually,
independently, and for financial (commercial) gains.

This patentability requirement though often not a subject of dispute has become an issue in a few cases.
For instance, in Hiller’s Application, an application for a patent for an improved plan for underground
service distribution schemes for housing estates, which involved the location of gas and water mains,
electricity cables, and storm and foul water drains was turned down by the court. An appeal against the
decision was refused on the grounds that the scheme could not constitute a ‘manner of manufacture’.
Also in C’s Application, an application in respect of an invention made up of musical notation, in
which sharps and flats were printed in various colours and sizes compared to natural notes, was turned
down.

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 PATENT APPLICATION, GRANT AND MAINTENANCE

Patent Application Procedure

An application for the registration of a patent must be filed with the Registrar and include specific
components. These components consist of a request, a description, one or more claims, one or more
drawings if necessary, and an abstract. Additionally, the application incurs a prescribed application fee.
The request portion of the application is essential, containing a petition for the granting of the patent, as
well as detailed information about the applicant, inventor, and any appointed agent, along with the title
of the invention. If the applicant is not the inventor, a statement justifying the applicant's right to the
patent is required.

The description provided within the application must be comprehensive enough to enable a person with
ordinary skill in the relevant field to carry out the invention. It should include at least one known mode
of carrying out the invention. The claims section of the application defines the subject matter for which
protection is sought, and these claims must be clear, concise, and fully supported by the description.
Drawings are necessary when they aid in understanding the invention.

The abstract serves the purpose of providing technical information about the invention but does not
impact the interpretation of the scope of protection. Finally, the applicant retains the option to withdraw
the application at any point before it is deemed ready for grant. This withdrawal can occur during any
stage of the application process.

Section 5—Application.
(1) An application for the registration of a patent shall be filed with the Registrar and shall
contain a request, a description, one or more claims, one or more drawings where required, and
an abstract.
(2) The application shall be subject to the payment of the prescribed application fee.
(3) The request shall contain a petition to the effect that a patent be granted, the name of and
other prescribed data concerning the applicant, the inventor and the agent, if any, and the title of
the invention.
(4) Where the applicant is not the inventor, the request shall be submitted with a statement
justifying the applicant's right to the patent.
(5) The description shall disclose the invention in a manner sufficiently clear and complete for
the invention to be carried out by a person having ordinary skill in the art, and shall, in particular,

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indicate, at least, one mode known to the applicant for carrying out the invention.
(6) The claim or claims shall define the matter for which protection is sought.
(7) Claims shall be clear and concise and shall be fully supported by the description.
(8) Drawings shall be required when they are necessary for the understanding of the invention.
(9) The abstract shall merely serve the purpose of technical information; in particular, it shall not
be taken into account for the purpose of interpreting the scope of the protection.
(10) The applicant may, up to the time when the application is in order for grant, withdraw the
application at any time during its pendency.

It is pertinent to state that an application for a patent in Ghana will not be granted if the specification
does not disclose the invention in a manner sufficiently clear and complete for the invention to be
carried out by a person having ordinary skill in the art. The invention is also required to particularly
indicate, at least, one mode known to the applicant for carrying out the invention. The claim or claims
must also define the matter for which protection is sought. These requirements are necessary to ensure
that an applicant for a patent does not withhold any important information necessary to work the
invention by a person skilled in the art when information in respect of the invention falls within the
public domain after the monopoly period is over. In line with this patent law principle, in Novartis AG
v Johnson & Johnson Medical Ltd, the English Court of Appeal revoked a patent for extended wear
contact lenses for insufficiency. Jacob LJ was of the view that the instructions contained in the patent
did not enable the skilled person, lacking inventive skill, to work the invention over the whole area
claimed.

A patent application is required to relate to one invention only. Where more than one inventions are
involved, they must be such as to form a single general inventive concept. Patent is granted in respect
of one invention or one inventive concept. Reasons include clarity when construing patent claims. More
than one invention, applicant is required to divide application but no need to file new application.
Divisional applications are subject to disclosures in original application. Failure to comply with
requirement of unity of invention is not ground for invalidation.

Formality Examination – matters concerned with proper filling of the application forms, providing
required information, paying required fees, etc. Substantive Examination – matters relating to the legal
requirements for the grant of a patent such as novelty, inventive step, industrial applicability, whether
excluded from patent protection (patentable invention). In Ghana, only formal examination is

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conducted but substantive examination are sent to accredited international search and examination
authorities… but grant is eventually made by national office.

Right of Priority
An application for a patent may include a declaration asserting priority, according to the provisions
outlined in the Schedule, for one or more earlier national, regional, or international applications filed by
the applicant or the applicant's predecessor in title. These earlier applications must have been filed in a
state party to the Convention or in a member of the World Trade Organization.

If such a declaration is included in the application, the Registrar has the authority to request the
applicant to provide, within the specified time frame, a certified copy of the earlier application from the
relevant Patent Office where it was filed.

The consequences of making such a declaration are outlined in the Schedule and are binding. However,
if the Registrar determines that the requirements of this section have not been met, the declaration will
be deemed not to have been made.

Section 7—Right of Priority.

(1) An application may contain a declaration claiming the priority, as provided for in the Schedule, of
one or more earlier national, regional or international applications filed by an applicant or the
applicant's predecessor in title
(a) in or for any state party to the Convention; or
(b) in or for any member of the World Trade Organisation.
(2) Where the application contains a declaration under subsection (1), the Registrar may request that the
applicant furnish, within the prescribed time limit, a copy of the earlier application certified as correct
by the Patent Office with which it was filed.
(3) The effect of the declaration shall be as provided in the Schedule.
(4) Where the Registrar finds that the requirements under this section have not been fulfilled, the
declaration shall be considered not to have been made.

Filing Date and Examination

The Registrar is tasked with determining the filing date of a patent application, which is considered to
be the date of receipt of the application if certain criteria are met upon receipt. These criteria include
indications within the documents filed that express or imply the desire for a patent grant, the ability to

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establish the identity of the applicant, and the presence of a portion that appears to be a description of
an invention.

In cases where the Registrar finds that the application did not meet these requirements at the time of
receipt, the applicant will be invited to submit the necessary corrections. Upon receipt of the required
corrections, the filing date will be considered as the date of receipt of the corrections. However, failure
to make the necessary corrections will result in the application being treated as if it were never filed.

If the application refers to drawings that are missing, the Registrar will request the applicant to provide
them. Upon compliance, the filing date will be the date of receipt of the missing drawings. If the
applicant fails to comply, the filing date will remain the date of receipt of the application, and any
references to the missing drawings will be disregarded.

Where the Registrar is of the opinion that the application complies with the requirements
indicated in subsection (6), the Registrar shall cause the application to be examined as to whether
the requirements of sections 1(2) and (3), 2, 3, 5 (5), (6), (7), (8), and 6 have been complied with.

If the Registrar concludes that the application meets these requirements, it will be examined further to
ensure compliance with additional specified sections. In this examination, the Registrar will consider
various factors such as international search reports, examination reports, and decisions related to
corresponding foreign applications. These factors aid in determining the application's compliance with
specific sections outlined in the patent law.

Section 9—Filing Date; Examination.

(1) The Registrar shall accord as the filing date, the date of receipt of the application, if, at the time of
receipt, the documents filed contain
(a) an express or implicit indication that the granting of a patent is sought;
(b) indications allowing the identity of the applicant to be established;
(c) a part which, on the face of it, appears to be a description of an invention.
(2) Where the Registrar finds that the application did not at the time of receipt, fulfil the requirements
referred to in subsection (1), the Registrar shall invite the applicant to file the required correction and
shall accord as the filing date, the date of receipt of the required correction.
(3) Where no correction is made, the application shall be treated as if it had not been filed.

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(4) Where the application refers to drawings, which are not included in the application, the Registrar
shall invite the applicant to furnish the missing drawings.
(5) Where the applicant
(a) complies with the invitation, the Registrar shall accord as the filing date, the date of receipt of
the missing drawings; or
(b) does not comply with the invitation the Registrar, shall accord as the filing date, the date of
receipt of the application and any reference to the missing drawings shall be treated as non existent.
(6) The Registrar, after according the filing date, shall examine whether the application complies
with the requirements of section 5 subsections (1), (2), (3) and (4), and the other requirements
designated as formal requirements and whether information requested under section 8, if any, has
been provided.
(7) Where the Registrar is of the opinion that the application complies with the requirements
indicated in subsection (6), the Registrar shall cause the application to be examined as to whether
the requirements of sections 1(2) and (3), 2, 3, 5 (5), (6), (7), (8), and 6 have been complied with.
(8) For the purposes of subsection (7), the Registrar shall take into account
(a) the results of any international search report and any international preliminary examination report
established under the Treaty in relation to the application; or
(b) a search and an examination report submitted under section 8(2)(a) which relates to a corresponding
foreign application; or
(c) a final decision submitted under section 8(2)(c) on refusal to grant a patent on a corresponding
foreign application; or
(d) a search and an examination report which was carried out upon the request of the
Registrar by an external search and an examination authority.

Grant, Renewals and Duration

When the Registrar evaluates a patent application and determines its compliance with the requirements
outlined in sections 9(6) and (7), distinct actions are taken accordingly. If the application meets these
requirements, indicating full compliance, the Registrar proceeds to grant the patent. Conversely, if the
application fails to meet these stipulations, the Registrar refuses the application and notifies the
applicant of the refusal.

Upon granting a patent, the Registrar carries out several administrative tasks. Firstly, the Registrar
publishes a reference regarding the patent grant in the prescribed manner. Secondly, the Registrar issues
a certificate of the patent grant along with a copy of the patent to the applicant. Additionally, the

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Registrar records the patent and makes copies of the patent available to the public upon payment of the
prescribed fee.

It is incumbent upon the Registrar to endeavor to provide a final decision on the application within a
reasonable timeframe, aiming not to exceed two years from the commencement of the examination
outlined in section 9(7).

Furthermore, the Registrar is obligated to make changes to the text or drawings of the patent upon the
owner's request, if such modifications serve to limit the extent of the protection conferred by the patent.
However, no changes are permitted if they would result in the disclosure contained in the patent
exceeding the disclosure initially provided in the application upon which the patent was granted. This
provision ensures that the scope of protection remains consistent with the original application's
disclosure.

Section 10—Grant of Patent; Changes in Patents.

(1) Where the Registrar finds that
(a) the application complies with the requirements under section 9 (6) and (7), the Registrar shall grant
the patent;
(b) the application does not comply with the requirements under section 9 (6) and (7), the Registrar
shall refuse the application and notify the applicant of the refusal.
(2) When the Registrar grants a patent, the Registrar shall
(a) publish a reference of the grant of the patent in the prescribed manner;
(b) issue to the applicant a certificate of the grant of patent and a copy of the patent;
(c) record the patent;
(d) make available copies of the patent to the public, on payment of the prescribed fee.
(3) The Registrar shall, whenever possible, give a final decision on the application not later than two
years after the commencement of the examination referred to in section 9 (7).
(4) The Registrar shall, upon the request of the owner of the patent, make changes in the text or
drawings of the patent in order to limit the extent of the protection.
(5) The Registrar shall not make any change where the change would result in the disclosure contained
in the patent going beyond the disclosure contained in the initial application on the basis of which the
patent is granted.

Duration

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A patent is granted with a lifespan of twenty years, starting from the date the patent application was
filed, with certain exceptions. To maintain the patent's validity or that of the patent application, an
annual fee must be paid in advance to the Registrar. This obligation commences one year after the
initial filing date of the patent application. In instances where payment is not made within the stipulated
timeframe, a grace period of six months is allowed for late payment, albeit subject to a prescribed
surcharge. However, if the annual fee remains unpaid even during the grace period, consequences ensue.
Specifically, the patent application is deemed to have been withdrawn or the patent itself lapses,
forfeiting its legal protection. This mechanism ensures that patents remain in force only when actively
maintained through timely payment of the required fees.

Section 12—Duration; Annual Fees.

(1) Subject to subsection (2), a patent shall expire twenty years after the filing date of the application
for the patent.
(2) In order to maintain the patent or patent application, an annual fee shall be paid in advance to the
Registrar for each year, starting one year after the filing date of the application for grant of the patent.
(3) A period of grace of six months shall be allowed for the late payment of the annual fee on payment
of the prescribed surcharge.
(4) Where an annual fee is not paid in accordance with this section, the patent application shall be
deemed to have been withdrawn or the patent shall lapse.

Rights Conferred on Patent Holder

Section 11 outlines the rights conferred by a patent to its owner and the actions that constitute
infringement. According to subsection (1), any exploitation of the patented invention within the country
by someone other than the owner necessitates the owner's consent. The term "exploitation" is further
defined in subsection (2), encompassing various acts such as making, importing, selling, or using the
patented product, as well as using the patented process or performing any acts leading to infringement.

Additionally, subsection (3) grants the patent owner the right to initiate court proceedings against
anyone infringing upon the patent or engaging in activities that could lead to infringement. However,
certain limitations to patent rights are outlined in subsection (4), including acts performed on articles
already on the market with the owner's consent, acts for experimental purposes, and acts by individuals
who were using the invention before the patent application's filing date in good faith.

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Subsection (5) specifies that the right of prior use can only be transferred with the corresponding
enterprise or business. Moreover, subsection (6) empowers the court to grant injunctions, damages, and
other reliefs upon the request of the patent owner or licensee if the owner refuses or fails to initiate
court proceedings.

In civil proceedings concerning infringement, subsection (7) allows the court to compel the defendant
to prove that their process for obtaining an identical product differs from the patented process. Finally,
subsection (8) establishes a presumption that an identical product produced without the patent owner's
consent was obtained through the patented process, unless proven otherwise, particularly if the product
obtained by the patented process is new. These provisions serve to uphold the rights of patent owners
while balancing the interests of innovation and competition within the legal framework.

Section 11—Rights Conferred by Patent.

(1) The exploitation of the patented invention in the country by a person other than the owner of the
patent shall require the owner's consent.
(2) For the purposes of this section, "exploitation" of a patented invention means any of the following
acts
(a) where the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling and using the product; or
(ii) stocking the product for the purposes of offering for sale, selling or using;
(b) where the patent has been granted in respect of a process:
(i) using the process; or
(ii) doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by
means of the process.
(3) The owner of the patent shall, in addition to any other rights, remedies or actions available to
the owner, have the right, subject to subsection (4) and section 13, to institute court proceedings
against any person who infringes the patent by performing, without the consent of the owner; any
of the acts referred to in subsection (2) or who performs acts which may lead to infringement.
(4) The rights under the patent shall not extend to
(a) acts in respect of articles which have been put on the market in any country by the owner of the
patent or with the owner's consent; or
(b) the use of articles on aircraft, vehicles or vessels of other countries which temporarily or
accidentally enter the airspace, territory or waters of Ghana; or
(c) acts done only for experimental purposes relating to a patent invention; or

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 (d) acts performed by a person who in good faith, before the filing or, where priority is claimed, the
priority date of the application on which the patent is granted in the country, was using the
invention or was making effective and serious preparations for the use.
(5) The right of prior use referred to in paragraph (d) may be transferred or devolve only together
with the enterprise or business, or with that part of the enterprise or business, in which the use or
preparation for use has been made.
(6) At the request of the owner of the patent or of a licensee if the licensee has requested the owner to
institute court proceedings for a specific relief and the owner has refused or failed to do so, the court
may grant an injunction to prevent infringement or an imminent infringement, award damages and
grant any other relief provided for in the general law.
(7) For the purpose of civil proceedings in respect of the infringement of rights of the owner, if the
subject matter of a patent is a process for obtaining a product, the court may order the defendant to
prove that the process used to obtain an identical product is different from the patented process.
(8) Any identical product when produced without the consent of the patent owner shall, in the absence
of proof to the contrary, be deemed to have been obtained by the patented process if the product
obtained by the patented process is new.

Compulsory License or Non-Voluntary Licenses

Section 14 outlines the circumstances under which a non-voluntary license may be issued for a patented
invention that is not being sufficiently exploited. Subsection (1) specifies that upon request to the court
after a certain period from the filing of the patent application or the grant of the patent, the court may
grant a non-voluntary license if it determines that the patented invention is not being adequately
exploited locally or through importation into the country.

However, subsection (2) stipulates that a non-voluntary license will not be issued if the patent owner
can justify the lack of exploitation or insufficient exploitation of the patented invention in the country.
Subsection (3) outlines the details that must be specified in the decision to issue the non-voluntary
license, including the scope and function of the license, the time limit for exploitation by the licensee,
and the remuneration to be paid to the patent owner.

The beneficiary of the non-voluntary license, as outlined in subsection (4), is obliged to adhere to the
terms specified in the decision and to commence sufficient exploitation of the patented invention within
the specified time limit. Subsection (5) addresses a situation where exploitation of a later patent would

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infringe upon an earlier patent that represents a significant technical advance. In such cases, upon
request, the court may issue a non-voluntary license to avoid infringement of the earlier patent.

Subsection (6) establishes a reciprocal arrangement where if a non-voluntary license is issued for the
later patent, the court must also issue one for the earlier patent upon request. Subsection (7) specifies
that the conditions outlined in subsection (3) apply to the issuance of non-voluntary licenses in these
situations, with modifications as necessary.

Furthermore, subsection (8) limits the transfer of the non-voluntary license, allowing it only with the
patent for which it was issued. Subsection (9) requires the payment of a prescribed fee for the request
for the issuance of a non-voluntary license, while subsection (10) indicates that certain provisions
regarding compulsory licenses from section 13 apply with necessary modifications. Overall, these
provisions aim to balance the interests of patent owners with the public interest in promoting innovation
and access to patented inventions.

Section 14—Non-Voluntary Licences.

(1) On a request, made to the court after the expiration of a period of four years from the date of
filing of the patent application or three years from the date of the grant of the patent, whichever
period expires last, the court may issue a non-voluntary licence if the court is satisfied that the
patented invention is not exploited or is insufficiently exploited, by working the invention locally
or by importation, in the country.
(2) Notwithstanding subsection (1), a non-voluntary licence shall not be issued if the owner of
the patent satisfies the court that circumstances exist which justify the non-exploitation or
insufficient exploitation of the patented invention in the country.
(3) The decision for issuing the non-voluntary licence shall specify
(a) the scope and function of the licence,
(b) the time limit within which the licensee shall begin to exploit the patented invention, and
(c) the adequate remuneration to be paid to the owner of the patent and the conditions of payment.
(4) The beneficiary of the non-voluntary licence may
(a) exploit the patented invention in the country according to the terms specified in the decision issuing
the licence, or
(b) commence the exploitation of the patented invention within the time limit specified in the decision,
and
(c) exploit the patented invention sufficiently.

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(5) Where
(a) the invention claimed in a patent cannot be exploited in the country without infringing a patent
granted on the basis of an application benefiting from an earlier filing or where appropriate, priority
date, and
(b) where the invention claimed in the later patent involves an important technical advance of
considerable economic importance in relation to the invention claimed in the earlier patent,
the court, upon the request of the owner of the later patent, may issue a non-voluntary licence to
the extent necessary to avoid infringement of the earlier patent.
(6) Where a non-voluntary licence is issued under subsection (5), the court, upon the request of
the owner of the earlier patent, shall issue a non-voluntary licence in respect of the later patent.
(7) In the case of a request for the issuance of a non-voluntary licence under subsections (5) and
(6), subsection (3) shall apply with such modifications as are necessary with the proviso that no
time limit needs to be specified.
(8) In the case of a non-voluntary licence issued under subsection (5), the transfer may be made only
with the later patent, or, in the case of a non-voluntary licence issued under subsection (6), only with
the earlier patent.
(9) The request for the issuance of a non-voluntary licence is subject to payment of the prescribed fee.
(10) Section 13(4) to (13) shall apply with such modifications as are necessary.

Patent Invalidation
Section 15 of the patent law outlines the procedure for invalidating a patent. According to subsection
(1), any interested party may petition the court to invalidate a patent. Subsection (2) enumerates the
grounds upon which a patent may be invalidated. These include proof that the patent owner failed to
comply with certain requirements outlined in sections 1(2) and (3), 2, 3, 5(5), (6), (7), or (8), or if it is
demonstrated that the patent owner is not the inventor or the rightful successor to the inventor.

Upon a successful challenge to the patent's validity, subsection (3) mandates that the invalidated patent,
or any invalidated claim or part thereof, is considered null and void as of the patent's grant date.

Additionally, subsection (4) requires the registrar of the court to inform the Registrar (presumably the
Registrar of Patents) about the final decision of the court regarding the patent's invalidation. The
Registrar is then tasked with recording this decision and publishing a reference to it in accordance with
prescribed procedures, as stipulated in subsection (5). This process ensures that the public is informed
about the invalidation of the patent, maintaining transparency within the patent system.

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Section 15—Invalidation.
(1) An interested person may request the court to invalidate a patent.
(2) The court shall invalidate the patent
(a) if the person requesting the invalidation proves that a person has not complied with any of the
requirements of sections 1(2) and (3), 2, 3, 5 (5), (6), (7) or (8); or
(b) if the owner of the patent is not the inventor or the inventor's successor in title.
(3) An invalidated patent, or claim or part of a claim, shall be regarded as null and void from the date of
the grant of the patent.
(4) The registrar of the court shall notify the Registrar of the final decision of the Court.
(5) The Registrar shall record the decision and publish a reference of it in the prescribed manner.

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 PATENT INFRINGEMENT, REMEDIES AND OFFENCES
Infringement
Doing any of the following without the consent of the patent owner:
 making/manufacturing the patented product
 importing the patented product
 offering the patented product for sale
 selling the patented product
 using the patented product
 stocking the patented product for the purposes of offering it for sale
 stocking the patented product for the purposes of selling it
 stocking the patented product for the purposes of using it
 doing any of the acts above in respect of a product obtained directly by means of the
 patented process
 using the patented process

Interpretation of Claims
Claim interpretation or construction in courts is a key factor in appropriately determining the scopes of
protection of patented inventions and many critical decisions thereon have been made in various
countries. Theories also support that a patent claim has two functions: j to clarify the scope of an
invention on which patentability requirements are to be questioned; and k to clarify the scope of an
invention on judgment on infringement. Traditionally, many court decisions on patent
infringement disputes have relied upon a two-step method which includes a step of literally interpreting
the words of a patent claim (construction of claim (claim language)) and a step of “reading” the result
of the interpretation on an accused item (identification of item).

As a result of their training, lawyers are used to construing legal documents literally. There are
exceptions, such as where legislation is ambiguous and a strict literal interpretation would clearly defeat
the intention of Parliament to remedy some perceived defect in the law. Nevertheless, a literal approach
to interpretation does not sit comfortably with the knowledge that patent specifications are written for
scientists, engineers and technologists rather than for lawyers. One of the main purposes is to indicate
the scope of what the invention is claimed to be. A rigid approach to interpretation
could deprive a patentee of effective protection, bearing in mind that inventions are new and inventive
and it is not always possible to describe them in a manner that may be robust enough to stand up to a
narrow literal interpretation. After all, the patentee, although usually advised and assisted by

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experienced patent agents, is trying to describe something new and, in some cases, unlike anything else
that has preceded the invention in question. But providing effective protection for a patentee has to be
balanced by the interests of third parties who need to be able to see, from the patent specification, the
extent of the monopoly granted so that they can be reasonably certain that any activities they are
contemplating do not fall foul of patent law.

Claims in the patent application define the scope or the matter for which a patent is sought. Most
contentious infringement cases relate to interpretation of the claims or the description as a result of
ambiguous or poorly drafted claims where the claims are too broad, the tendency to find infringement is
high, and where the claims are narrow, there is high tendency to evade an infringement Suit. Advances
in technology can also affect or limit scope and significance of a patent.

Problems arise where the alleged infringing product is not exactly the patent but a variant of it. It used
to be the case that the differences between the variant and the invention were important and the
question was whether they differed in essential or inessential respects. The invention claimed was
considered as comprising essential and non-essential integers (components), those that are fundamental
to the invention and those that are not.

The Pit and Marrow Test

If the alleged infringer has taken all of the essential integers then there was an infringement even if
there were substantial differences in respect of the non-essential integers. This was described by various
judges as taking the ‘pith and marrow’ of the invention. Prior to 1982, the courts normally adopted
this test to determine whether alleged infringement relates to essential or non-essential
Components.

However, when applying this principle, the scope of the patent claims was of vital importance.
Viscount Radcliffe said in Van der Lely NV v Bamfords Ltd:
When, therefore, one speaks of theft or piracy of another’s invention . . . and this ‘pith and
marrow’ principle is invoked to support the accusation, I think that one must be very careful
to see that the inventor has not by the actual form of his claim left open to the world the
appropriation of just that property that he says has been filched from him…

In other words, the inventor had to be very careful when drafting his claims to make sure that they were
not framed too narrowly so that some slight and insignificant modification could be effected without

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infringing the patent. The essential integers claimed were those very parts which the proprietor wished
to protect. There was a flaw in the application of the ‘pith and marrow’ test as, arguably, it could extend
the monopoly claimed by the patentee beyond that encompassed in the claims as interpreted in the
light of the specification. To that extent, the looser the language of the claims, the greater the monopoly
afforded and the greater the range of equivalents that may have been caught. This was an unsatisfactory
state of affairs and resulted in some inconsistencies.

Things changed with the European Patent Convention, But even before, the House of Lords had the
opportunity to reflect on the interpretation of patent claims in the Catnic case.

The Catnic Test

The ‘pith and marrow’ test failed satisfactorily to resolve the problem of interpretation, and the question
of construction of patent claims in the context of variants came to a head in the case of Catnic
Components Ltd v Hill & Smith Ltd which involved several variants of steel lintels. The claimant
was a proprietor of a patent for steel lintels that had a rear support member which was vertical and so
described in claim 1 of the specification by the phrase ‘second rigid support member extending
vertically from or from near the rear edge of the first horizontal plate or part adjacent its rear edge’
(emphasis added).60 The defendant made a similar lintel, but with the rear support member inclined
between six and eight degrees (depending on the particular model of lintel) from the vertical.

The strength of a steel lintel in this form of construction derives to some extent from the verticality of
the rear member, and the defendant’s lintel had a reduced load-bearing capacity compared to the
claimant’s lintel, but because of the small inclination from the vertical this reduction was small. The
House of Lords found that the claimant’s patent had been infringed and the defendant’s argument that
the verticality of the claimant’s lintel was essential to its function and that, therefore, there was no ‘pith
and marrow’ infringement was rejected. It was confirmed that a purposive approach should be adopted
in the construction of patent specifications, Lord Diplock saying (at 243):
A patent specification should be given a purposive construction rather than a purely literal
one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too
often tempted by their training to indulge.
In Catnic, Lord Diplock identified the real crux of the matter as being whether practical persons,
skilled in the art, would understand that strict compliance with a particular word or phrase was
intended by the patentee to be an essential requirement of the invention. If so, any variant that did not
comply would fall outside the claim regardless of whether it had any effect. If the variant did have a

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material effect, there would be no infringement. Lord Diplock went on to suggest (and apply) a test that
has become that favoured for deciding whether variants infringe, though it has since been restated.

The Catnic test was usefully reformulated into a three-part test by Hoffmann J, as he then was, in
Improver Corp v Remington Consumer Products Ltd, and is as follows:

If the issue was whether a feature embodied in an alleged infringement which fell outside
the primary, literal or acontextual meaning of a descriptive word or phrase in the claim
(‘a variant’) was nevertheless within its language as properly interpreted, the court should ask
itself the following three questions:
(1) Does the variant have a material effect on the way the invention works? If yes, the variant
is outside the claim (and does not infringe). If no?
(2) Would this (ie that the variant had no material effect) have been obvious at the date of
publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If
yes?
(3) Would the reader skilled in the art nevertheless have understood from the language of the
claim that the patentee intended that strict compliance with the primary meaning was an
essential requirement of the invention? If yes, the variant is outside the claim.
Another way of expressing the third question is whether the skilled reader would understand from the
language of the claim that strict compliance with the primary meaning of the claim was intended. The
Improver questions have been applied on numerous occasions since but, whilst referring to that case,
judges now tend to refer to them as the ‘Protocol questions’. It has been accepted that the Protocol
questions assist the court to construe a claim in accordance with the Protocol on the interpretation of
Article 69 of the European Patent Convention. shows a flowchart approach to the Improver questions.

The key question in interpreting patent claims to see whether an alleged infringement falls within the
claims is to consider what a person skilled in the art would think the patentee was using the language of
his claim to mean.

See the recently decided case of Actavis v. Eli Lilly, in which the House of Lords restated the principles
to guide the interpretation of patent claims as follows:
 Does the variant infringe any of the claims as a matter of normal interpretation; and, if not,
 Does the variant nonetheless infringe because it varies from the invention in a way or ways which
is or are immaterial?

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 If the answer to either of those questions is "yes" then there is infringement, otherwise there is not
 The House of Lords reviewed the previous cases (Catnic, Improver, and KirinAmgem) particularly
the improver test

Remedies

1. Injunction in Appropriate Cases:

In legal contexts, an injunction is a court order that requires an individual or entity to refrain from
doing a particular act or to perform a specific act. In appropriate cases, such as when irreparable harm is
likely to occur if no action is taken, courts may issue injunctions to prevent further harm or to maintain
the status quo until a final decision is reached. Injunctions are often sought in cases involving disputes
over property rights, intellectual property infringement, or breaches of contract.

2. Damages:
Damages refer to the monetary compensation awarded to a party who has suffered loss or harm due to
the wrongful act of another party. There are various types of damages, including compensatory
damages, which aim to reimburse the injured party for their losses, and punitive damages, which are
intended to punish the wrongdoer and deter similar conduct in the future. Damages are commonly
sought in civil litigation cases to provide a remedy for the harm caused by the defendant's actions.

3. Account of Profit:
An account of profit is a remedy available in certain legal actions, particularly in cases involving
breaches of fiduciary duty or misappropriation of assets. It requires the defendant to account for any
profits gained as a result of their wrongful actions. For example, if a corporate officer misuses company
funds for personal gain, they may be required to repay the amount they profited from their misconduct.

4. Order for Delivery Up or Destruction:

In certain legal disputes, courts may issue orders for the delivery up or destruction of specific
property. This remedy is often used in cases involving intellectual property infringement or the
unauthorized use of confidential information. For instance, if a person is found to be selling counterfeit
goods, a court may order them to deliver up the counterfeit items for destruction to prevent further
distribution and protect the rights of the genuine trademark owner.

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5. Declaration of Validity/Invalidity:
A declaration of validity or invalidity is a court judgment that determines the legal status of a
particular right, agreement, or document. This remedy is sought when there is uncertainty or dispute
regarding the validity of a contract, patent, trademark, or other legal instrument. For example, if there is
a disagreement over the validity of a will, a court may issue a declaration to confirm its validity or
declare it invalid based on the evidence presented during litigation. Such declarations clarify the legal
rights and obligations of the parties involved.

Defences
Section 11(4) of Patent Act, 2003

(4) The rights under the patent shall not extend to

(a) acts in respect of articles which have been put on the market in any country by the owner of
the patent or with the owner's consent; or
(b) the use of articles on aircraft, vehicles or vessels of other countries which temporarily or
accidentally enter the airspace, territory or waters of Ghana; or
(c) acts done only for experimental purposes relating to a patent invention; or
(d) acts performed by a person who in good faith, before the filing or, where priority is claimed,
the priority date of the application on which the patent is granted in the country, was using the
invention or was making effective and serious preparations for the use.

These provisions relate to defenses against patent infringement claims:

1. Articles Put on the Market:

If the patented article has already been put on the market in any country by the patent owner or with
their consent, the patent rights do not extend to actions taken with respect to those articles. In other
words, once the patented article is legitimately sold or distributed by the patent owner, others are free to
use, sell, or distribute it without infringing the patent rights.

2. Use on Aircraft, Vehicles, or Vessels from Other Countries:

The use of patented articles on aircraft, vehicles, or vessels from other countries that temporarily or
accidentally enter the airspace, territory, or waters of Ghana is not considered patent infringement. This

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provision recognizes the practical difficulties in enforcing patent rights over such temporary or
accidental uses.

3. Experimental Purposes:
Acts done solely for experimental purposes relating to the patented invention are exempt from patent
infringement. This provision allows researchers, scientists, and others to conduct experiments and tests
on patented inventions without fear of infringing the patent rights.

4. Prior Use or Preparations:

If a person was using the patented invention in good faith, or making effective and serious
preparations for its use, before the filing date or priority date of the patent application in Ghana, they
are not considered to be infringing the patent. This provision protects individuals or entities who had
already been using the invention before the patent was granted, ensuring that their established rights are
not unfairly infringed upon by the patent holder.

These defenses aim to balance the rights of patent holders with the public interest in promoting
innovation, competition, and access to patented technologies. They provide exceptions to patent
infringement liability under specific circumstances to prevent unjust consequences.

Invalidation (A challenge of the validity of the patent, that it should have failed under the substantive
examination, that it has expired, lapsed, etc) - Section 15.
See earlier discussed cases of Windsurfing International v. Tabur Marine, William v. Nye in
respect of invalidation
• Exploitation by government or authorised person
• Exploitation under compulsory licence

UTILITY MODEL CERTIFICATE

An invention can be granted a utility model certificate if it meets the criteria of novelty and industrial
applicability. The rules outlined in Section 3(1) and (5) do not apply to inventions for which a utility
model certificate is being sought. Similarly, applications for utility model certificates are exempt from
the provisions of Section 9(7). Utility model certificates are valid for seven years from the date of filing
the application and cannot be renewed. Except for subsection (3), the regulations in Section 12(1) do
not govern utility model certificates. In legal proceedings under Section 15, a utility model certificate

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may be invalidated if the claimed invention doesn't meet the requirements for a utility model certificate
as per subsection (1) and Section 3(2), (3), and (6); if the description and claims fail to comply with the
specifications outlined in Section 5(5), (6), or (7); if necessary drawings haven't been provided; or if the
owner of the utility model certificate isn't the inventor or the inventor's rightful successor. Furthermore,
Section 15(2) does not apply to cases involving utility model certificates.

Section 17 of Patent Act, 2003

(1) An invention qualifies for a utility model certificate if it is new and industrially applicable.
(2) Section 3(1) and (5) does not apply in the case of an invention for which utility model
certificate is requested.
(3) Section 9 (7) does not apply in the case of applications for utility model certificates.
(4) A utility model certificate shall expire, without a possibility of renewal, at the end of the
seventh year after the date of the filing of the application.
(5) With the exception of subsection (3), section 12 (1) does not apply in the case of utility
model certificates.
(6) In proceedings under section 15, the court shall invalidate the utility model certificate on the
following grounds
(a) that the claimed invention did not qualify for a utility model certificate, having regard
to subsection (1), section 3 (2), (3) and (6);
(b) that the description and the claims do not comply with the requirements prescribed by
section 5 (5), (6) or (7);
(c) that any drawing which is necessary for the understanding of the invention has not
been furnished; or
(d) that the owner of the utility model certificate is not the inventor or the inventor's
successor in title.
(7)Section 15 (2) does not apply in the case of a utility model certificate.

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 THE TORT OF PASSING OFF

Passing off is a tort and can be described as the common law form of trade mark law. Business
‘goodwill’ is protected by passing off and, whilst this may be associated with a particular name or mark
used in the course of trade, this area of law is wider than trade mark law in terms of the scope of marks,
signs, materials and other aspects of a trader’s ‘get-up’ that can be protected. The owner of the goodwill
has a property right that can be protected by an action in passing off.

In the case of HP Bulmer Ltd v J Bollinger SA [1978] RPC 79 at 9 Buckley LJ said “A man who
engages in commercial activities may acquire a valuable reputation in respect of the goods in which he
deals, or of the services which he performs, or of his business as an entity. The law regards such a
reputation as an incorporeal piece of property, the integrity of which the owner is entitled to protect.”

He went on to confirm that the property right is not a right in the name, mark or get-up itself but that it
is a right in the reputation or goodwill of which the name, mark or get-up is the badge or vehicle. The
words ‘reputation’ and ‘goodwill’ are often used interchangeably but it is really in connection with
goodwill that passing off is concerned.

Apparently first established in the case of Perry v. Truefitt (1842) in which Lord Langdale MR
observed thus: “A man is not to sell his own goods under the pretence that they are the goods of
another man; he cannot be permitted to practise such a deception, nor to use the means which contribute
to that end. He cannot therefore be allowed to use names, marks, letters or other indicia, by which he
may induce purchasers to believe, that the goods which he is selling are the manufacture of another
person.”

Perry v Truefitt (1842) 6 Beav. 66 is a famous English case where the tort of passing off was first
articulated. Leathart made a hair treatment product. He had shown the mixing process to Perry, a
perfumer and hair-dresser, who decided to call the mixture "Medicated Mexican Balm". Perry marketed
the mixture under the title "Perry's Medicated Mexican Balm". Truefitt, one of Perry's competitors,
made a product that was very similar to Perry's mixture, which he marketed under the name "Truefitt's
Medicated Mexican Balm", using bottles and labels that looked like Perry's product. Perry filed a bill
against Truefitt, arguing that the name "Medicated Mexican Balm" was valuable to his business and
that he should have exclusive right to prevent others from using it. The Court denied Perry the right to
the name. However, Lord Longdale held that misrepresentation can be grounds for an injunction,

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stating that "a man is not to sell his own goods under the pretence that they are the goods of another
man".

As held in the famous case of N. R. Dongre Vs. Whirlpool Corporation

“A man may not sell his own goods under the pretence that they are the goods of another man.” Law
aims to protect traders from this form of unfair competition. Legally, classifying acts under this tort
aims to protect the right of property that exists in goodwill. Goodwill is defined as the part of business
value over and above the value of identifiable business assets. So basically it is an intangible asset.

Lord Macnaghten gave a useful definition of goodwill in Commissioners of Inland Revenue v Muller
& Co’s Margarine Ltd, where he said (at 223):
“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and
advantage of the good name, reputation, and connection of a business. It is the attractive force
which begins in custom. It is the one thing which distinguishes an old-established business
from a new business at its first start. The goodwill of a business must emanate from a particular centre
or source. However widely extended or diffused its influence may be, goodwill is
worth nothing unless it has power of attraction sufficient to bring customers home to the
source from which it emanates.”

The description of goodwill as the attractive force bringing in custom is very apt even though the
customers may not know or care of the identity of the owner of the goodwill provided that they
appreciate that there is such a person and the goods or services emanating from that person are of an
expected standard. This is particularly important in the context of corporate takeovers and mergers. If
asked, many people would not be able to identify the maker of many products now available without
referring to the product itself.

The main point about passing off is that goodwill has been established by one trader
and another trader tries to take advantage of that goodwill, to cash in on it to the detriment of the first
trader.

Spalding v. Gamage (1915) which set out the three requirement to succeed in an action in passing off
firmly established that the law on passing off was based on goodwill, contrary to the general opinion in
earlier cases that the right of action is a right of property. Spalding v Gamage Ltd, (1915) is a
leading decision of the House of Lords on the tort of passing off. The Court established a three-part test

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for a successful claim of passing off. First, the claimant's product must have goodwill. Second, there
must be a misrepresentation by the defendant's product, and third, there must be damages inflicted upon
the claimant. The claimant was a dealer in footballs described for some years as ‘Orb’ footballs and this
description and descriptions including the word ‘Orb’ became distinctive of the claimant’s footballs.
The claimant sold a quantity of defective balls to a waste rubber merchant and, eventually, they fell into
the hands of the defendant who advertised them as being ‘Orb’ balls. An injunction was granted in
favour of the claimant and Lord Parker considered the nature of passing off, saying: “The more general
opinion appears to be that the right [that is, the right to take action to prevent passing off] is a right of
property . . . property in the business or goodwill likely to be injured by the misrepresentation.”

An important case in which the basic requirements for success in a passing off action were described in
the House of Lords was Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd.
The claimants made a liqueur called Advocaat which came to be well known. It was a high-quality
liqueur made from brandewijn, egg yolks and sugar which acquired a substantial reputation and sold in
large quantities. The defendant decided to enter this market and made a drink called ‘Keeling’s Old
English Advocaat’ which was made from Cyprus sherry and dried egg powder, an inferior but less
expensive drink compared to the claimants’. This captured a large part of the claimants’ market in the
UK but it could not be shown that consumers would mistake it for the claimants’ drink. Nevertheless, it
was held that the reputation associated with the claimants’ product should be protected from deceptive
use of its name by competitors even though several traders shared the goodwill. There was a
misrepresentation made by the defendant calculated to injure the claimants’ business or goodwill and an
injunction was granted in favour of the claimants, there being no exceptional grounds of public policy
why an injunction should not be granted. Lord Diplock laid down the 5 essentials for a passing off
action, derived from the case of Spalding & Bros v AW Gamage Ltd.

Lord Oliver reduced this list to three elements in Reckitt & Colman Products Ltd v Borden Inc,
namely, the existence of the claimant’s goodwill, a misrepresentation as to the goods or services offered
by the defendant, and damage (or likely damage) to the claimant’s goodwill as a result of the
defendant’s misrepresentation.

Elements of Passing off

1. Goodwill
2. Misrepresentation
3. Damages or Real Likelihood of Damages.

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1. Goodwill
Merely copying the name or style of another trader is not, per se, sufficient for a passing off action
although it could give rise to an action for infringement of copyright if what is copied is more than a
simple name: for example, a logo. There must have been a goodwill associated with reputation which
had been acquired by the claimant in relation to that name or style. Reputation comes about through
consistent use: for example, the phrase ‘Camel Hair Belting’ used by the claimant from 1879 to 1891
was considered by the jury in Reddaway v Banham to have become distinctive of the claimant’s
belting even though it was entirely descriptive.

It applies to services as well- See Harrods Ltd v R Harrods Ltd (1924) 41 RPC. Trade does not have
to be primarily associated with a commercial enterprise- See British Medical Association v Marsh
(1931) 48 RPC 565. A charitable organisation is also capable of goodwill indistinguishable from a
commercial goodwill worthy of protection under the tort of passing off- See British Diabetic
Association v Diabetic Society (1996) FRS 1,

Harrods Ltd v Harrodian School Ltd

Facts
The plaintifss are the proprietors of the world-famous department store Harrods in Knightbridge. They
brought an action to restrain the defendants from carrying on a private preparatory school in Barnes
inder the name “Harrodian School”. The plaintiffs alleged that the Defendants were guilty of a
deliberate intent to deceive the plaintiffs into believing that they intended to call their school the Merlin
School. The plaintiffs alleged that the defendants intended to use “The Harrodian School” with the
deliberate intention of deceiving the public and trading on Harrods; Reputation.
The judge dismissed the Action at the conclusion of the trial, finding that there was no likelihood of
confusion or damage to the plaintiff’s goodwill.

Decision and Reasoning

The Court of Appeal dismissed the plaintiffs appeal, finding that the judge’s decision was not wrong
and that the plaintiffs had failed on the evidence to establish any real likelihood of confusion or damage
to their goodwill.
The Court stated that, passing off is a wrongful invasion of a right of property vested in the plaintiff;
but the property which is protected by an action for passing off is not the plaintiff’s proprietary right in

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the name or get up which the defendant has misappropriated but the goodwill and reputation of his
business which is likely to be harmed by the defendant’s misrepresentation. A passing-off action
protects the goodwill and reputation of a business from misrepresentation by another party, but the
misrepresentation must create a relevant connection with the plaintiff’s business. The likelihood of
confusion and damage to the plaintiff’s goodwill must be established by evidence.

Goodwill can exist even if the product or service to which it relates has not yet been made available if a
significant proportion of the public knew about the product or service because of a great deal of
publicity. It is important to consider how the goodwill is associated with the product or service
concerned. This may, of course, be influenced by the form of an advertising campaign. In Whitworth
Foods Ltd v Hunni Foods (International) Ltd the defendant deliberately copied the claimant’s
containers for glacé cherries. Viewed from the top, the cartons were easily distinguishable because the
two companies’ names were represented differently and set on different colour backgrounds. However,
from the side the cartons looked very similar (both carrying the words ‘Glacé Cherries’) and the
claimant argued that if the cartons were displayed on supermarket shelves, stacked on top of one
another with the claimant’s and the defendant’s cartons adjacent to each other, there was a danger of
confusion. In considering the association of the claimant’s reputation with the features of their carton,
Hoffmann J said that the claimant’s goodwill was chiefly associated with their name and not the design
of their containers and that this was confirmed by evidence of the claimant’s advertising which was
done in a general way without specific reference to their individual products.

Goodwill may vary depending on the geographical area under consideration. In Associated
Newspapers Ltd v Express Newspapers, it was accepted that the claimant’s reputation in its
newspapers, especially in respect of its newspaper the London Evening Standard, was particularly
pronounced in the south-east of England. Whilst injunctive relief may be appropriate limited to the
south-east, it would be important not to grant more extensive relief. Where goodwill is local only, the
area of the defendant’s activities may be relevant.

2. Misrepresentation
Misrepresentation causing public confusion. Its about the consequences of D’s action not about the D’s
state of mind… the impression D’s action has on customers. Misrepresentation is actionable even if it is
unintentional, such as trading under own surname - Parker Knoll v. Knoll International (use of name
by Firm of furniture makers similar to that of uncle’s). British Telecom v. One in a Million -
registration of domain names of prestigious firms without consent of those firms.

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Misrepresentation is an essential element in the tort of passing off. It may be that the misrepresentation
goes to the origin of goods or it may be that, because of the manner in which the goods are marketed,
some attribute is falsely associated with the goods by a significant sector of the public.
Misrepresentation may come about in numerous ways such as by written or oral(Spalding v. Gamage)
statements or by implication or by similarity in appearance or presentation of goods or even from the
presence of some object which acts as a signpost to the owner of the goodwill, such as ‘swing tags’
attached to luggage, similar to those used by the claimant. To be actionable, however, the
misrepresentation does not have to suggest that the defendant’s business is that of the claimants and it is
sufficient if the misrepresentation indicates an association between the businesses of the claimant and
defendant.

Misrepresentation is not a question of whether there is a risk of confusion because the defendant’s name
was similar to that of the claimant but whether the defendant’s use of his own name in connection with
his goods or business could be taken to be a representation that those goods were, or his business was,
those of the claimant or had some connection with the claimant so giving rise to or a risk of harm to the
claimant’s goodwill which the claimant was entitled to protect.

Should reverse passing off be actionable? Where instead of D claiming his goods are that of P, here D
claims that the goods of P are his, or that he is responsible for the quality of P’s goods. Inverse passing
off (if it exists as a separate species) occurs where the defendant falsely claims that the claimant’s
goods or services are actually made by, or provided by, the defendant. For example, in Bristol
Conservatories Ltd v Conservatories Custom Built Ltd, the defendant’s sales representatives
showed potential customers photographs of conservatories as a sample of the defendant’s workmanship.
The photographs were, in fact, of the claimant’s conservatories. The Court of Appeal had no doubt that
this constituted passing off although refusing to describe it as inverse (or reverse) passing off.
Nevertheless, the boundaries of passing off are not fixed and false claims as to patents or testimonials
may fall within its ambit.

Inverse passing off may also be committed by implicitly encouraging others to think that one is
associated or responsible for material created and belonging to another. For example, in John Robert
Powers School Inc v Denyse Bernadette Tessensohn, the defendant, in her manner of leaving the
claimant’s study notes on shelves easily accessible to students and customers, was holding out that they
were her notes and this misrepresentation amounted to inverse passing off.

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Character Merchandising
A fictitious or fantastic character might be devised for a television series, a book, a film or a computer
game: for example, Harry Potter, Lara Croft, the Teletubbies, Kojak, the Wombles, Thunderbirds, the
Simpsons, Teenage Mutant Hero Ninja Turtles, etc. The person who devised the character or the person
commissioning the design will want to maximise the financial return on the investment involved. One
way of doing this is to licence others to sell articles to which a representation of, or the name of, the
character is applied. Examples are very common: Action Man watches, Bob the Builder figures and T-
shirts, Pink Panther mugs, Postman Pat toys, etc. Using fictitious characters in order to sell ordinary
items is known as character merchandising and is very popular, particularly with respect to children’s
toys, games and stationery. It is big business. The normal way it is done is for the merchandising
organisation to obtain a licence from the creator of the character permitting the application of a
representation of the character to the articles. In a few cases, the creator of the character or the owner of
the rights in the character will retail the articles direct. Character merchandising is not limited to
fictitious characters. Many famous sportsmen and women and television personalities allow their name
to be used for promotional purposes. In this case, unauthorised appropriation of their name or nickname
may not be remediable either under the law of passing off or under copyright law but it may be
actionable as being defamatory.

3. Damage
Damage to goodwill, or at least a probability that damage will ensue, is one of the essential
requirements for a passing off action. Damage is not limited to the direct diversion of sales and may
result in a number of ways. Damages will usually be based upon the actual loss attributable to the
passing off, that is, resulting from the loss of sales experienced by the claimant.
Plaintiff must show that it has suffered, or is likely to suffer, any of the following heads of damages:
1. Loss of existing trade and profit – where dealing in similar fields
2. Loss of potential trade and profit – clear intention to expand
3. Loss of licensing revenue – especially in respect of personality or character
4. merchandising
5. Damage to reputation – especially where misrepresentation relates to non- competing
goods/services
6. Dilution (of P’s goodwill) – erosion of the distinctiveness of P’s mark – a clear
7. damage in TM law but doubtful in passing off (the Harrods decision)

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The diminution in the claimant’s goodwill may be caused by:
1. lost sales because buyers confuse the defendant’s products (or services) with those of the claimant;2
2. the fact that the defendant’s product is inferior to the claimant’s product and buyers think the
defendant’s product is the claimant’s;
3. erosion, blurring or debasement of a name that is exclusive and unique and which is used by the
claimant (or a number of persons entitled to use it); indirect though invidious damage which prevents
the claimant controlling and developing his goodwill in the future as he wished even though none
would be deceived into thinking the defendant’s product was from the claimant.

In National Association of Software and Service Companies v Ajay Sood, in the High Court of
Delhi, it was suggested that the activity of ‘phishing’ (misrepresenting that the sender of an e-mail was
a legitimate organisation to induce the disclosure of personal information) could give rise to an action
in passing off. The court said that this would be passing off if it affected or tarnished the image of the
organisation in question. However, there is little case law on whether ‘tarnishing’ goodwill would be a
natural result of phishing. Certainly, the ‘instrument of deceit’ approach should apply in such
circumstances. A court may look to potential risk to reputation or goodwill: for example, in Sir Robert
McAlpine Ltd v Alfred McAlpine plc, the court held that, although the defendant currently had a
good reputation, things could change, for example, if it suffered a setback or got involved in an
environmentally sensitive project. Such things might not be probable though neither were they fanciful
in a modern commercial context.

Extended Passing Off

The concept of an extended form of passing off developed in response to claims being brought where a
number of stakeholders sought to protect the collective goodwill in their products. While “classic”
passing off requires three elements to be proven, claimants seeking to prove a claim of extended
passing off must address five. The five elements claimants must prove, as articulated by Lord Diplock
in the Advocaat case, are:

a) A misrepresentation has been made;

b) The misrepresentation was made by a trader in the course of trade;
c) The misrepresentation was made to customers (actual or prospective);
d) The conduct was intended to injure or harm the goodwill or business of a competitor;
e) The claimant’s goodwill or business was actually harmed by the trader’s conduct.

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Unlike classic passing off, extended passing off claims require a claimant to prove that their brand is a
clearly defined product, distinct from anything similar. A familiar example is the “Bollinger” case, (J
Bollinger SA v Costa Brava Wine Co Ltd [1960] Ch 262), where the Court restrained a product from
being sold as “Spanish champagne”. The action was brought by Champagne manufacturers to protect
their product from competing products that had not been manufactured in the Champagne region. The
principle of “collective goodwill” flowed from this case and is now an important part for any claim
made for extended passing off. From Bollinger, the Court now considers any group of traders who
produce a product under a particular mark as having a collective interest in protecting the goodwill
associated with that product.

Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd., – also known as the Advocaat case – is a
leading decision of the House of Lords that further developed the common law tort of extended passing
off for the Commonwealth as originally established in Bollinger v. Costa Brava. Prior to this case
"collective goodwill", as required for an action in passing off, only applied to names indicating
geographic origin. The Court held that wares whose name falsely suggests its character or quality can
be prevented from selling the product under that name.

Warnink was one of the primary market producers of a Dutch liqueur made from a blend of hen egg
yolks, aromatic spirits, sugar, and brandy, which it sold under the name "Advocaat". Townend
produced a similar alcoholic drink but using egg and Cyprus wine which it sold as "Keeling's Old
English Advocaat".

The Court held that Townend was passing off their goods as those of Warnink. In applying the test for
passing off, the Court developed what is known as the "extended" tort of passing off which included
any situation where goodwill is likely to be injured by a misrepresentation.

Lord Diplock established five criteria for a claim of extended passing off. There must be:

1. misrepresentation
2. by a trader in the course of trade
3. to prospective customers of his or ultimate consumers of goods or services supplied by him,
4. which is calculated to injure the business or goodwill of another trader, and
5. which causes actual damage to the business or goodwill of the trader bringing the action.

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Scotch Whisky Association v Glen Kela Distilleries (1997) ETMR 470-The word ‘whisky’ is protected
by extended passing off. Diageo North America Inc v Intercontinental Brands Ltd (2011) RPC 2- The
word ‘vodka’ also protected by extended passing off.

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 TRADEMARK LAW

A trademark is a sign capable of distinguishing the goods or services produced or provided by one
enterprise from those of other enterprises. Any distinctive words, letters, numerals, drawings, pictures,
shapes, colors, logotypes, labels or combinations used to distinguish goods or services may be
considered a trademark.

In Ghana, Trade Marks Act, 2004 (Act 664) as amended by Trademarks (Amendment) Act, 2004 (Act
876) governs Trademark in Ghana.

Section 1
(1) A "trademark" means a sign or combination of signs capable of distinguishing the goods or services
of one undertaklng from the goods and services of another undertaking.
(2) A trademark may consist of
(a) words, personal names, designs, letters, colours, numerals, shapes, holograms, sounds or a
combination of any of these elements, or
(b) slogans, where they are not long enough to be protected by copyright.

The main function of a trademark is to enable consumers to identify a product (whether a good or a
service) of a particular company so as to distinguish it from other identical or similar products provided
by competitors. Consumers who are satisfied with a given product are likely to buy or use the product
again in the future. For this, they need to be able to distinguish easily between identical or similar
products. By enabling companies to differentiate themselves and their products from those of the
competition, trademarks play a pivotal role in the branding and marketing strategies of companies,
contributing to the definition of the image, and reputation of the company’s products in the eyes of
consumers.

Trademarks also provide an incentive for companies to invest in maintaining or improving the quality
of their products in order to ensure that products bearing their trademark have a positive reputation.

Trademarks:
1. ensure that consumers can distinguish between products;
2. enable companies to differentiate their products;

MARK 47
3. are a marketing tool and the basis for building a brand image and reputation;
4. are licensed and provide a direct source of revenue through royalties;
5. are a crucial component of franchising agreements;
6. may be a valuable business asset;
7. encourage companies to invest in maintaining or improving product quality;
8. may be useful for obtaining financing.

Brief History
In trademark treatises it is usually reported that blacksmiths who made swords in the Roman Empire are
thought of as being the first users of trademarks.[18] Other notable trademarks that have been used for a
long time include Stella Artois, which claims use of its mark since 1366, and Löwenbräu, which claims
use of its lion mark since 1383. The first trademark legislation was passed by the Parliament of England
under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the
bread they sold.

The first modern trademark laws emerged in the late 19th century. In France, the first comprehensive
trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark
Act". In Britain, the Merchandise Marks Act 1862 made it a criminal offense to imitate another's trade
mark 'with intent to defraud or to enable another to defraud'. The passing of the Trade Marks
Registration Act 1875 allowed formal registration of trademarks at the UK Patent Office for the first
time. Registration was considered to comprise prima facie evidence of ownership of a trademark and
registration of marks began on 1 January 1876. The 1875 Act defined a registrable trade mark as a
device or mark, or name of an individual or firm printed in some particular and distinctive manner; or a
written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.

In the United States, Congress first attempted to establish a federal trademark regime in 1870. This
statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme Court
struck down the 1870 statute in the Trade-Mark Cases later on in the decade. In 1881, Congress passed
a new trademark act, this time according to its Commerce Clause powers. Congress revised the
Trademark Act in 1905. The Lanham Act of 1946 updated the law and has served, with several
amendments, as the primary federal law on trademarks.

The Trade Marks Act 1938 in the United Kingdom set up the first registration system based on the
"intent-to-use" principle. The Act also established an application publishing procedure and expanded

MARK 48
the rights of the trademark holder to include the barring of trademark use even in cases where confusion
remained unlikely. This Act served as a model for similar legislation elsewhere.

International Application System

Using WIPO's Madrid System, you can file one international trademark application to seek protection
of your trademark in all or any of its Members, Madrid System memberssimultaneously. You file your
application in one language – English, French or Spanish – and pay one set of fees, in one currency
(Swiss francs). You can track the status of your application online as it moves through the examination
process.

International trademark applications are filed according to the requirements and procedures established
by the Madrid Protocol. The domestic laws of each designated Madrid System member determine the
scope of protection of your international trademark registration.

The Madrid Protocol is a convenient and efficient way for trademark owners worldwide to file one
application to register their trademark in multiple countries. You can file for and manage your
trademark’s protection in more than 120 countries and regional intellectual property offices using a
single streamlined application and payment process. “Madrid Protocol” is the common name for the
international trademark registration treaty that makes this process possible.

Almost any mark that would be acceptable in the member countries can be applied for. The
International Application can include as many classes of goods/services as the home application or
registration. It cannot include items that are outside the scope of the goods/services of the home
application or registration. Within these parameters, it is possible to have different specifications of
goods/services for different designations. For example, the United States will normally require a
specification which is more specific than the generally worded specifications which are acceptable for
most countries/regions.

The term 'Madrid Union' can be used to describe those jurisdictions party to either the agreement or the
protocol (or both).

The protocol has been in operation since 1996 and has 100 members making it more popular than the
agreement, which has been in operation for more than 110 years and has 55 members. The primary

MARK 49
reason the protocol is more popular than the agreement is that the protocol introduced a number of
changes to the Madrid system which significantly enhanced its usefulness to trademark owners.

For example, under the protocol it is possible to obtain an international registration based on a pending
trademark application, so that a trademark owner can effectively apply for international registration
concurrently, or immediately after, filing an application in a member jurisdiction. By comparison, the
agreement requires that the trademark owner already holds an existing registration in a member
jurisdiction, which may often take many months and sometimes years to obtain in the first place. In
addition, the agreement does not provide the option to 'convert' international registrations which have
been 'centrally attacked.'

The Nice Classification

The Nice Classification is based on a multilateral treaty administered by WIPO. This treaty,
consummated on 15 June 1957 in Nice, France, is called the "Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes of the Registration of Marks". This
Classification is commonly referred to as the "Nice Classification". The Nice Agreement is open to
states who are parties to the "Paris Convention for the Protection of Industrial Property".

The Nice Classification (NCL), established by the Nice Agreement (1957), is an international
classification of goods and services applied for the registration of marks. A new edition is published
every five years and, since 2013, a new version of each edition is published annually. It is updated
every five years and its latest 11th version of the system groups products into 45 classes (classes 1-34
include goods and classes 35-45 embrace services), and allows users seeking to trademark a good or
service to choose from these classes as appropriate. Since the system is recognized in numerous
countries, this makes applying for trademarks internationally a more streamlined process. The
classification system is specified by the World Intellectual Property Organization (WIPO).

According to section 52 of Act 664 "International Classification" means the classification according to
the Nice Agreement concerning the International Classification of Goods and Services for the Purposes
of the Registration of Marks of June 15th, 1957 as last revised.

Registrable Marks

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Trademark registration is the surest way to protect one's product, service or brand name. Thus,
trademark registration is the legal process provided under the Trademark Act 2004 (Act 664) to enable
one to protect their brand name or logo by limiting other people from using the same brand name or
logo.

Any sign or combination of signs; signs may take the form of Words, Stylised names, Personal names,
Letters, Numerals, Figurative elements (logo), Colour marks; Olfactory marks (sells, odours and
fragrances); Shape marks; Sound marks etc.

Registrable marks are those marks that can be represented graphically and marks that are capable of
distinguishing itself from other person’s goods and services. Registrable marks according to the TRIPS
agreement states that “any sign, or any combination of signs, capable of distinguishing the goods or
services of one undertaking from those of other undertakings, shall be capable of constituting a
trademark”.
The following are examples of registrable marks:

1. A name of a product that is not unusual for a trade to consider it as a mark. This includes a personal
name or a surname of an applicant or predecessor in business or a company name or the signature
of the person. The appropriate mark can be represented in a special or in a particular manner in
which the proprietor desires to do.
2. The invented word or words of a mark should neither be in a direct descriptive of the character nor
be the quality of the goods and services.
3. A mark can be in a combination of letters or numbers.
4. The mark can use fancy devices or symbols.
5. Symbols can be represented as monograms.
6. Combination of multiple colors or a particular color can be combined with a word or device.
7. Considering the shapes of the goods or the specific way in which the goods are packaged.
8. Those marks forming a 3-dimensional sign.
9. Sound marks that can be represented in a standard system or can be described in words for its
graphical representation.

The sign must be capable of distinguishing the goods and services of the TM proprietor from the goods
and services of another enterprise

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Section 4(2) requires a reproduction of the trade mark, which means it must be capable of being
graphically represented. The significance of this graphical representation is for ease of
identification in a “clear, precise, self contained, easily accessible, intelligible, durable and objective
manner”

Non Registrable Marks

The marks that are not distinctive enough from other marks and which cannot be registered as a
trademark are called Non-Registrable marks. This means that the mark has failed to differentiate itself
from other goods and services. Hence, trademark registration cannot be obtained for non-registrable
marks.

Examples of Non-Registrable Marks

10. Marks that cannot be accepted according to the law of Trademark Act.
11. Marks that mislead or tends to cause confusion to the public.
12. Marks consist of subject matter that hurt the religious senses of any class or sections of the Indian
citizens.
13. Marks that contain improper or vulgar subject matter.
14. Marks that are banned under the Emblems and Names of Prevention of Improper Use Act, 1950.
15. Marks of the goods whose shapes are directly obtained from the nature of the goods.
16. Marks of the goods whose shapes are important to acquire a technical result.
17. Marks that are similar in identity to another good or product.

Section 4 - Application for Registration

(1) An application for the registration of a trade mark shall be filed with the Registrar and is subject to
the payment of the prescribed fee.

(2) The application shall

(a) be accompanied with a reproduction of the trademark and a list of the goods or services for which
the registration of the trademark is requested, using the International Classifies-lion; and
(b) state that the trademark is being used by the applicant or with the consent of the applicant in relation
to the goods or services or that the applicant has a bonafide intention that the trademark should be used.

MARK 52
(3) The application may contain a declaration claiming the priority of an earlier national or regional
application filed by the applicant or the predecessor in title of the applicant as provide for in article 4 of
the Paris Convention set out in Schedule 1
(a) in or for any state party to the Convention; or
(b) in or for any member of the World Trade Organisation
and the Registrar may require the applicant to provide within the prescribed time a copy of the earlier
application certified as correct by the office with which it was filed.

(4) Where the Registrar finds that the requirements under subsection (3) have not been met, the
declaration shall cease to have effect.

(5) The applicant may withdraw the application.

Section 5—Grounds for Refusal of Registration

A trade mark shall not be registered if,

(a) it is a trade name or sign that belongs to the public domain except where the trade name or sign has
become accepted as a trademark for the goods or services for which they are claimed;

(b) it is incapable of
(i) distinguishing the goods or services of one enterprise from the goods or services of another
enterprise or devoid of a distinctive character,
(ii) designating the characteristics of the goods or services or shapes that constitute the nature of the
goods or shapes of the goods or of their packaging that are technically necessary;

(c) it is contrary to public order or morality;

(d) it is likely to mislead the public or trade circles with particular reference to the geographical origin
of the goods or services, their nature or characteristics such as the kind, quality, intended purpose, the:
time of production of the goods or rendering of the service;

(e) it is Identical to or is an imitation of or contains as an element, an armorial bearing, flag, emblem,

MARK 53
name, abbreviation or initials of the name, official sign or hallmark adopted by a State,
intergovernmental organisation or organisation created by an International convention unless authorised
by the competent authority of that State or organisation;

(f) it is identical to or confusingly similar to or constitutes a translation of a trade mark or trade name
which is well known in the country for identical or similar goods or services of another enterprise or the
trade mark Is well known and registered in the country for goods or services which are not identical or
similar to those under application but the use of the trade mark will indicate a connection between
those goods or services and the owner of the well known trade mark and the interests of the owner of
the well known trade mark are likely to be damaged by the use of the trade mark; or

(g) the trade mark is identical to a trade mark of another owner already on the register or identical to a
trade mark the subject of an application with an earlier filing or priority date for the same goods or
services or closely related goods or services or if it resembles that trade mark so closely that it is likely
to deceive or cause confusion."

Explanation

A trademark faces several barriers to registration to ensure its integrity and adherence to legal and
ethical standards. Firstly, if a proposed trademark is already in the public domain, it may not be
registered unless it has gained recognition as a trademark within its specific context. Moreover, a
trademark must possess distinctive characteristics to differentiate the goods or services of one
enterprise from another; otherwise, it fails to fulfill its primary function. Additionally, trademarks
contrary to public order or morality are ineligible for registration to uphold societal values. Marks likely
to mislead the public regarding the origin or nature of goods or services are also rejected to maintain
consumer trust. Furthermore, trademarks resembling official symbols or emblems without proper
authorization are excluded to prevent confusion and misuse. Similarly, trademarks identical or similar
to well-known marks may be denied registration to protect the interests of the original mark's owner
and prevent consumer confusion. Finally, to maintain the uniqueness of registered trademarks and
avoid confusion, marks identical or closely resembling existing trademarks are typically rejected to
safeguard against deception or confusion among consumers or trade circles.

In cases where a mark might be perceived as endorsing or encouraging illegal activity, it is refused
registration on grounds of public policy. Registration of TOKE was refused because it was "descriptive

MARK 54
of and associated with an illegal activity. -- Toke UK Ltd's Trade Mark Application, [2007]
E.T.M.R. 9; Decision O/119/06 at 8.

CDW Graphic Design was refused registration of [Link]

because the Hearing Officer determined it would be "viewed as an encouragement to others to actively
express their hatred of Manchester United when worn" and was "liable to increase the incidence of
football violence or of other offensive behaviour."--CDW Graphic Design Limited's Application,
[2003] R.P.C. 30; Decision O/464/02 at 37.

In his 1976 decision refusing registration of HALLELUJAH for women's clothing because it was
"contrary to morality" the hearing officer, Mr. Myall, lamented the "very little guidance in reported
cases for determining what meaning is to be attributed to this phrase." He noted it was well established
that the trade mark was to be judged as at the date of application but concluded that "the phrase
'contrary to morality' falls to be considered by the generally accepted standards of today and not by
those of 1938."Myall concluded that when "religious and moral standards are changing … the Registrar
should only follow where others have given a clear lead" and must not register "a mark which many
people would consider offensive." He stated that the goods to which a mark would be applied could
influence the assessment of the mark's morality noting there was no objection to the registration of
HALLELUJAH for gramophone records. He concluded that because the word was universally used in
the religious context it was "reasonably likely to offend the religious susceptibilities of a not
insubstantial number of persons"and refused the registration. -- HALLELUJAH Trade Mark [1976]
R.P.C. 605 at 607

In Ghazilian's Trade Mark Application to register TINY PENIS for clothing, Thorley Q.C. observed
that Myall's approach in HALLELUJAH had been too cautious and proposed that the approach in
Masterman's Design was more appropriate. He noted that in "any given social group, there are certain
standards of behaviour or moral principles which society requires to be observed … to ensure that
religious, social or family values are not unreasonably undermined." He ruled that mere offence to a 23
section of the public was not enough to prevent registration and that it should be denied "only in cases
where it is plain that an accepted principle of morality is being offended against". He considered the 24
possibility that the brand might be advertised on billboards and on the side of the often invoked
Clapham omnibus. He had no doubt that many members of the public would find it distasteful, but
concluded that that would not be enough to refuse registration. The correct test, he posited, was would
they be "outraged?" and would they feel it should be the "subject of censure?" Placing himself in the

MARK 55
shoes of the right-thinking member of the public he concluded that this trade mark would "cause greater
offence than mere distaste to a significant section of the public." He ruled that its registration would
likely undermine "an accepted social and family value … that the correct anatomical terms for parts of
the genitalia should be reserved for serious use and … not … as a smutty trade mark for clothing." This
was an unusual decision since the social and family value on which it is based was not one that was
widely recognised. Also, this line of reasoning prohibits the registration of "Tiny Penis" but permits, for
example, the more bawdy "Tiny Cock". Philips argues that the Ghazilian decision is a good example of
"how not to do it". -- Ghazilian's Trade Mark Application [2002] R.P.C. 33 at 21.

NATIONAL BISCUIT CO. v. PIONEER BISCUIT CO., LTD (1958) 3 WALR

Fact
The Pioneer Biscuit Company, Limited, a company incorporated in Ghana and having its registered
office in Accra, applied to the Registrar of Trade Marks under section 13 of the Trade Marks Ordinance
for the registration as a trade mark of the word "PIBISCO" in class 42 in respect of biscuits, bread and
cakes.

The National Biscuit Company, a corporation organised and existing under the laws of the State of New
Jersey in the United States of America, and having its principal place of business at No. 425, Park
Avenue, in the city of New York, entered opposition (under section 17 of the Ordinance) to the
registration of the proposed trade mark. They alleged that since 1898 they had been engaged
continuously in the business of making and selling bakery products and confectionery in the United
States, and in countries foreign thereto which had been open to trade. In June 1901 they adopted the
word" NABISCO" as their trade mark, and after that date they had continuously used it upon, and in
connection with, the products which they made and sold. They had registered the word" NABISCO" in
the United States Patents Office as their exclu-sive trade mark, the first registration being made in
November 1901. They had thereafter registered it in many countries foreign to the United States,
though Ghana was not shown to be one of those countries.

The opposers alleged, in paragraphs 5 and 6 of the affidavit sworn to by their Secretary, that between
the years 1944 and 1947 they had shipped to Ghana some of their products bearing their trade mark "
NABISCO," and that the wholesale value of the products exported within that period was $35,305.42
(United States currency). They admitted that there had not been a shipment of any of their products to
Ghana after July 10, 1947, but said that they had not abandoned their said trade mark in Ghana, and as

MARK 56
soon as import restrictions were eliminated they would resume the shipment to Ghana of their products
bearing that trade mark.

Ruling
The case of the opposers is that "PIBISCO" is phonetically and graphically similar to " NABISCO,"
and that the use of the two words together would deceive buyers. The principle to be applied is that laid
down by Park J. in the Pianotist Co., Ltd.'s Application (1) for registration of a trade mark:

"You must take the two words. You must judge of them both by their look and by their sound.
You must consider the goods to which they are to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In fact, you must consider all the
surrounding circumstances; and you must further consider what is likely to happen if each of
those trade marks is used in a normal way as a trade mark for the goods of the respective
owners of the marks. If considering all these circumstances, you come to the conclusion that
there will be confusion-that is to say, not necessarily that one man will be injured and the other
will gain illicit benefits, but there will be a confusion in the mind of the publio which will lead
to confusion in the goods-then you may refuse the registration, or rather you must refuse the
registration, in that case. "

As to " the look," the question is not whether if a person is looking at the two trade marks side by side
there would be possibility of confusion; it is whether the person seeing the one mark in the absence of
the other would, in view of his recollection of that other, be likely to be deceived, and to think that the
trade mark before him is the same as the other of which he has a general recollection (see Sandow,
Ltd.'s Application (2)). As this question of the" look" involves another most important principle which
must be considered, I shall defer further examination of it to a later stage.

As to phonetical similarity, each of the words" NABISCO" and " PIBISCO" consists of three syllables.
The first in each one is soft: "NA," and" PI "; the second and third in both are identical-" BISCO "-and
form the predominant part of each of the two trade marks. I agree with Mr. Pollard that there is a
tendency, in the pronunciation of these words, for the last two syllables (" BISCO ") to drown the initial
soft syllables (" NA" and "PI "), leaving ~he word" BISeO " so outstanding as to cause confusion in the
mind of a person who hears either word hurriedly pronounced. Thus if the phonetic aspect were the
only consideration, I would be guided by the majority decision of the Court of Appeal in England in
Rysta, Ltd.'s Application (3), and would hold that there is such a similarity as is likely to deceive.

MARK 57
But neither the look, nor the sound of the words, nor the two together, are by themselves enough
ground for refusing an application for registration-there is something more important. It must be shown
that customers have come so to identify an existing trade mark with its proprietor, that upon seeing the
proposed trade mark (similar to it in looks or sound or both) on an article, or upon hearing the proposed
trade mark mentioned in connection with an article, a customer would receive the impression that that
article is a product of the proprietor of the other trade mark. There can be no misapprehension on the
part of, or confusion in the minds of, customers unless customers in this country have been so familiar
with the trade mark" NABISCO," and have come so to identify it with the opposers' products, that upon
seeing an article bearing a trade mark similar in looks to " NABISCO," or hearing a trade mark
mentioned which sounds similar to " NABISCO," they would be likely to regard the article bearing that
trade mark as a product of the opposers. Tomlin J. in the case of Impex Electrical v. Weinbaum (4)
stated the principle as follows:

"It seems to me that the whole contention rests on a mis-apprehension. For the purpose of
seeing whether the mark is distinctive, it is to the market of this country alone that one has to
have regard. For this purpose foreign markets are wholly irrelevant, unless it be shown by
evidence that in fact goods have been sold in this country with a foreign mark on them, and that
the mark so used has thereby become identified with the manu-facturer of the goods. If a
manufacturer having a mark abroad has made goods and imported them into this country with
the foreign mark on them, the foreign mark may acquire in this country this characteristic, that
it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards
open to somebody else to register in this country that mark, either as an importer of the goods
of the manufacturer or for any other purpose.”

To succeed, therefore, in opposing the registration of the trade mark " PIBISCO," the opposers must
show that customers in Ghana are so familiar with the trade mark "NABISCO," and have so come to
identify goods bearing it with them, that the use of the name " PIBISCO " (which phonetically and
visually appears similar to the " NABISCO" trade mark) would be likely to deceive the customer. There
is no evidence before me as to how popular (i. e., how well known) "NABISCO" products were during
the three or four years 1944-1947, when they were being imported into this country. The quantity
imported is not stated, and the wholesale value given is no guide as to quantity, or as to reception they
had. For the last ten years (within which there have been great changes in ideas and trade activities) no
product of the opposers, bearing their said trade mark, has been seen or heard of in this country. I

MARK 58
cannot say, then, that the trade mark" NABISCO" has been so used in this country that goods bearing
that trade mark have become identified with the opposers, so as to cause confusion in the minds of
Ghana customers when they see or hear the mark" PIBISCO " on or in connection with similar goods.

APPENTENG MENSAH & CO. LTD. vs. ALPRO INDUSTRIAL PRODUCTS LTD. [1971] 2
GLR 79

HAYFRON-BENJAMIN J.

Fact
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.

Ruling

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The main question for determination is whether or not the trade marks Dorot and Dorin are so similar
as to cause confusion in the minds of the public, and whether the mark Dorin was calculated to deceive
at the date of the application to register. These are questions of fact and the burden of establishing both
is on the applicants. The decision on these questions is not an exercise of discretion by the court, but a
finding of fact. All the circumstances of the case must be considered.

It is not possible to make an exhaustive catalogue of all these circumstances. But as Parker J. said in
Pianotist Co., Ltd.’s Application (1906) 23 R.P.C. 774 at p. 777 which was a case that involved the
comparison of two words:

“You must take the words. You must judge them, both by their look and by their sound.
You must consider the goods to which they are to be applied. You must consider the
nature and kind of customer who would be likely to buy those goods. In fact, you must
consider all the surrounding circumstances; and you must further consider what is
likely to happen if each of those trade marks is used in a normal way as a trade mark for the
goods of the respective owners of the marks.”

In considering these circumstances the value of decided cases is very limited. It is not possible to
discover from decided cases any standard as to the amount of resemblance which may suffice to
deceive or cause confusion. As Lord Cranworth said in Seixo v. Provezende (1866) 1 Ch.192 at p.
196: “What degree of resemblance is necessary from the nature of things, is a matter incapable of
definition a priori.” And as Lord Watson was reported to have said in Johnston & Co. v. Orr-Ewing
(1882) 7 [Link]. 219: “How can observations of Judges upon other and quite different facts bear
upon the present case, in which the only question is what is the result of the evidence?” Except in so far
as they lay down any general principle the decided cases are of little assistance in the determination of
these questions of fact. However, as the learned editors of Kerly on Trade Marks (7th ed.) at p. 616 say,
“the habit of referring to reported cases at the hearing of such questions is inveterate.” I shall succumb
to habit but restrict myself to examining in detail only one local case. This is the case of National
Biscuit Co. v. Pioneer Biscuit Co., Ltd. (1958) 3 W.A.L.R. 450, decided by the High Court, Accra, on
16 August 1958. In that case the Pioneer Biscuit Co., Ltd. applied to the registrar of trade marks under
section 13 of the Trade Marks Ordinance, Cap. 180 (1951 Rev.), for the registration as a trade mark of
the word Pibisco in class 42 in respect of biscuits, bread and cakes. The National Biscuit Co., a
corporation organised under the laws of the State of New Jersey in the United States of America
entered opposition to the registration of the proposed trade mark on the ground that they had registered

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the word Nabisco in the United States of America and in other countries; though Ghana was not shown
to be one of those countries.

They said that Nabisco and Pibisco are both phonetically and graphically similar, and the concurrent
use of Pibisco and Nabisco will deceive buyers in Ghana. Ollennu J. (as he then was) referred to the
words of Parker J. in Pianotist Co., Ltd.’s Application (supra) and said at pp. 453-454:
“As to ‘the look,’ the question is not whether if a person is looking at the two trade
marks side by side there would be possibility of confusion; it is whether the person seeing the
one mark in the absence of the other would, in view of his recollection of that other, be likely
to be deceived, and to think that the trade mark before him is the same as the other of which he
has a general recollection (see Sandow, Ltd.’ Application (1914) 31 R.P.C. 196; 30 L.T.
394) . . . As to phonetical similarity, each of the words ‘NABISCO’ and PIBISCO’ consists of
three syllables. The first in each one is soft; ‘NA,’ and ‘PI’; the second and third in both are
identical—’BISCO’— and form the predominant part of each of the two trade marks. I agree ...
that there is a tendency, in the pronunciation of these words, for the last two syllables (‘BISCO’)
to drown the initial soft syllables (‘NA’ and ‘PI’), leaving the word ‘BISCO’ so outstanding as
to cause confusion in the mind of a person who hears either word hurriedly pronounced.”

Thus if the phonetic aspect were the only consideration, I would hold that there is such similarity as is
likely to deceive. The learned judge was in no doubt that phonetically and visually the words Nabisco
and Pibisco were similar. He however refused the application on another ground.

In this case the two words Dorin and Dorot both have two syllables, and the predominant syllable is
Dor and they both consist of five letters with the same first three letters. Both visually and phonetically
I find that the two words are similar. The admitted facts on the affidavits show that both Dorot and
Dorin are used in relation to skin lightening cream. That the Dorot cream is white and the Dorin cream
is brown, but this is a largely irrelevant factor as the buyer must first open the tube and squeeze out the
cream to find the difference in colour. There is no dispute that the Dorot cream is widely distributed in
Ghana by the applicants. Counsel for the respondents has shown to the court the two products. The
tubes in which they are sold are similar in size and shape; the packets which contain these tubes are also
similar in size and shape. I am of the view that the registration of the word Dorin is likely to deceive
and
confuse the public into thinking that they are goods of the applicant. I am fortified in this view by
another factor. When the registration of the trade mark Dorin came to the notice of the applicants they

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caused their solicitors to write to the registrar of trade marks protesting about the said registration, and
requesting the registrar “to take the necessary steps to remove” the name Dorin from the register. The
registrar then wrote
to the respondents the following letter which is exhibit B dated 31 January 1970:

“Sir, REGISTRATION OF TRADE MARK NO. 16180 THE WORD “DORIN” IN

CLASS 48 It has now been discovered that your application for registration of the
above-mentioned trade mark was inadvertently accepted, as a similar word ‘Dorot’ has
already been registered as No. 14659 in the same class by different proprietors. (2) You are
therefore requested to return, without delay, the certificate which was erroneously issued to you
for cancellation, as it is now considered that the market will be confused.”

The views of the registrar should not be equated with views of such expert witnesses called by the
parties. This application could have been made to the registrar, and although an appeal could be brought
to this court, this court would not fail to give some weight and consideration to the findings of fact by
the registrar. In the circumstance I find as a fact that the registration of the trade mark Dorin was
calculated or likely to deceive and confuse the public into thinking that they are dealing with the goods
of the applicants.

The respondents, however, state that if the application is granted it would cause hardship to their
company as it would prevent it from distributing the other commodities apart from the skin cream. The
respondents have shown to the court’s satisfaction that they deal in other commodities but all in the line
of cosmetics. The question of hardship is, however, irrelevant to the duty of the court in protecting the
public and the public interest in trade by keeping the register clean. I shall grant the prayer of the
applicants and order that the trade mark No. 16180 be removed and expunged from the register.

Section 6 -- Examination and Opposition to Registration of a TradeMark

(1) The Registrar shall examine whether the application complies with the requirements of
(a) section 1;
(b) section 3;
(c) subsection (1) and (2) of section 4; and
(d) section 5.

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(2) If the Registrar finds that the conditions in subsection (1) have been complied with, the Registrar
shall accept the application to be published so that any interested person may file a notice of opposition
to the registration within the prescribed period and in the prescribed manner.
(3) An interested party may give notice of opposition to the Registrar on the grounds that section 1 or
one or more of the requirements of section 4 have not been complied with.
(4) The Registrar shall send the notice of opposition to the applicant and the applicant shall send the
Registrar in the prescribed manner within the prescribed period a counter-statement of the grounds on
which the applicant relies.
(5) If the applicant fails to respond to the notice of opposition the applicant shall be deemed to have
abandoned the application.
(6) The Registrar shall send a copy of the counter-statement to the person who filed the notice of
opposition and shall decide whether the trade mark should be registered after hearing the parties.
(7) The applicant has the same privileges and rights when an application is published and until the
registration of the trade mark as the applicant would have if the trade mark had been registered, it shall
however be a valid defence to an action in respect of an act done after the application was published, if
the alleged infringer establishes that the trade mark could not validly have been registered at the time
the act was done.

Section 7—Registration Certificate

The Registrar shall register the trade mark, publish a reference to the registration and issue the
applicant with a certificate of registration if
(a) the registration has not been opposed within the prescribed time limit; or
(b) the registration has been opposed but the opposition was decided in favour of the applicant.

Section 10 --Term of Protection and Maintenance

The registration of a trade mark is for a period of ten years from the filing date of the application for
registration.

Section 11—Renewal of Trade Mark.

(1) The registration of a trade mark may be renewed for consecutive periods of ten years upon payment
of the fee prescribed for renewal.
(2) A grace period of six months is allowed for the late payment of the renewal fee upon payment of the
prescribed surcharge.

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Invalidation of Trademark
Any person may apply to the High Court for invalidation upon grounds that the registered mark is not
distinctive, or that the TM is not a mark within the meaning of the TM Act - Apenteng Mensah v.
Alpro Industrial Products Ltd
Invalidation may also be ordered upon the grounds that the mark has now become generic – that it has
become the common name in the trade for goods or services for which it is registered
The invalidation of the trade mark is effective from the date of registration
Upon invalidation by the court, the Registrar is required to record and publish the invalidation as soon
as possible

Section 12 -- Invalidation of Trademark

(1) The High Court shall invalidate the registration of a trade mark if the person requesting the
invalidation proves that section 1 or any requirement of section 4 has not been complied with.
(2) The court may invalidate the registration of a trade mark if because of any act or inactivity of the
owner, it has become the common name in the trade for goods or services for which it is registred.
(3) The invalidation of the trade mark is effective from the date of registration.
(4) The Registrar shall record the invalidation and publish the invalidation as soon as possible.

Section 14—Removal of Trade Mark from Register for Non-use.

(1) A person interested in a trade mark may request the Registrar to remove a trade mark from the
register because up to one month prior to filing for removal, the trade mark had not been used by the
registered owner or a licensee for any of the goods or services in respect of which it was registered for a
continuous period of five years or longer.
(2) The trade mark shall not be removed from the register if it is shown that special circumstances
prevented the use of the trade mark and that there was no intention to abandon the trade mark in respect
of those goods or services.
Section 9—Rights Conferred by Registration.
(1) A person other than a registered owner of a trade mark shall not use the mark in relation to any
goods or services for which the trade mark was registered without the agreement of the owner.
(2) The registered owner may institute court action against any person who infringes a registered trade
mark by
(a) using a registered mark without permission; or
(b) performing acts which make it likely that infringement may occur.

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(3) No person shall knowingly infringe the rights of the owner of a registered trade mark by using a
trade mark in relation to goods or services for which the trade mark was registered without the consent
of the owner.
(4) The right of the registered owner under this section shall, in addition to any other remedies, extend
to the use of a sign similar to the registered trade mark and use in relation to goods or services similar
to those for which the mark has been registered where confusion may arise in the public.
(5) Where there is use of an identical sign for identical goods or services, a likelihood of confusion
shall be presumed.
(6) The rights conferred by registration of a mark shall not extend to acts in respect of articles which
have been put on the market in any country by the registered owner or with the consent of the owner.
(7) Section 5(f) shall apply with such modification as may be required in any action instituted by the
owner of a well-known trade mark against any person in respect of the unlawful use of the well-known
trade mark.
(8) A person who infringes the right of a registered owner of a trade mark by knowingly using a trade
mark for goods or services without the consent of the registered owner commits an offences and is
liable on summary conviction to a fine not exceeding 250 penalty units or a term of imprisonment not
exceeding one year or to both.

Infringements
Right conferred on TM proprietor is the use of the mark in relation to any goods or services for which
the trade mark was registered. Infringement occurs where registered mark is used without permission of
the TM owner – Arsenal Football v. Reed (the disclaimer by the defendant to the effect that the goods
were not official Arsenal merchandise) Or performing acts which make it likely that infringement may
occur. . Use of a sign in relation to goods or services similar to those for which a mark has been
registered constitutes infringement where confusion may arise in the public - National Biscuit Co. Ltd
v. Pioneer Biscuit Co. Ltd [PIBISCO - NABISCO]

The court in Pfizer Ltd v. Eurofood Link made the point that mere dissimilarity in the goods or
services of the plaintiff (TM proprietor) and the defendant (infringer) will not suffice as a good defence
if in spite of the dissimilarity, there is likelihood of confusion . See section 9(4)

Damage to reputation by dilution (TM blurring, tarnishing,) – use likely to lessen the distinctive quality
of the registered mark – popularly used in the US and other jurisdictions. TM Dilution could be argued

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under section 9(4) of the TM Act to the extent that such use (alleged dilution) is similar to those for
which the mark has been registered, hence likelihood of confusion.

In case of “Societe des Produits Nestle SA v Mars UK Ltd (C353/03) Times, July 20, 2005 (ECJ) ”
it was held that, “ a mark has distinctive character when it is capable of distinguishing the goods or
services of one undertaking from those of other undertakings; and distinctive character must be
assessed in relation to the goods or services in respect of which registration is applied for, in light of the
reasonably well informed and reasonably observant and circumspect consumer of those goods.”

In Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) [2004] E.C.R. I-1619, it

was held that “A trademark’s distinctiveness within the meaning of Article 3(1)(b) of the Directive
must be assessed, first, by reference to those goods or services and, second, by reference to the
perception of them by the relevant public, which consists of average consumers of the goods or services
in question, who are reasonably well informed and reasonably observant and circumspect”
“The question why distinctiveness matters in the registration of descriptive trade marks? It is because
the ‘essential function’ of a trade mark is to act as a guarantee to consumer about the identity of the
origin of the goods or services for which it is registered by enabling him/her, without any possibility of
confusion, or to distinguish the product or service from others which have another origin. It means the
answer is attachment of the trade mark word with the source or geographical indication. Moreover the
purpose behind is to balance the interests of the consumers and producers.” “The sign must be
distinctive, so consumers can distinguish it as identifying a particular product, as well as from other
trademarks identifying other products. This requirement is, therefore, addressing the question whether a
sign performs or is intended to perform the function of a trade mark. The test of whether it is distinctive
is bound to depend on the understanding of the consumers, or at least the persons to whom the signs are
addressed. A sign is distinctive for the goods to which it is to be applied when it is recognised by those
to whom it is addressed as identifying goods from a particular trade source, or is capable of being so
recognised. The distinctiveness of a sign is not an absolute and unchangeable factor. Depending on the
steps taken by the user of the sign or third parties, it can be acquired or increased or even lost.”

“Marks are similar if in practice they resemble each other enough to be likely to confuse consumers
about trade origin. Thus, in Wagamama v. City Centre Restaurants, the first mark “ Wagamama”
had been registered for restaurant services. The second mark “ Rajamama” was the name of another
restaurant. Whilst there is a significant difference in the visual appearance of these two words, they
sound quite similar, having the same distinctive internal rhythm. In practice, consumers often

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encountered the first mark aurally, through word of mouth recommendation or discussion of restaurants.
In practice, therefore, the aural similarity was likely to confuse customers, not least because there was a
significant danger of imperfect recollection of a first mark encountered aurally. Laddie J. held that,
given these circumstances, the second mark was similar to the first mark and that there was a resulting
likelihood of confusion.”

“In Pfizer v. Eurofood Link, 59 Simon Thorley Q.C. (sitting as a deputy judge of the High Court) also
used the guidance given by the ECJ in Sabel and Canon to apply section 10(2). This case concerned the
alleged infringement of the first mark “ Viagra” , which had been registered for pharmaceuticals, by the
second mark “ Viagrene” for a drink marketed as an aphrodisiac. He concluded from the ECJ’s
judgments that60 : “ … one must have regard to the interdependence of the similarity of the trade marks
and the similarity of the goods or services. Further one must take into account the distinctive character
of the [first] mark and its reputation, if any, when determining whether the similarity is sufficient to
give rise to the likelihood of confusion. In particular, these authorities make it plain that there is no
automatic bar to a finding of infringement under section 10(2) merely because the goods on which the
defendant is using the [second] mark are in some respects dissimilar to those for which the [first] mark
is registered. In all cases, it will be a question of fact as to whether, notwithstanding the differences in
the categories of goods but having regard to all the other relevant factors, the relevant likelihood of
confusion is proved.”

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