كوت ديفوار

This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 1: Industrial Designs

Abidjan Commercial Court, Côte d’Ivoire [2023]: M. Modibo SYLLA v La société Distribution de Marchandises Diverses, Case No. 3855/2023

Date of judgment: November 2, 2023

Issuing authority: Abidjan Commercial Court

Level of the issuing authority: First Instance

Type of procedure: Judicial (Commercial)

Subject matter: Industrial Designs; Trademarks

Plaintiff: Mr. Modibo SYLLA

Defendant: Distribution de Marchandises Diverses (DMD)

Keywords: Registration, Industrial designs, Registered trademark, Unregistered trademark, Infringement, Cancellation of registration, Novelty, Prior art, Imitation of registered industrial designs by products of a registered trademark, Similar external appearance

Basic facts: Mr. Modibo SYLLA, a Malian merchant, operates the unregistered trademark “3 CAIMANS” in relation to wheelbarrows, wheelbarrow parts, equipment, and accessories for said wheelbarrows, the industrial designs of which were registered with the African Intellectual Property Organization (OAPI) on October 20, 2009, in classes 6 and 12. His rights to the disputed industrial designs were renewed in 2014 and 2019. The company Distribution de Marchandises Diverses (DMD) was marketing, in Côte d'Ivoire, wheelbarrows under the brand name “BATMAT PRO.” Mr. SYLLA alleged infringement by DMD of both his (unregistered) “3 CAIMANS” trademark and the industrial designs he owns. He argued that the wheelbarrows of the “BATMAT PRO” brand had a similar appearance to his own, even though DMD had not registered the design it intended to give to its wheelbarrows, and that these similarities were likely to create confusion in the mind of the average consumer.

Mr. SYLLA requested that the court:

-       order an expert opinion for a comparative examination of a sample of "BATMAT PRO” and ”3 CAIMANS" wheelbarrows and the industrial designs of said wheelbarrows;

-       find trademark and industrial design infringement;

-       order DMD to pay him damages for the harm suffered;

-       cancel the registration of the “BATMAT PRO” trademark belonging to the defendant, in addition to banning the marketing of wheelbarrows of that brand.

DMD considered that trademark and industrial design infringement had not been established, since, in its view, the external appearance of its wheelbarrows had characteristics that were distinct from those of Mr. SYLLA. DMD contended that the “3 CAIMANS” wheelbarrows were different from its own both in terms of their overall visual appearance and in terms of the design of the various parts and components of the model. It argued that a simple observation of the competing wheelbarrows showed that there was no resemblance likely to cause confusion, firstly because each displayed its brand name in large letters inside the bucket, and secondly, because the competing wheelbarrows were very different in appearance in terms of the design of the wheels, tires, handles, frame, screws, and bolts.

In its counterclaim, DMD sought the cancellation of the registration of the industrial design of Mr. SYLLA's wheelbarrows marketed under the “3 CAIMANS” brand, arguing that the condition of novelty required for the registration of an industrial design was not met. DMD stated that the wheelbarrow models of the “3 CAIMANS” brand claimed by the applicant were manufactured in China, as were its own and those of all its competitors in the Ivorian market. DMD indicated that the true owner of the industrial designs claimed by the applicant was GINGDAO TAIFA IMPORT AND EXPORT Co Ltd, based in China, whose wheelbarrows were already on the Chinese market before the applicant registered the “3 CAIMANS” trademark.

Held: The court dismissed Mr. SYLLA’s application for cancellation of the registration of the “BATMAT PRO” trademark belonging to DMD, noting that it is registration that confers exclusivity on a trademark and entitles its owner to challenge any imitation or reproduction by third parties. Accordingly, because Mr. SYLLA did not provide proof of registration of the “3 CAIMANS” mark over which he claims exclusive ownership, he was unfounded in his cancellation request. Moreover, DMD produced a trademark registration certificate dated February 29, 2016, establishing that it had registered its trademark “BATMAT PRO,” the title, form, logo, and distinctive signs of which did not imitate the trademark “3 CAIMANS” claimed by the plaintiff in any way.

With regard to Mr. SYLLA’s allegation of industrial design infringement, the court, based on the findings of the expert report ordered, noted that the sample wheelbarrow of the defendant's “BATMAT PRO” brand is composed of elements that are identical or similar to those of the plaintiff's “3 CAIMANS” brand, with the exception of the wheels. The court stated that the wheelbarrows stamped “BATMAT PRO” imitate the external characteristics of Mr. SYLLA's wheelbarrows in certain essential elements that he has protected, namely,

the V-shaped frame slightly inclined at the handle, the black rubber handle guards in a tubular shape with a ribbed end (7 ribs) and inclined downwards in relation to the axis of the tube, the iron wrist, the feet of the wheelbarrow and the two flat-bottomed V-shaped metal parts with two bent elements added as reinforcement at the point of contact with the ground, a tub in the form of a tray held in place inside by six nuts in each of the wheelbarrows, the wheel, and the wheel axle.

The court found these external elements to be the immediate visual characteristics that, at first glance, capture the attention of the average consumer. The court therefore held that the marketing in Côte d'Ivoire, a member state of OAPI, of wheelbarrows whose overall external appearance largely imitates industrial designs of wheelbarrow parts previously registered by the applicant with OAPI, constituted an infringement of the applicant's industrial designs. The court prohibited DMD from importing and marketing its wheelbarrows under its “BATMAT PRO” brand and ordered the seizure and destruction of the wheelbarrows marketed by DMD under its “BATMAT PRO” trademark, on the grounds that they imitated the overall external appearance of Mr. SYLLA's wheelbarrows. The court also awarded Mr. SYLLA 5,000,000 CFA francs in damages.

The court rejected DMD's counterclaim for cancellation of the industrial design registration of Mr. SYLLA's wheelbarrows marketed under the “3 CAIMANS” brand, noting that the criterion of novelty is assessed at the time of registration. The court stated that, in addition to the fact that the defendant had not provided evidence that industrial designs for wheelbarrows under the “3 CAIMANS” brand were widespread in China, the plaintiff's production of a design and appearance patent certificate issued to him by the Chinese authorities proved that he was indeed the creator of the claimed industrial designs, all of which established that at the time of registration, the industrial designs of the wheelbarrows of the “3 CAIMANS” brand met the criterion of novelty on the Chinese market.

Relevant holdings in relation to industrial designs: In light of the provisions of Articles 3, 4, and 35 of Annex IV of the Bangui Agreement establishing OAPI, revised on December 14, 2015, the judgment recalls that the creator of an industrial design who registers it first is, upon registration, the owner of an intangible property right in that industrial design, which confers an exclusive right, a monopoly of exploitation, entitling him or her to prohibit any third party from using or marketing an imitation or reproduction, or any form of exploitation without their authorization within the territory in which the registration was made. The judgment notes that the cancellation of the registration of an industrial design can only be pronounced if the disputed industrial design is not novel. The question of novelty must be assessed at the time of registration, meaning it is incumbent upon the applicant for invalidation of the registration to prove the absence of novelty by demonstrating that the industrial design had already been disclosed prior to the contested registration.

The overlap between industrial design law and trademark law in this judgment gave rise to confusion in the assessment of the various industrial property rights at issue. The court rightly rejected Mr. SYLLA’s request to cancel the registration of the “BATMAT PRO” trademark, on the grounds that it did not infringe the trademark “3 CAIMANS,” which, moreover, was not registered and therefore not eligible for protection under trademark law. However, the court nevertheless prohibited DMD from importing and marketing its wheelbarrows under its trademark “BATMAT PRO” and ordered the seizure and destruction of the wheelbarrows marketed by DMD under said trademark, on the grounds that they imitated the overall external appearance of Mr. SYLLA’s wheelbarrows. If the wheelbarrows marketed under the “BATMAT PRO” brand did imitate the registered industrial designs of the “3 CAIMANS” brand, the judgment should have prohibited DMD from importing and marketing wheelbarrows under the “BATMAT PRO” brand in the form and with the industrial designs registered by Mr. SYLLA, in particular with regard to their external appearance and aesthetic characteristics. By prohibiting DMD from importing and marketing its wheelbarrows under its “BATMAT PRO” trademark, the court wrongly prohibited the defendant from simply using its “BATMAT PRO” trademark, even though the real issue was to put an end to the infringement by that trademark of the applicant’s right to his protected industrial design.

Relevant legislation: Articles 2, 3, 4, 9.2, 28 of Annex III, and 1, 2, 30, and 35 of Annex IV of the Agreement revising the Bangui Agreement of March 2, 1977, establishing an African Intellectual Property Organization (OAPI), Bamako Act of December 14, 2015.