Smithkline Beecham Plc. v. Farmex Ltd.
Federal High Court, Lagos Judicial Division
Judgement delivered on Monday, January 6, 2003
Citation: 46 NIPJD [FHC. 2003] 880/97
Suit No. FHC/L/CS/880/97 Jurisdiction: Nigeria
Judgement delivered by Honourable Justice Egbo-Egbo
Appearances: Mr. Obatosin Ogunkeye for the Plaintiff
Mr. Ishola Adegbenro for the Defendant
Smithkline Beecham Plc…………………………………………………….PLAINTIFF
Generic Names, Infringement of Generic Names — The court considered whether the name “MILK OF MAGNESIA” is generic; Whether a generic name is registrable and if so, whether the Defendant infringed the Plaintiff‟s registered trademark.
EGBO-EGBO, J.: In the particulars of claim dated and filed on 6/8/97 and which were substantially amended by an Amended Statement of claim dated and filed on 11/4/2000, the Plaintiff herein SMITHKLINE BEECHAM PLC claimed from the Defendant herein FARMEX LIMITED as follows:
“A. An injunction to restrain the Defendant whether acting by themselves, their servants or agents or any of them or otherwise however from doing the following acts or any of them, that is to say:
(i) Infringing the Plaintiff‟s registered trade mark No.12303 in Class 3.
(ii) Manufacturing, selling and offering for sale or supplying any pharmaceutical product bearing the trade mark MILK OF MAGNESIA.
B. An Order for obliteration upon oath of the trade mark MILK OF MAGNESIA or any colourable imitation thereof appearing upon the label, package or advertisement of any Pharmaceutical product made, sold or offered for sale by the Defendant, the use of which bearing the Trade Mark MILK OF MAGNESIA would be a breach of the injunction praying for and verification upon oath that the Defendant no longer has in its possession custody or control any product so marked.
C. Damages in the sum of N20,000,000.00 against the Defendant.
D. Alternatively an account of profits.
E. Further or other reliefs”.
Pleadings were ordered on 25/2/98, filed and exchanged and the first witness for the Plaintiff whom I shall hereinafter refer to as PW1 was OLANIYI ALAWODE, a Pharmacist in the employment of the Plaintiff, one of the members of SMITHKLINE BEECHAM GROUP of which the Plaintiff is the head. PW1 testified that the Plaintiff was the registered owner of the trademark MILK OF MAGNESIA which was being infringed by the Defendant. He emphasized that the Plaintiff was not the original owner but acquired it from STERLING PRODUCTS PLC. A certified true copy of the Certificate of registration of PHILIP MILK OF MAGNESIA, Certificate of Renewal and Certificate of Assignment were admitted and marked Exhibit A – A2. The sample of the product sold by the Plaintiff, a bottle of Philip Milk of Magnesia – the suspension was admitted and marked Exhibit B while a packet of the Tablets was admitted and marked Exhibit C.
PW1 averred that Plaintiff and her successor in title have been using this product for more than 40 years in Nigeria. They have promoted the product on radio, television, Press, outdoors and Bill boards.
PW1 said he knew the Defendant as a company manufacturing pharmaceutical products one of which was Dr. Meyer Milk of Magnesia and was based in Ota. The sample of Dr. Meyer Milk of Magnesia was admitted in evidence and marked Exhibit D. PW1 explained that Milk of Magnesia was not a generic name and in particular in Nigeria it was not a generic name. The generic name known within the pharmaceutical circle was MAGNESIUM HYDROXIDE.
The Plaintiff has trade mark registration in other countries other than Nigeria for milk of Magnesia. A certified true copy of such registration in the United Kingdom and Northern Ireland were admitted and marked Exhibit E – E1 while that of Sweden and its translation was admitted and marked Exhibit F; that of Spain was also admitted and marked Exhibit G; that of Switzerland was Exhibit H and Benelux countries was Exhibit J.
PW1 said NAFDAC did not use Milk of Magnesia as a generic name. In the registration licence issued to the Defendant in respect of Dr. Meyers Milk of Magnesia the generic name which NAFDAC recognized was MAGNESIUM HYDROXIDE. Exhibit MA exhibited by the Defendant to the counter affidavit was admitted and marked Exhibit K. PW1 explained that the United States of America PHARMACOPIA was not the only PHARMACOPIA in the world. And PHARMACOPIA was the BIBLE or reference book for all pharmacists. It contained monographs of products and materials. There was a British PHARMACOPIA, but Milk of Magnesia did not appear in it as a generic name and this fact was checked from 1953 Edition till date. The entries for British PHARMACOPIA commission was admitted and marked Exhibit L.
PW1 stressed that the Nigerian Pharmaceutical Industry was not bound by either US or British Pharmacopia and since the Nigerian Pharmaceutical Industry did not have a Pharmacopia of its own, it could make use of any of the Pharmacopia as reference book.
It was not true as contended by the Defendant that Phillips Milk of Magnesia ceased to circulate in this country for 10 years as he bought one that morning. The product bought that morning and the receipt were admitted and marked Exhibit M – M1. Since this suit was instituted PW1 bought the products in 1997, 2000 and 2001 and the product bought in 2000 and the receipt were admitted and marked Exhibit N – N1.
PW1 asserted that similar products of the Defendant were sold in almost every shop in Nigeria. Apart from the application of the trade mark on the product, they have been used in the advertisement and promotion of the Defendants‟ products. One of such advertisement product in picture form was admitted and marked Exhibit P. Plaintiff was requesting this court to compel the Defendant to stop the use of the Trade Mark of the Plaintiff and to pay a reimbursement of N20 million. He emphasized that the product, Phillips Milk of Magnesia has been registered with NAFDAC which registration lapsed in November, 1999 and efforts were being made to renew the registration. It was in the gazette. The supplement of the Gazette on Page 466 of No. 27 Volume 85 Published on 29/4/98 was admitted and marked Exhibit Q.
Under cross examination by the Learned counsel for the Defendant, Mr. Ishola Adegbenro, PW1 said the meaning of Milk of Magnesia was a preparation listed in the product of Smithkline Beecham Plc. Nigeria did not have a pharmacopia but the Nigerian Pharmaceutical industry used British pharmacopia popularly referred to as B.P, as well as European, Japanese, USA, African and International pharmacopiae.
Phillip Milk of Magnesia was registered with NAFDAC in 1994 and the requirements for registration of product with NAFDAC were stated in the relevant guidelines. What Plaintiff registered was Phillips Milk of Magnesia of different dosage. Plaintiff also has the suspension as well as the tablets of Phillips Milk of Magnesia and they all served the same medicinal purpose. PW1 did not know the class Phillips Milk of Magnesia was registered as he was not expert in Trade Mark. NAFDAC did not register Trade Mark but the product. Magnesium Hydroxide was a chemical name for a substance of medicinal use, At the time this product was registered in 1994 it was not a condition that the registration number be placed on the label of the product. Secondly, a product of International commerce did not have to bear NAFDAC Registration number. All locally produced products of Plaintiff‟s company bore NAFDAC registration number. Plaintiff never imported products not registered with NAFDAC. This witness was not re examined and that was the case of the Plaintiff.
The only witness for the Defendant whom I shall hereinafter refer to as DW1, a Pharmacist said the subject matter of this suit was an alleged infringement of the name milk of magnesia, a generic name which the Plaintiff erroneously registered as a trade name and claimed to belong to her exclusively. That the Defendant was a company incorporated in Nigeria and was engaged in the manufacture of pharmaceutical products under different trademark and names. The Defendant was the authorised user of the trademark “Dr. Meyers” which was being used on a variety of her pharmaceutical products. The letter of authorization, the acceptance and certificate of registration for the trade mark, “Dr. Meyers” from Vitabiotics Nigeria Limited were admitted and marked Exhibit R – R2.
DW1 explained that the name, Milk of Magnesia, was a generic or common name or scientific name which was similar to other common names like paracetamol, Menthronydsol, Ampicillin and many others. Milk of Magnesia was documented in United States Pharmacopia USP as a generic name. He tendered the relevant page of the United States Pharmacopia which Milk of Magnesia was described as a generic name and it was admitted and marked Exhibit S. Furthermore he testified that MILK OF MAGNESIA was being manufactured by other pharmaceutical companies both in Nigeria and outside Nigeria. These companies did so by adding a prefix before it was registered as a trade mark. Like in Nigeria there was MILLEX MILK OF MAGNESIA while outside Nigeria there were Brand names like EQUATE MAJOR MILK OF MAGNESIA, PAMECO MILK OF MAGNESIA and many others. The associate company of the Plaintiff, VITABIOTICS NIG. LTD. commissioned a Consultant Firm to study this issue and the result was that the market abound with several brand names of Milk of Magnesia. The report of the consultant was admitted and marked Exhibit J. The various brands of Milk of Magnesia both in and outside Nigeria were admitted and marked Exhibit U – U3. The receipt used in purchasing Exhibit U – U3 was marked as ID1.
DW1 reiterated that the word Milk of Magnesia a generic name, it should not have been registered as a trade name on its own except as an appendix to a brand name. He was aware the Plaintiff was claiming that as a result of the Defendant‟s use of the term milk of Magnesia that the Plaintiffs reputation was being affected. DW1 contended that the Plaintiff has no exclusive right to the use of the word “Milk of Magnesia” because it was a common name available to any pharmaceutical company that was interested in producing Milk of Magnesia. Any reputation that the Plaintiffs product could have purportedly acquire must be from the word “Phillips” and not milk of magnesia because the Plaintiff marketed their product as Phillips Milk of Magnesia.
DW1 was aware the Defendant’s product, Dr. Meyers Milk of Magnesia was registered with NAFDAC with Certificate of Registration. It was also to his knowledge that MILLEX MILK OF MAGNESIA was also registered with NAFDAC. The Certificate of registration of the defendant was admitted and marked Exhibit V.
DW1 stressed that Defendant‟s Dr. Meyers Milk of Magnesia could not confuse the buying public with that of the Plaintiff because the Defendant‟s was “Dr. Meyers” while the Plaintiff used “Phillips”. There was no similarity between the two names to confuse the public. The Defendant, DW1 emphasized , has not infringed the Plaintiffs trademark because of the reason stated above. Therefore the Plaintiff was not entitled to damages and any restraining orders. He urged the court to dismiss the Plaintiff‟s claim and award costs against the Plaintiff.
DW1 was aware the Defendant has a counter claim against the Plaintiff and he would want the court to order that the name, MILK OF MAGNESIA, should be struck off from the register of Trade Marks by the Trade Marks Office, Abuja or in the alternative to order an amendment as Phillips Milk of Magnesia. He urged the court to award N20 million in favour of the Defendant. Certificate of renewal for a period of 14 years was admitted and marked Exhibit W. In addition to the various brands already submitted to this court, there was also Phillips Milk of Magnesia produced and marketed by Bayer Corporation in USA and the sample was admitted and marked Exhibit X. While the photocopy of the purchase receipt was ID II.
Under cross examination by the Learned counsel for the Plaintiff, Mr. Ogunkeye, DW1 said Exhibit U was manufactured in August, 2000. The product shown to DW1, according to the package, was manufactured by the same manufacturer of Exhibit U and this was admitted and marked Exhibit Y. Exhibit Y was manufactured in September, 1994. As at the time this Suit was instituted it was true COMPHARM PRODUCTS LTD was branding its Magnesium Hydroxide Products as MILLEX MILK OF MAGNESIUM.
Looking at Exhibit P it was true that NAFDAC stated the generic name of Dr. Meyers Milk of Magnesia to be Magnesium Hydroxide. DWl was aware in the British Pharmacopia, Milk of Magnesia did not appear as generic name of Magnesium Hydroxide, but it appeared in USA Pharmacopia. DW1 was also aware that Phillips Milk of Magnesia had been on sale for a long time. DW1 confirmed that the Nigerian Pharmaceutical Industry could use any Pharmacopia, whether USA or British. This witness was not re examined and that was the case for the defence.
In his final address Learned counsel for the Defendant, Mr. Ade Agunbiade referred to the Claims of the Plaintiff as herein before stated by this court and summary of the evidence adduced in support as well as the pleadings of the Defendant and the evidence adduced in support. Thereafter he formulated the following 3 issues for determination:-
1. Whether the name “MILK OF MAGNESIA” is GENERIC.
2. Whether a generic name is registrable.
3. Whether the Defendant infringed the Plaintiff‟s registered Trade Mark.
In his address in respect of issue No.1 – whether the name Milk of Magnesia is generic. Learned counsel after referring to paragraph 13 of the Plaintiff’s amended statement of claim which alleged that the Defendant adopted its brand name, submitted that the Plaintiff could not claim exclusive ownership of the name MILK OF MAGNESIA because Milk of Magnesia was a generic, or common or scientific name used freely in the medicinal and pharmaceutical world.
In support he referred to the evidence of PW1 in which he acknowledged and indicated that Exhibit S was a reference book for all pharmacists in which MILK OF MAGNESIA was documented as a generic name. He also referred to United States Pharmacopia (USA) at Page 457, the Blacks Law Dictionary, 7th Edition at Page 694 and submitted that Plaintiff could not lay claim to the exclusive ownership of the name “MILK OF MAGNESIA” as it was generic or common or scientific name freely used in the medicinal and pharmaceutical world to describe the chemical composition of Magnesium Hydroxide suspended in water.
Under Issue No. 2 whether a generic name was registrable he contended that Plaintiff’s registration of the name “MILK OF MAGNESIA” at the Trade Marks Registry was a misnomer by virtue of Section 12(1) of the Trade Marks Act Cap. 436 Laws of the Federation of Nigeria, 1990. That the Plaintiff admitted in paragraph 5 of her amended Statement of claim that their Trademark Milk of Magnesia was registered in class 3 of the 3rd Schedule as a chemical substance and submitted that the words “Milk of Magnesia” with added brand names like the Plaintiff‟s Phillips and the Defendant‟s brand name “Dr. Meyers” were widely used and marketed all over the world to describe the chemical formula of Magnesium Hydroxide, suspended in water. He explained that milk of magnesia could be likened to other general names, like PARACETAMOL, AMPICILLIN, METRONIDAZOLE etc which no company could claim to own the property in those mentioned names. Various brands of paracetamol abound in the market. The fact that one company registered its paracetamol product earlier in time than the others did not preclude others from the use of the name, paracetamol, being a generic or common scientific name.
Apart from the name MILK OF MAGNESIA being of a generic usage widely used by various pharmaceutical companies all over the world to describe the chemical formula of magnesium hydroxide, Learned counsel further referred to paragraphs 5 & 6 of Plaintiff‟s amended statement of claim to the effect that the alleged infringed Trade Mark was originally registered by Sterling Products International Incorporated before assigning it to the Plaintiff. He submitted that in the country of origin of the original owners of the Trade Mark, the United States of America, several other pharmaceutical companies produced Milk of Magnesia and went as far as indicating on the body of the products the words “compare with Phillips Milk of Magnesia” was not a general name several other pharmaceutical companies could not manufacture and offer for sale the same product and even indicate as above stated. He urged the court to compare Exhibit U, Exhibit U2 and Exhibit U3. Any reputation or goodwill it might purport to have acquired over the years could be attributable to her brand name „Phillips‟ which is the name Plaintiff is selling and not the generic name of Milk of Magnesia which any other Pharmaceutical company can use.
On issue No. 3 whether the Defendant has infringed the Plaintiff‟s registered Trade Mark, he referred to paragraph 13 of Plaintiff‟s amended statement of claim and submitted that it was trite law that in determining whether there was an infringement of registered trademark, the court has to be satisfied not merely that there was a possibility of confusion but that there was a tangible danger of confusion between the mark complained of vis à vis the mark alleged to be infringed. The resemblance must be so deceptively similar as to confuse the buying public into believing that the products were one and the same thing. He relied on the case Bellsons & Co. v. Godwin Aka & Ors. (1972) 1 SC 215 at 223 or (1972) 7 NSCC 48 – 53 and Ferodo Ltd. v. Ibeto Ind. Ltd. (1999) 2 NWLR (Part 592) 509 at 521. He submitted that the appearances of both products, a prospective buyer when buying the Defendant‟s Exhibit D could not be deceived as to be buying the Plaintiffs Exhibit B.
He further submitted that the Defendant‟s manufacture and sale of Exhibit D could not amount to an infringement of Plaintiff‟s Exh. B. The brand names “Phillips” and “Dr. Meyers” were the distinguishing features to easily differentiate the product of the Plaintiff from that of the Defendant. If the Defendant were to use such brand names as “FILLIPS” “FILLIBS”, “FELEPS” etc where the syllable in the names sound same as that of the Plaintiffs brand name, an infringement action could be sustained in that instance.
On the issue of damages he submitted that special damages in every respect must be proved. That Plaintiffs pleadings in paragraph 15(c) of her amended statement of claim were not particularized. The Plaintiff failed to show how she came about losing the amount claimed in that paragraph and relied on Gurara Security and Finance Ltd. v. T.I.C. Ltd. (1992) 2 NWLR (Part 589) ratio (6). Also general damages were such as the law will presume to be normal or probable consequence of the act complained of and the court has a discretion to make the award. The Plaintiff has not showed how they arrived at the N20 million damages they were claiming to be entitled by expert evidence.
He urged the court to award N20 million being general damages due to the Defendant for the embarrassment caused by the institution of this suit and the expenses incurred by the Defendant in the defence of this suit.
In his reply to the above submissions Learned counsel for the Plaintiff, Mr. Obatosin Ogunkeye stated the facts of his case as contained in the statement of claim as well as the case of the Defendant as borne out by her statement of defence. He formulated 3 issues for determination as follows:-
i. whether at the time trade Mark No.12303 was registered the name “Milk of Magnesia” was a generic name?
ii. whether the trade mark 12303 ought to be removed from the register or rectified as prayed.
iii. whether the Defendant is liable for infringement of trade mark No.12303.
On issue No.1 whether at the time Trade Mark No.12303 was registered the name “Milk of Magnesia” was a generic name, Learned counsel contended that the onus of proving that the words “Milk of Magnesia” was a generic name at the time Trade Mark No. 12303 was registered rested on the Defendant and she has failed to discharge that onus. Learned counsel advanced 7 reasons to show that Defendant has failed to discharge that onus of proof. He first argued that the rights granted under the Nigerian Trade Marks Act were rights exercisable only in Nigeria. For that reason the determination whether a trade mark was distinctive as to qualify for registration under the provisions of Section 9 of the Trade Mark Act or contrary to law or morality as to be disqualified from registration under Section 11 of the Trade Marks Act, or liable to be removed from the register or rectified in accordance with the provisions of Section 38 of the Trade Marks Act has to be made with reference to Nigerian circumstances only.
American examples or that of any other country outside Nigeria must be avoided completely. Therefore if an application was made for removal of a trade mark from the register of Trade Marks in Nigeria for the reason that the trade mark is generic name in Nigeria and not in any other country. Secondly, on the applicability of the provisions of Section 12(1) of the Trade Marks Act discussed by the Defendant above Learned counsel posited that for the reason that Section 12(1) excluded the commonly used and accepted names of mixtures, as opposed to single chemical elements or compound, from prohibition from registration imposed thereby, it is important to first prove that a product is a single chemical element or compound and not a mixture before Section 12(1) can be said to apply. The Defendant did not lead any evidence on this point and the court should reject the argument of the Defendant that Section 12(1) of the Trade Marks Act applied in this case.
Thirdly on the contention that the name “Milk of Magnesia” was scientific name meaning the acceptance as the name of the product in scientific circles all over the world, Learned counsel referred to Pharmacopiae of US and Britain where such consensus opinion was lacking. He also referred to Exhibits E – E1, F, G, H and J which Plaintiff tendered and argued that if indeed the name was universally accepted generic name for the product it would definitely not be registered in all industrialized countries. No trade mark law regime in the world would register scientific or generic name of products as a trade mark.
He further stated that Milk of Magnesia was a very old trade mark as evidence by the fact that it was first registered in the U.K. in 1879. It was therefore possible that due to the extreme popularity of the product in the US, the name became synonymous with the chemical name of the product. This happened often to products which were the first of its kind in the market. After relying on some cases learned counsel concluded that before this court could uphold the defence and counter claim of the Defendant evidence must show that within Nigeria the words “Milk of Magnesia” was, at the time the trade mark was registered, regarded by the relevant public as a generic name for the product proposed to be sold under the mark.
Furthermore the USP tendered in evidence was dated 1/7/80 and the entry in the document did not prove that prior to 11/10/61, Milk of Magnesia was a generic name even in the United States of America. That exhibit did not support the contention that the name was generic at the time the trade mark was registered.
That Exhibits K & P tendered by the parties to this suit showed on their reverse- side that the generic name of the product registered as “Dr. Meyer‟s Milk of Magnesia” is Magnesium Hydroxide and not Milk of Magnesia to support the testimony of PWl that in Nigeria the generic name for the product branded as Phillips Milk of Magnesia was Magnesium Hydroxide.
Lastly on Exhibits U – U3 and K Learned counsel contended they were manufactured within the past few years and did not constitute evidence of usage of the name Milk of Magnesia prior to 11/10/61. The oral testimony of DW1 and Exhibit T showed that most of the samples were purchased in the United States of America, the rest, no indication as to place of purchase.
That Exhibit U was made in Nigeria and manufactured in the year 2000. A product made in 2000 did not constitute relevant piece of evidence against registration of Trade Mark No. 12303.
On issue No. 2 whether the Trade Mark No. 12303 ought to be removed from the register or rectified as prayed Learned counsel submitted that having concluded that the Defendant has failed to prove that the name “Milk of Magnesia” was generic in Nigeria at the time the said trade mark was registered, or that it qualified as a commonly used and accepted name of a single chemical element or compound as to be excluded from registration under Section 12(1) of the Trade Marks Act, it must consequently be concluded that there was no valid basis for removing the trade mark from the register. He also relied on Section 14(1) of the Trade Marks Act on the presumption of validity after 7 years of registration of a trade mark.
On issue No. 3 whether the Defendant was liable for infringement of Trade Mark No.12303, he pointed out that the Defendant did not raise any other defence to the claim except the challenge to the validity of Trade Mark No. 12303. Therefore once the court holds that the trade mark was valid and subsisting, the Defendant must be liable for infringement of the Trade mark and relied on Section 5(2) of the Trade Mark Act. The Defendant has used the words “Milk of Magnesia” as a trade mark in connection with a medicinal substance, which was one of the type of goods in respect of which trade mark No.12303 has been registered. He referred to Kerly’s Law of Trade Marks and Trade names, 12th Edition, paragraphs 15 – 58. It has further been held that the mere proof of an infringement entitled the Plaintiff to damages, and therefore no allegation of special damages was a necessary part of the Plaintiff‟s case Lead Way v. Bentham (1892) 2 Q.B. 639. He urged the court to uphold the claims of the Plaintiff.
It is important to note that even though learned counsel for the Defendant intimated the court on 16/12/2002 that he had filed a reply on points of law to the above final address of the Plaintiff, that reply on points of law was not made available to me as at the time this judgment was written. Above represents the evidence led by all parties to this case and addresses of Learned counsel representing them.
The facts in this case are not in dispute and Defendant has put the Plaintiff on the defensive by virtue of her counter claim which in my opinion raised arguable substantial issues.
That is the reason I could discern from the issues formulated by Plaintiff‟s counsel that issues 1 and 2 were devoted to defending the counter-claim. With his experience in legal practice and ingenuity I was impressed Mr. Ogunkeye adopted that approach and out of all the points marshaled out by him, only one point appealed to my conscience and made me to reconsider the issue of Milk of Magnesia being a generic name.
I do agree with the submission of Learned counsel for the Defendant that Plaintiff could not claim exclusive ownership of the name “Milk of Magnesia” because milk of Magnesia was a generic or common or scientific name used freely in the medicinal and pharmaceutical world. I also agree that in Exhibit S, a reference book for all pharmacists it was there documented as a generic name. The same situation was applicable to United States of America Pharmacopia as well as in Blacks Law Dictionary. It is only in the British Pharmacopia that it is not so recognised. In Exhibit L, Mrs. H. J. Judd of British Pharmacopia Commission Secretariat wrote to the Plaintiff and in paragraph two stated as follows: “It would appear that the title „Milk of Magnesia‟ has not been used as an official title in the United Kingdom. „official‟ in this sense means a title or subsidiary title at the head of monograph in the British Pharmocopia. There is however, a monograph with this title in the United States Pharmacopia (USP) which also described a suspension of magnesium hydroxide. Obviously, this monograph title that is not recognised in the United Kingdom as an official title, but might be in countries that use the USP.
The fact that the United Kingdom alone does not recognize it does not mean that it is not universally recognised as that country is in the minority. In Nigeria National Agency for Food and Drugs Administration and Control (NAFDAC) also recognised Magnesium Hydroxide as a generic name – See Exhibit K. This court is also of the view that Milk of Magnesia or Magnesium Hydroxide is a generic or common or scientific name used in the pharmaceutical world except United Kingdom. It was in recognition of this fact that prompted the Plaintiff to prefix the word PHILLIPS to “Milk of Magnesia”.
I have mentioned earlier in this ruling that learned counsel for the Plaintiff advocated a point that has stayed the hands of this court from granting the prayer that Milk of Magnesia was a generic name and therefore should not have been registered and the crucial point he made on that score was “before this court could uphold the defence and counter claim of the Defendant evidence must show that within Nigeria the words “Milk of Magnesia” were at the time the trade mark was registered, regarded by the relevant public as a generic name for the product proposed to be sold under the mark”. The point which was well made here is that at time this trade mark was registered the pharmaceutical world did not recognize it as a generic name. As it has now acquired that status in the official and unofficial circles it is to the relevant authority to consider registering it with the word Phillips added to it, but this court cannot order that the name be removed from the Register of Trade marks. That would be wickedness aimed at destroying the commercial life of the Plaintiff.
As for the claim of the Plaintiff, I have a very few words to say. What the Plaintiff registered as per Exhibits A, Al, A2, E, El, F, G, H and J were the words “ MILK OF MAGNESIA” but all products of the Plaintiff starting from Exhibit B, C, M, N, and X bore the words “PHILLIPS MILK OF MAGNESIA” which he styled a brand name. The argument here is that if the Plaintiff as a proprietor in Nigeria of the trade mark MILK OF MAGNESIA chose to name her product under the brand name PHILLIPS MILK OF MAGNESIA, the Defendant‟s product under another brand name of DR. MEYER‟S MILK OF MAGNESIA cannot infringe either MILK OF MAGNESIA or PHILLIPS MILK OF MAGNESIA. They are not the same or similar. Plaintiff cannot honestly claim that the adoption of the brand name DR. MEYERS MILK OF MAGNESIA has infringed its brand name, Phillips Milk of Magnesia. I hold that the brand names “Phillips” and “Dr Meyers” are the distinguishing features to easily differentiate the product of the Plaintiff from that of the Defendant. I hold that both Exhibits B and D and the marks on them to a prospective buyer will not cause any confusion or be deceptive as they are not in any way similar. I also agree with the Learned counsel for the Defendant that any reputation or goodwill Plaintiff might purport to have acquired over the years or purported to be acquiring is not as a result of the words “Milk of Magnesia” but because of its brand name “Phillips” which is the name the Plaintiff is selling and not the generic name “Milk of Magnesia” which any other pharmaceutical company can use.
From the foregoing I am of the firm opinion that there is no merit in the claim of the Plaintiff. He has not proved his case on a balance of probability. The counter claims also failed for reasons stated above. Case of the Plaintiff is dismissed.
No order as to costs.