Case of the week: Eric Amankwah v. Ahomka Beverages Limited

Suit No. OCC 96/2019 | Delivered on 16^th  May, 2019

Introduction

When can a trader with an unregistered product name, stop a competitor from using a confusingly similar brand?

This case examines the scope of the common‑law tort of passing off, the protection of goodwill in an unregistered mark, and the standards for granting an interlocutory injunction in such disputes.​

Facts​

The Applicant, Eric Amankwah, produced and marketed an alcoholic beverage called “Charlie Ginger Liqueur 3bɛtu Spirit Drink” (also rendered “Charlie Ginger Liqueur betu Spirit Drink”) with a distinctive label, background and colour scheme. He claimed to have built goodwill and reputation in that product on the Ghanaian market.​

The Respondent, Ahomka Beverages Limited, produced a competing beverage under the name “Charles Ginger Liqueur Wobetu Spirit Drink”. The Applicant alleged that the Respondent’s product name, label, background, design and colours were so similar that consumers would think the Respondent’s drink was his.​

Regulatory correspondence showed that the FDA had previously approved the Respondent’s product as “4Gers Ginger Liqueur Spirit Drink”, later permitting a change to “Charles Ginger Liqueur Spirit Drink” and allowing a short period to exhaust old labels.​ When the Respondent sought to change the name again to “Charles Ginger Liqueur betu Spirit Drink”, the FDA refused, noting that the proposed label had the same background, design and colour as another registered product and would contravene section 103 of the Public Health Act, 2012 (Act 851) on misbranding.​

Despite this, the Respondent put on the market “Charles Ginger Liqueur Wobetu Spirit Drink”, whose label was found to be virtually indistinguishable from the Applicant’s “Charlie Ginger Liqueur betu Spirit Drink”. The Applicant had already obtained a court order authorising the search and seizure of infringing materials (Anton Piller order) and now applied for an interlocutory injunction to restrain the Respondent from, among others, using the impugned brand name and get-up, producing or selling any confusingly similar product, and continuing acts of passing off and unfair competition.

Issues for Determination​

1. Whether, on the affidavit and documentary evidence, the Applicant had shown a legal or equitable right (in goodwill) sufficient to be protected by an interlocutory injunction under Order 25 rule 1 of C.I. 47.​
2. Whether the Respondent’s use of “Charles Ginger Liqueur Wobetu Spirit Drink”, with a similar name, label, background and design, amounted to a misrepresentation capable of constituting passing off at common law.​
3. Whether the balance of convenience and the need to prevent irreparable harm to the Applicant’s goodwill justified restraining the Respondent pending trial.​

The Court’s Holding​

The Court reiterated that, under Order 25, Rule 1 of the High Court (Civil Procedure Rules), 2004 (C.I 47), an injunction may be granted where it is “just or convenient,” which should be interpreted as “just as well as convenient.” The Court emphasised that this discretion must be exercised judicially, based on the pleadings and affidavit evidence. Relying on authorities such as Owusu v Owusu Ansah and Vanderpuye v Nartey, the Court highlighted the importance of preserving the status quo to prevent irreparable harm when a legitimate right has been established.

Regarding passing off, the Court referred to the classic formulation: it occurs when one party misrepresents its goods or services in a way that damages another’s goodwill. The Court also referred to the five characteristics identified by Lord Diplock in Warnink v Townend:

1. Misrepresentation
2. In the course of trade
3. To customers
4. Calculated to injure
5. Causing or likely to cause damage

The Court accepted that the Applicant, though lacking a registered trademark, had an equitable interest in the name and get-up of “Charlie Ginger Liqueur betu Spirit Drink”, which is protected under common law.

The Court found that:

1. The labels of the two products shared the same background, design, and colour, and photographs showed they were virtually indistinguishable.
2. The Respondent’s conduct – attempting to change its name to resemble the Applicant’s and then adopting “Charles Ginger Liqueur Wobetu Spirit Drink” outside the FDA’s approvals – was a deliberate attempt to ride on the Applicant’s goodwill and confuse customers.
3. This constituted a material misrepresentation in the course of trade, calculated to injure the Applicant’s business and goodwill, and likely to divert his customers.

The Court further held that, in cases of passing off, actual damage need not be proved at the interlocutory stage; the law presumes damage where goodwill is interfered with, particularly when the parties operate in the same market.

Accordingly, the Court concluded that the Applicant had demonstrated an equitable right, and that on the balance of convenience, greater harm would result from refusing the injunction. The Court therefore granted the interlocutory injunction as prayed, restraining the Respondent and its agents from continuing the impugned activities pending the determination of the substantive suit, and awarded costs of GHS 5,000 against the Respondent.

Implication of the Decision​

The ruling underscores that even without a registered trade mark, traders can obtain effective protection for goodwill and get‑up through the tort of passing off, particularly at the interlocutory stage. Where a competitor adopts a confusingly similar name, label and design to cash in on an existing product’s reputation, the Court is prepared to treat this as a material misrepresentation and to grant urgent injunctive relief to preserve the claimant’s market and goodwill.​

Commentary and Insight​

This ruling shows that a business can protect its product name and packaging through passing off even if the brand is not formally registered as a trade mark. The court treated the plaintiff’s reputation and customer recognition for “Charlie Ginger Liqueur 3bɛtu Spirit Drink” as a real legal interest that deserves protection.

The judge was particularly persuaded by the very close similarity between the two products and by the history of the defendant repeatedly trying to move its brand name closer to the plaintiff’s. This made it easier to conclude that the defendant wanted to benefit from the plaintiff’s reputation and to confuse customers.

The case also highlights how regulatory letters from the Food and Drugs Authority can support a passing‑off claim. Once the FDA had already said that the defendant’s proposed label looked too much like another registered product and could mislead the public, it became harder for the defendant to argue that there was no real risk of confusion.

For traders, the key message is that deliberately copying the name and “look” of a competitor’s product is risky even if the competitor has not yet registered a trade mark.

Practical lessons for Business

Register trademarks early where possible

Built distinct branding and packaging

Avoid imitating competitors’ product appearance

Regulatory warnings (FDA Letters) can strengthen legal claims

Passing off can succeed even without trademark registration.