The task force on fake and counterfeit drugs in Lagos State, the commercial heart of Nigeria has intensified its crusade against pharmacies carrying on business without qualified pharmacists. Such shop are henceforth to be sealed. To date about 20 shops have been sealed for failure to employ qualified pharmacists or unlicensed trading.
Trade mark and passing off.
Recently, a number of high profile trade mark and passing off infringement cases have come up for determination at the Federal High Court Lagos.
Of particular interest are the following cases:
(1) Suit No FHC/L/CS/460/95 CPL Industries Ltd - Plaintiff AND Sterling Products Nig Plc 1st Defendant SmithKline Beecham Plc 2nd Defendant
The Plaintiffs filed an action in the Federal High Court Lagos against the Defendants for infringing the use of their eclipse device, a registered trade mark with the words CONPHAMOL inscribed therein.
The 1st Defendant's who claim to have been licensed by the 2nd Defendants, the owners of the world known eclipse device with the words PANADOL inscribed therein, have counter-claimed against the Plaintiff's for (i) an injunction restraining them from using the eclipse device with the words conpharmol inscribed therein (ii) a rectification of the Trade Marks Register on the grounds that a previous unregistered eclipse device with the words Panadol inscribed therein has been used for several years before the Plaintiff's registration.
The Defendants intend to rely on market survey evidence to prove prior use of the eclipse device.
The present proceedings is of interest in various ways. If the Defendants should indeed prove prior use, then the court may have to order a rectification of the Trade Marks Register. This is not only rare but would also have far reaching implications on Nigerian Trade Mark law and practice. There are likely to be several other similar cases nation-wide following on as a result of such a decision. It will also be interesting to see the degree of weight the courts will attach to market survey evidence.
(ii) Suit No. FHC/L/CS/1258/96 Chemiron International Ltd. - Plaintiff AND Ranmax Laboratories Nig Ltd & 5 Ors - Defendants Facts
In this suit which has attracted a blaze of publicity, the Plaintiffs sought and obtained an Interlocutory Injunction restraining the Defendants whether acting by themselves their servants, agents, privies or otherwise from passing off their Red Iron preparation capsules as those of the Plaintiff pending the hearing and determination of the trial. Dissatisfied with this Ruling the Defendants have bought an application for stay of execution and proceedings pending an appeal.
This case has thrown up a number of interesting questions and issues.
I. Is the colour Red generic to iron and blood enriching preparations?
II. Should a pharmaceutical manufacturer be given the exclusive use of any one of the seven primary colours i.e in this case the colour Red?
III. Is such a claim to the exclusive use of the colour Red anti competitive and against public policy/interest?
In the pharmacy industry the colour of capsules are often associated in the trade with the product for easy identification, for example:
Red + Yellow colour - Tetracycline Capsules. Red + Black colour - Ampicillin Capsules Green colour - Doxycycline Capsules Ivory colour - Indomethacin Capsules Red colour - Hematanic Capsules Black + Lavender - Ampicillin + Cloxacillin Capsules.
The Court of Appeal looks set to pronounce on these issues soon.
The case for the 3rd and 4th Defendants is being conducted by our Principal Partner, Richard Akinjide, Senior Advocate (SAN) and our intellectual property partner, Stephen Kola-Balogun.
(iii) Suit No FHC/LCS/1344/95 Societe Des Products Nestles S.A - 1st Plaintiff Nestle foods Nigeria Plc - 2nd Plaintiff AND Consolidated food Beverages Ltd - Defendants
The Plaintiffs who are manufacturers of seasoning stock cubes packaged in yellow wrapping with the word "Maggi" written and a star logo printed in red brought an action in the Federal High Court Lagos against the Defendants for alleged trade mark infringement.
The Defendants claim that their seasoning cube is distinct from that of the Plaintiffs in that it is packaged in a deep yellow wrapping edged in red with the words "Doyin" printed below their crown logo.
In the first instance an Interim Order of Injunction was granted against the Defendants but the order was subsequently discharged and the Plaintiff's application for Interlocutory Injunction denied. The matter is awaiting trial.
It has been argued by intellectual property experts that packaging cannot be registered under the Trade Marks Act 1965. This issue should at last be resolved by the courts.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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