American Cyanamid Company V. Vitality Pharmaceuticals Ltd. (1991)

LawGlobal-Hub Lead Judgment Report

OLATAWURA, J.S.C.

The competing claims of the parties in this appeal relate to the registration of a trade mark about one antibiotic registered by the appellant under the trade mark of GONOCIN as against the respondent which had its own registered as GONORCIN. Prima facie quite apart from the claim of infringement of the trade mark one is likely to be misled that it is also a passing off action. But their claim and counter-claim leave no one in doubt that priority of registration and continuous use claimed by the respondent played a dominant role in their claims.

There were originally two plaintiffs which filed the action in the Federal High Court of the Lagos Judicial Division against two defendants. After amendment of the Statement of Claim, the claims read as follows:-

“1. An injunction restraining the defendants their servants and agents from infringing the plaintiffs registered Trade Mark “GONOCIN”

2. Delivery up on oath for destruction of all goods, cartons, packages, capsules, wrappers, blocks, discs or stamps bearing any mark or get up that would be in breach of the injunction prayed for.
3. An account of the profits by the defendants by reason of their having carried out the said acts of infringements or damages of N500,000.00.
4. Costs.
5. Further or other relief.

In their Amended Statement of claim, the plaintiffs averred as follows:-

“. The plaintiffs are the Registered proprietors of Trade Mark “GONOCIN” No. 27409 Schedule 4 in respect of the following goods to wit Antibiotic preparations.”

2. The aforesaid Trade Mark is valid and still on the Register of Trade Marks. At the trial, plaintiffs will rely on a Certified True Copy of the Extract from the Register marked ‘For use in Legal Proceedings” issued by the Registrar of Trade Marks to the plaintiffs in respect of the aforesaid Trade Mark.

2A. The 1st plaintiff is a corporation organised and existing under the Laws of the State of Maire (sic) U.S.A. having its executive offices at Wayne, New Jersey 07470. At the trial of this Suit, the plaintiffs will rely on the Certificate of the Wayne Chamber of Commerce and other documents in proof of the legal status of the 1st plaintiff.

2B. The 2nd plaintiff is a Limited Liability Company incorporated in Nigeria under the Companies Act, 1968. At the trial of this action, the plaintiffs will found on the Certified True Copy of the 2nd plaintiff’s Certificate of Incorporation.

3. The 1st plaintiffs are manufacturers and the 2nd plaintiffs are vendors of antibiotic capsule which they have for several years imported into and sold in Nigeria under the said Trade Mark “GONOCIN.”
4. The aforesaid capsules sold as and under the said Trade Mark “GONOCIN” is widely known and used in Nigeria.
5. The defendants are vendors of pharmaceutical drugs and preparations.
6. The defendants have recently put on the market and offered for sale and have sold Capsules under and/or using in connection therewith the trade mark “GONORCIN.” Plaintiffs will found on invoices and receipts issued by the defendants for such sales.
7. The aforesaid trade mark “GONORCIN” used by the defendants is similar to the plaintiffs’ aforementioned trade mark “GONOCIN.”
8. By reason of similarity the public is likely to and have been led to confuse and take the Ganorcin Capsules of the defendants’ manufacture and/or sale.”

The defendant filed an Amended Statement of Defence and counterclaim.

The defendant averred as follows:-

“1. The defendant makes no admission as to paragraphs 1 and 4 of the Statement of Claim.

2. The defendant denies paragraphs 2, 3, 6, 7 and 8 of the Statement of Claim.
3. The defendant which was first registered on 21st October, 1956 as Vitality Medicine Stores was incorporated as a limited liability pharmaceutical company on the 6th May, 1980. Hitherto it was registered under the Registration of Business Names Act on the 22nd February, 1968 as Vitality Medicine Store – Pharmaceutical.
4. The defendant has since 3rd of December, 1963 been the sole agent of one Herbrand K.G. Hornonforsonung-Laboratarium, Gengenbach/Baden, West Germany (hereinafter referred to as Herbrand Company) a pharmaceutical company based in West Germany which manufactures inter alia antibiotic preparation.
5. Since 1968, the Vitality Medicine Stores as Agent, has put upon the market and sold antibiotic preparation manufactured by Herbrand Company by putting them in white cardborad boxes with green designs and printings thereon, such printing bearing the word “GONORCIN” in bold green letters and other words in smaller forms. The word GONORCIN is a mark which the defendant has acting in good faith built up a reputation in.
6. In 1978, the defendant caused the antibiotic preparation “GONORCIN” to be registered with the Pharmacy Board Lagos.
7. The defendant will contend at the trial that the plaintiff’s Registered Trade Mark 27409 registered in 1978 was not entitled to be so registered and that the Registration 27409 sued upon is invalid on the ground that the trade mark interferes with the use of the name “GONORCIN” which the defendant had been using and distributing continuously in Nigeria since 1968, a date prior to the plaintiffs registration or use.
8. With reference to paragraph 7 of the Statement of Claim, the defendant denies that the use of its said label or otherwise had infringed the plaintiffs alleged trade mark No. 27409.
9. The defendant’s use of the said label in connection with the antibiotic capsule is not calculated to confuse or lead and has not in fact led to any deception or to the belief by the public that “GONORCIN” capsules of the defendant are the antibiotic capsules of the plaintiff sold under the label GONOCIN 030.
10. The defendant will contend at the trial that the word GONORCIN, used by the defendant is a bona fide description of the character or type of antibiotic preparation.
11. The defendant will further contend at the trial that the plaintiffs are not competent to institute this action.
12. The defendant will at the trial rely on the following document (sic) in proof of its case.

“(a) Receipt books issued by the defendant in respect of drugs including GONORCIN since 1969 – i.e.

(i) Issue 801 – 900

(ii) Issue of Foreign Goods; 5601, 2600