Iyke Medical Merchandise V Pfizer, Inc (2001)

LAWGLOBAL HUB Lead Judgment Report

UWAIFO, J.S.C. 

This action has its cause in the tort of passing-off. The plaintiffs (now respondents) claim to be entitled to the trademark of a pharmaceutical product, a worm expeller for the treatment of worms in children and adults, known as COMBANTRIN PLUS duly registered under Trade Mark No.31159. There is another pharmaceutical product branded COMBINTERIN put on public sale by the manufacturer/distributor going by the trade name IYKE MEDICAL MERCHANDISE sued as the defendant (now appellant). The said COMBINTERIN is offered for the treatment of worms in both children and adults as though the plaintiffs’ COMBANTRIN.

The respondents then brought a suit against the appellant on 18 October, 1993 at the Federal High Court, Enugu claiming for-

“1. An injunction to restrain the defendant whether acting by itself, its servants or agents or any of them or otherwise howsoever from doing the following acts or any of them that is to say:

(i) Infringing the 1st plaintiff’s Trade Mark COMBANTRIN PLUS registered under No. 31159.

(ii) Passing-off, or causing, enabling or assisting others to pass-off the Defendant’s product purported to be a worm expeller branded as ‘COMBINTERIN’ (hereinafter referred to as the infringing product) not being of either of the Plaintiffs’ manufacture or merchandise as and for the plaintiffs ‘COMBANTRIN’ worm expeller.

(iii) Importing, causing to be manufactured, selling, offering for sale or supplying the infringing product or any other product in packages on which has been printed a mark or which has a get-up which so nearly resembles the mark or get-up used by the Plaintiffs in connection with their COMBANTRIN worm expeller as to be calculated to lead to the belief that worm expeller products not of the Plaintiffs manufacture or merchandise are products of the Plaintiffs or are otherwise connected to the Plaintiffs or the Plaintiffs products.

(iv) Causing to be manufactured, importing, selling, offering for sale or supplying worm expellers or any other product under the trade mark ‘COMBANTERIN’ as to be calculated to lead to the belief that worm expellers not of the Plaintiffs manufacture or merchandise are the products of the Plaintiff.

2. An order for delivery up for destruction upon oath of all copies of the infringing product and all packages, cartons, containers and label used in connection therewith in the possession, custody or control of the defendant.
3. Damages of N5,000,000.00 or an account of profits.”

The respondents also filed a motion for an interim injunction. In the meantime the appellant brought a motion praying that the suit together with the motion for interim injunction be dismissed on a number of grounds. It is enough for me to mention four, namely (i) that the defendant is a non-legal entity and cannot sue or be sued; (ii) that the 1st plaintiff is a foreign company and cannot sue or be sued in Nigeria; (iii) that the 2nd plaintiff has no reasonable cause of action or locus standi to institute the suit; and (iv) that the court lacks jurisdiction to try the matter as there are no proper parties before the court.

The affidavit in support of the motion was sworn by Ethel Okonkwo. He styled himself a Nigerian businessman of No. 15 Sheaba Street Fegge, Onitsha running his business at the Niger Bridge Head Market, Onitsha. He deposed among other things that he was served with the court processes in this suit by a bailiff on or about 20 October, 1993. Further, that he was not IYKE MEDICAL MERCHANDISE and that from the information given to him by his Counsel, O.J. Nnadi Esq., the said IYKE MEDICAL MERCHANDISE was not a person known to law.

The motion was heard by Abutu, J. In a considered ruling given on 4 February, 1994, the learned trial Judge struck out the defendant’s name and dismissed the suit. Before doing so, he made the following observation:

“The crucial question in my view is whether or not the party sued is a partnership or an individual sued by his business name. For a party relying on order 4 Rule 6 of the Rules of this Court and order 13 Rule 42 of the Lagos High Court (Civil Procedure) Rules 1972 must show conclusively that the party suing or being sued is a partnership or an individual sued by his business name. The averment in paragraph 1 of the counter-affidavit above set out shows that the plaintiffs themselves are not certain about the status of the defendant. They appear not to have made any investigation regarding the status of the defendant before the commencement of this action. Under S. 657 (3) of the Companies and Allied Matters Act, 1990 the person or persons on whose behalf the business is carried on are required to furnish to the Registrar their present forenames and surname at the time of registration. If the plaintiffs in this case carried out any investigation they would, no doubt, know the names of those on whose behalf the business is being carried on.

What is more, in the case of a registered business name, the identification letters of the state of registration is required to be added to the business name in brackets at the end of the name. See Ss. 658 and 659 of the Companies and Allied Matters Act, 1990. There is no such State identification letters added to the name of the defendant in this case. The end result of what I have said so far is that there is no evidence before me that the defendant is a partnership or an individual sued by his business name. Order 4 Rule 6 of the Rules of this Court and Order 13 rule 42 of the Lagos High Court (Civil Procedure) rules. 1972 above set out apply only to partnerships or individual business names known to law. Undoubtedly the defendant is not a juristic person and there is no evidence before me that it is a registered partnership or the registered business name of an individual. The defendant is therefore not a proper party.”

The appeal to the Court of Appeal Enugu Division, against that judgment was allowed on 8 December, 1994. The court held that IYKE MEDICAL MERCHANDISE could be sued. The appellant has filed four grounds of appeal against that decision. From those grounds of appeal, two issues for determination were set down in the appellant’s brief of argument as follows: