This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session 5: Provisional Measures in IP Disputes (Part II)
Commercial Court of Cotonou, Benin [2021]: Société Phoenix International Sarl v Chitou Zoul-Fadil et al, No.065/21/CJ/SI/TCC
Date of judgment: July 30, 2021
Issuing authority: Commercial Court of Cotonou, Benin
Level of the issuing authority: First instance
Subject matter: Competition, enforcement of IP and related laws, trademarks
Plaintiff: Société Phenix International SARL
Defendant: Société CMA CGM Benin SA, Port autonome de Cotonou, Bureau Inspection Valuation Assessment Control (BIVAC), Direction Générales des Douanes et des Droits Indirects, Chitou Zoul-Fadil
Keywords: Counterfeiting, unfair competition
Basic facts: The Plaintiff, Societe Phenix International SARL, filed a trademark application for SWARA at the African Intellectual Property Organization (OAPI) on 20 January 2021 under class 21, 30 and 34 for products including matchboxes. Plaintiff’s research confirmed no prior trademark for SWARA was registered. In February 2021, the Plaintiff discovered that the Defendant, Chitou Zoul-Fadil, had imported cargo no GESU 6812074 of counterfeit SWARA matchboxes at the Cotonou Port.
Held: The Court’s findings are as follows:
- the Plaintiff effectively registered a trademark for SWARA;
- the Defendant imported SWARA branded matchboxes at the Cotonou Port;
- the Defendant is guilty of committing acts of counterfeiting and unfair competition;
- the damages caused to the Plaintiff were limited, considering that the cargo carrying counterfeit goods was stopped;
- the Defendant is ordered to pay 2 million FCFA of damages to the Plaintiff;
- the seizure and destruction of the cargo shall be at the expense of the Defendant.
Relevant holdings in relation to provisional measures:
Article 597 (2) of the Civil, Commercial, Social, Administrative and Accounting Code of Benin provides that the immediate execution of the provisional measure (“execution provisoire sur minute”) can be granted only in case of imminent or irreparable prejudice demonstrated by the petitioner. The circumstances of the matter at hand did not meet the urgency requirement, as the counterfeit merchandise was halted at port Cotonou before it could be delivered on the Beninese market.
Relevant legislation:
Article 5 of Annex III of the Bangui Agreement
Article 46 of Annex III of the Bangui Agreement
Article 597(2) of the Civil, Commercial, Social, Administrative and Accounting Code of Benin