Duwin Pharmaceutical And Chemical Co. Ltd V Beneks Pharmaceutical & 2 (2008)

LAWGLOBAL HUB Lead Judgment Report

M. MUKHTAR, JSC

On a motion ex parte brought by the appellant against the defendants who are now the respondents the learned trial judge of the Federal High Court holden in Lagos made amongst others the following interim orders:-

“(1) That leave is hereby granted to the Plaintiff/ Applicant to sue the Defendants/Respondents on their own behalf and as representing all members of the class defined as engaged in the trade or business of selling or offering for sale and/or manufacture of a dermatological preparation called “HOT MOVATE GEL” purporting to be a product of the Plaintiff by adopting a trade mark, get up or/ and package design similar to and capable of being offered for sale as the Applicant “Movate” Cream.

(2) That the Defendants/Respondents and each of those on whose behalf the Defendants/Respondents are sued whether acting by themselves or by their servants or agents or otherwise howsoever are hereby restrained pending the determination of the Motion on Notice for interlocutory injunction filed on the 25th day of February, 1997 or further order, from doing or authorising the doing of the following acts or any of them namely:-

a) passing off or attempting to pass off or causing, enabling or assisting others to pass off a pharmaceutical preparation known as “HOT MOVATE GEL” not manufactured at the Applicant’s instance or of its merchandise as and for the “MOVATE CREAM” or goods of the Applicant by the use or goods of the Applicant by the use or in connection therewith in the course of trade of the Applicant’s trade mark or adopting the distinctive get-up, package design or label identical or similar in all essential details to that of the Applicant’s “MOVATE CREAM” or any colourable or deceptive imitation thereof without duly distinguishing such trade mark, get-up, or label from those of the Applicant or by any other means,

b) manufacturing, or causing to be manufactured for them, importing, selling or exposing or offering for sale or supplying or inviting offers to acquire or distribute for the purpose of sale any pharmaceutical dermatological preparation in particular “HOT MOVATE GEL” with any package, get-up, label or tube, bearing the words “HOT MOVATE GEL” or “MOVATE” or any other words so closely resembling the Applicant’s trade marks in particular “MOVATE GEL” registered as No. 52632 or “TOPMOVATE” registered as No. 52623 as to be calculated to lead to the belief that the preparation (“HOT MOVATE GEL”) not of the Applicant’s manufacture or merchandise are products of the Applicant,

c) infringing the Applicant’s copyright in the registered design No. 5456 in respect of the Applicant’s registered trade marks known as “MOVATE GEL” and “TOPSOVATE”. “TOPMOVATE”, “TOPVATE” their get-up, label and package design.”

Then on 2/4/97 the defendant filed a motion on notice for the following orders:-

“1. AN ORDER discharging the order of this honourable court made on the 3rd day of March, 1997 on the grounds of material misrepresentation and failure to make full and frank disclosure.

AN ORDER striking out the name of the 3rd Defendant in this case on the grounds that he is merely an agent of a disclosed principal, that is, the 1st Defendant in this case,

AN ORDER of leave of court to join the Registrar of Trade Marks and Designs as a defendant to this suit to enable the Defendant counter- claim for a rectification of the Register of Trade Marks and Designs on the ground that the Plaintiff’s registrations were obtained fraudulently, the Plaintiffs being merely agents and distributors of ES APILARMA of today’s MOVATE cream and not the Manufacturers thereof”

The motion on notice was supported by an affidavit. It was moved and at the end of the day, the trial judge after considering the addresses of learned counsel vacated the interim injunction thus:-

“In the exercise of my discretion and having regard to the circumstances of this case, I hereby order that the interim order of this court of 3/3/96 be and is hereby vacated.”

Unhappy with the above order the plaintiff appealed to the Court of Appeal, Lagos, originally on four grounds of appeal, which notice of appeal was amended, and the grounds were increased to five. The appeal court after treating the issues raised by parties alongside the submission, found no merit whatsoever in the appeal and dismissed it. Again the plaintiff was not satisfied, so he has appealed to this court on five grounds of appeal, from which three issues for determination were raised. The issues are:-