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Chemiron Industries Ltd. v. Ranmax Laboratories Nig. Ltd. & 5 ors.

Federal High Court

Ruling delivered on Tuesday, February 18, 1997
Citation: 39 NIPJD [FHC. 1997] 1258/1996
Suit No. FHC/L/CS/1258/96      Jurisdiction: Nigeria

Ruling delivered by Olomojobi J.

Appearances: A. O. Eghabamien for the Plaintiff
Chief B. A. Olaogun (with him is  T. A. Odu, Esq. O.) for the 1st – 4th Defendants
Umeh Kalu, Esq. for the 5th and 6th Defendants

BETWEEN:

CHEMIRON INTERNATIONAL LIMITED…………………………………………………….PLAINTIFF
v.
1. RANMAX LABORATORIES (NIG) LIMITED
2. SAM PHARMACEUTICAL LIMITED (MAXIRON CAPSULES)
3. REDIKURE MEDROX NIG. LIMITED (FORMERLY RANBAXY MONTARI NIG. LTD.)
4. FOODS & PHARMACEUTICAL MFG. CO. LIMITED
5. JAWA INTERNATIONAL LIMITED
6. FALMA ORGANICS NIG. LIMITED (Joined by Order of Court dated 17/12/96) (Sued on their behalf and on behalf of and as representing all other persons who are manufacturers or engaged in the trade or business or offering for sale any capsule which has the colour red or is confusing similar or purported to be Chemiron Capsules) (NO. 1)…………………………………………………DEFENDANTS

Passing off action based on colour — Whether the colour “red” is generic to iron and blood enriching preparations?  Whether a pharmaceutical manufacturer can be given the exclusive use of any one of the seven primary colours?

RULING

OLOMOJOBI, J:  This Ruling is sequel to the Motion on Notice filed on the 26th of November, 1996. It is brought pursuant to Order 20 Rules 3 and 4 of the Federal High Court (Civil Procedure) Rules, 1976 and the Inherent Jurisdiction of this Honourable Court. In the Motion paper, the Plaintiff/Applicant is seeking for the following orders:-

“1. An Order of interlocutory injunction restraining the Defendants and each of those on whose behalf the Defendants are sued whether acting by  themselves, their servants, agents, privies or otherwise from passing off their Red Drug Capsule as those of the Plaintiff pending the determination of the trial of this suit.

2. And for such further or other orders as this Honourable Court may deem fit to make in the circumstances”.

The motion is supported by a 37-paragraph affidavit deposed to by one Adenrele Jacob Ebo. There are two further affidavits in support of the motion. One is dated 28th November, 1996. It was deposed to by one Ola Ukiwe, a Superintendent Pharmacist in the employment of the Plaintiff/Applicant company, while the second one dated 8/1/97 was deposed to by one Dr. G.O. Ajayi of Department of Obstetrics and Gyneacology, College of Medicine, University of Lagos, Idi-Araba, Surulere, Lagos.

In moving his application, learned counsel for the Plaintiff/Applicant submitted as follows: that an Applicant seeking for an order of injunction must satisfy the Court on four  issues.

Firstly, that the Applicant has a legal right to protect. He said that for a Plaintiff to establish a legal right in an action including passing off, he must establish the following:-

1. That he has established a reputation in that particular drug either by its colour, shape or size.

2. That the product of the Defendant as manufactured is likely to cause confusion in the minds of the public: Day v. Brownrigs (1878) 10 Ch. 294.

In buttress of the issue of reputation, counsel referred to paras 3 to 11 of the main affidavit in support. He went further to submit that it is not disputed in the Defendants’ counter affidavits that the Plaintiff is the pioneer of the drug in question. Referring to paras. 12, 13, 14 and 15 of Dr. Ajayi’s affidavit of 8/1/97, he said that the Plaintiff/Applicant first enquired whether there were any drugs for the particular purpose for which it was manufactured in the particular colour in dispute. That when they discovered that there were no drugs of this colour manufactured for a particular purpose, the Plaintiff/Applicant decided to manufacture this drug in that colour. The drug, being a drug to which the public were not accustomed, they  embarked on a huge advertising campaign so much so, that when the red capsules were seen  it rang a bell in the minds of the public – “Chemiron”. Counsel said that Red Capsules speak  the Plaintiff/Applicant’s name just as if the Defendants/Respondents use the name “Chemiron”.  He submitted that the Defendants/Respondents cannot use the name “Chemiron”; and so long  they cannot do this, they cannot also use the colour with which the drug “Chemiron” is coated.

As to the question whether one can have a reputation in colour, learned counsel  referred to the case of F. Hoffman-La Roche & Company A.G. & Anor. v. D.D.S.A.  Pharmaceuticals Ltd. (1972) R.P.C. 1. Learned counsel contended that the Plaintiff/Applicant  had established a reputation in the red colour capsules. He said that the test whether this red colour which is continuously manufactured by the Defendants is likely and capable to cause confusion in the eyes of the public can be seen in the case of Edge & Sons Ltd. v. Niccolls &  Sons Ltd. (1911) AC 693. Learned counsel said that he was not unmindful of the fact that the  drugs of the Defendants/Respondents are sold in different packages as some of the capsules  have inscriptions on them, indicating the names of the Defendants. He said that the drugs are sold in sachets and not in packets. Learned counsel contended that drugs are particularly of unique nature. They come to patients in their naked forms. He said that patients attach great  importance to the naked drugs. And because a reputation has been created in the mind of the  public, the Defendants have chosen to use that colour. They were aware of this reputation, they knew that they could steal the commercial advantage, hence they chose the red colour.

Counsel referred to paras 19 to 23 of Dr. Ajayi’s affidavit. He said that the Plaintiff/Applicant is not complaining that the Defendants/Respondents cannot manufacture this  drug, neither is it complaining about their packaging. Rather, they are contending that to use the red colour is to pass-off their drugs as that of the Plaintiff/Applicant. He referred to the case of F. Hoffman-La Roche v. D.D.S.A. Pharmaceutical Ltd (Supra). He submitted that the  Defendants/Respondents are taking undue advantage of the reputation which the Plaintiff/  Applicant had established. He said that if the drugs that is, the Plaintiff’s drug and the  Defendants’ drugs are put side by side, they are indistinguishable.

The second issue to consider according to the learned counsel, is that the Applicant  must satisfy the Court that the balance of convenience is in the Applicant’s favour.

He said that what this Honourable Court is to look at is, which of the parties will suffer  greater hardship if the injunction were not granted. And in this case, taking all the averments  of the Plaintiff/Applicant into consideration, what inconvenience will it suffer? Also, what  inconvenience will the Defendants suffer if the injunction is not granted? He contended that the balance of convenience is on the side of the party who will suffer greater hardship if the  injunction is not granted – Egbe v. Onogun (1973) ALL NLR 99 101. Counsel referred to paragraph 5 of the main affidavit in support, wherein it is averred that the Plaintiff/Applicant  has spent over 1.6 Billion in research. He also referred to paragraph 6 of the same affidavit.  He said that it is imperative that an injunction be granted to protect the entire business of the Plaintiff/Applicant.

He said that the Defendants/Respondents import their goods from India. Whereas, the  bulky part of the Plaintiff/Applicant drug is carried out here in Nigeria. He submitted that the  inconveniences which the Defendants/Respondent are likely to suffer if this injunction is  granted is likely to be little or none. This, according to the learned counsel is because, the Plaintiff/Applicant is not contending that they stop importing drugs. Its contention is that they  manufacture theirs in a distinctive colour; that is, add another colour to them. He said that the  Defendants/Respondents should be able to make a distinction between their drugs and that of  the Plaintiff/Applicant because it has made a reputation on its drug Combe International Ltd. &  Ors. v. Scholl (U.K.) Ltd. (1980) R.P.C. 1.

Counsel submitted that the Plaintiff/Applicant has established that the Applicant is the  longest established user of this colour of drug and that the law will grant protection in favour of  the longest established user as against the interloper – Chill Foods (Scotland) Ltd. v. Coll  Foods Ltd. (1977) R.P.C. 522. He submitted that the balance of convenience is in favour of  the Plaintiff/Applicant.

Thirdly, that an Applicant seeking for an order of injunction must satisfy the Court that  damages are not adequate compensation for him. Counsel submitted that in the instant action,  as in all passing off actions, damages are never adequate compensation for the  Plaintiff/Applicant. This, according to the learned counsel, is because, the extent of the loss to  the Plaintiff cannot be quantified.

As regards the licences relied upon by the Defendants, counsel contended that those  licences do not afford the Defendants any protection from the law of passing off. He referred  to paragraphs 24 to 28 of Dr. Ajayi’s affidavit. He argued that even if the Defendants have  a certificate from the Registrar of Trade Marks, Section 3 of the Trade Mark Act 1990 protects  the common law action of passing off. He said that a right to trade in a Mark does not give its  owner a right to pass off his goods as that of another person’s goods. He said that what the  Defendants have from the Trade Mark Registry is an acceptance that an application has been  lodged with it – See F. Hoffman La – Roche & Coy. v. D.D.S.A. Pharmaceutical Ltd. (Supra).  He finally said that the Plaintiff/Applicant has given an undertaking in damages in paragraph  36 of the main affidavit in support.

The 1st to 4th Defendants/Respondents opposed the Plaintiff/Applicant’s motion for  injunction. With the leave of this Honourable Court and the consent of the Plaintiff/ Applicant’s  counsel, their counsel relied on the exhibits annexed to the affidavit in support of two previous  applications. They are; (1) application dated and filed on the 11th of December, 1996; and (2) the one filed and dated the 6th of January, 1997.

Learned counsel submitted as follows:- That this suit is predicated on passing off  simpliciter and not an infringement of Trade Mark Patent. In order to have a valid action in  passing off action, the Plaintiff must prove the following:

i. a misrepresentation of the product which is the subject matter of the suit  – in this case – “Chemiron”.

ii. The product must be of goods or services.

iii. It must be made to prospective customers of the Plaintiff or the ultimate  consumer of such goods which are supplied by him.

iv. It must have been calculated to injure the business or goodwill of  another.

v. Such misrepresentation causes actual damage to the business or  goodwill of the Plaintiff. See Spalding v. Gamage (1913) 30 R.P.C.  388.

He further submitted that the Plaintiff, in a passing off action must show at least the  following facts:-

(a) That his business consists of or includes selling in Nigeria, a class of  goods to which a particular Trade name applies; and in this case, the  goods which the Plaintiff is selling is “Chemiron”. And if the Defendants  are selling “Chemiron” that will be passing off.

(b) That the same product is clearly defined and that in the minds of the  public or section thereof in Nigeria, the trade name, that is, “Chemiron”  distinguishes that class from similar goods.

(c) That because of the reputation of the goods, there is a goodwill attached  to that particular name. Learned counsel said that it has not been shown whether orally or in  writing by the Plaintiff/Applicant that it does not manufacture, market or indeed sell other products in the name of “Chemiron”. He argued that  “Chemiron” is the name of a Company; and the word is the alteration of  the word “Chemech Ltd.”.

(d) That the Plaintiff/Applicant as a member of class of seller of the goods,  is the owner of the goodwill of that product in Nigeria. Counsel said  that there is no evidence before this Court, of the expenditure of the  research carried out by the Plaintiff/Applicant.

(e) That the Applicant must show that he has suffered or is likely to suffer  damages.

Learned counsel submitted that unless and until the aforementioned conditions are  satisfied, the Plaintiff/Applicant is not entitled to any injunction. He argued that the colour red  is generic; therefore, it cannot be the subject matter of a trade mark certificate; as nobody can  claim exclusive use of the colour. Counsel referred to exhibits ‘A’ & ‘B’ to the affidavit  deposed to on 6/1/97. They are, the Certificate of Registration of “Ranferon” and the Registration of “Chemiron”. He argued that if the Plaintiff/Applicant had disclaimed the word  “Blood Nourishing Capsules” since 1988, where is the legal right they have by manufacturing  capsules and calling it “Chemiron”.

Learned counsel relied on the further and better affidavit of the 5th and 6th Defendants and the averments therein. He also adopted them.

As to the affidavit in support of the Plaintiff/Applicant’s motion deposed to by one Dr. Ajayi, counsel submitted that it raises no serious issue. He further submitted that paragraphs  4, 6, 7, 8, 9, 11 and 12; then 19 to 25 are extraneous matters alien to the issues at stake.  He said that they offend Sections 86 and 87 of the Evidence Act Cap. 112 Vol. 8 Laws of the Federation of Nigeria 1990. He referred to the case of Mr. Idowu Lamina v. Ikeja Local  Government (1993) NWLR (Pt. 314) 758 at 760. Counsel said that drugs are of two types.  They are either on prescription or over the trade counter. He submitted that the 1st to 4th  Defendants drugs are on prescription. He argued that the trade name “Chemiron” is completely  different from the trade named Ranferon, Maxiron, Hemferon-xp and Feriplus-xp which are the  products sold by the 1st to 4th Defendants/ Respondents. He said that there is no way by  which these drugs can be deemed to be the same with that of the Plaintiff/Applicant. Learned  counsel referred to exhibit ‘B’ of the 2nd affidavit. He said that letters T.P. written against the  word “Chemiron” means “Temporary”. Which according to the learned counsel means that it has not been registered.

On the capacity in which the Defendants are being sued, counsel said the persons  being sued in this case do not represent a single class. This is because, the various interests  of persons selling red capsules cannot be the same. He said that this suit would have been  directed to those selling one brand of drug. Furthermore, counsel said that a person suing in a  representative capacity must have been authorised to do so Warnink v. Townend (1980)  R.P.C. 31.

On the question of damages suffered by the Plaintiff/Applicant, learned counsel submitted that it must show that there is a reasonable probability of his being injured by the  Defendants’ action even if the conduct of the Defendants might be calculated to deceive the  public – Barthwick v. The Evening Post (1888) 37 Ch. 449. He said that the Plaintiff must  show evidence of long usage or goodwill before it can come under the umbrella of claiming  damages or that they have suffered damages. Counsel said that neither of the two affidavits relied upon by the Plaintiff/Applicant counsel shows evidence of damages. As regards the  colours of the drugs in question, learned counsel said that the colour of the Plaintiff/  Applicant’s drug is crimpson crimpson while that of the Defendants/Respondents is scarlet  scarlet. He said that no colour can be attached to a particular drug. And that the  Plaintiff/Applicant cannot claim the exclusive use of the colour red. Counsel referred to exhibit  attached to the 1st Defendant affidavit. He said that “Ranferox” has been registered since 1982  and that it has been long in the market before that date. Counsel referred to the affidavit filed  on 11/12/96. He submitted that the categories of drugs are classified by NAFDAC that is, (National Agency for Food and Drug Administration and Control). He said that the 1st to 4th Defendants are registered with this body.

On the mode of selling the Defendants/Respondents’ drugs, counsel said that there is nothing to show that they are selling their drugs in packages resembling that of the Plaintiff/Applicant.

On the question of balance of convenience, he submitted that the Defendants will suffer  more than the Plaintiff if injunction is granted in this case. He said that the products as deposed to in their counter affidavit is time sensitive. They have expiry dates. He urged the  Court to refuse the Plaintiffs application.

Having adopted the submission of the learned counsel for the 1st to 4th Defendants/Respondents in this application, counsel for the 5th & 6th Defendants/Respondents’ further submissions in opposition to the Plaintiff’s motion are as follows:- That the Motion on Notice of  25/11/96 disclosed no relief. This is because the Plaintiff’s product is not indicated on the Motion paper. That although, issues have been joined by virtue of the counter affidavit filed on  behalf of the 5th & 6th Defendants, that notwithstanding, the Court must make its order based  on the Motion paper which is before the Court. And when the Motion paper is vague as in this case, there is nothing for the Court to do. He cited the cases of Akinbobola v. Plisson Fisko  (Nig.) Ltd. (1991) 1 NWLR (Pt. 167) 270; Awoyegbe v. Ogbeide (1988) 1 NWLR (Pt. 73)  695 and Nneji v. Chukwu (1988) 3 NWLR (Pt. 18) at 184. On the aforestated issue, counsel  said that this Court should dismiss the Motion.

As alternative argument, he submitted as follows:- A party that seeks a relief under  passing off must not only say that the Defendant is making articles similar to his own. He must prove that the Defendant did sell the goods as those of his own. There must be evidence that the Plaintiff have suffered some damages as a result of the act of passing off his  goods. These, according to the learned counsel are questions of facts which can be proved by  evidence. He referred to Street on Tort 6th Ed. Pages 365 and 366 and Clerk and Lindsay  on Tort 14th Ed. Page 1213. For the Plaintiff to succeed in obtaining the relief being sought  from this Court, he must prove to the satisfaction of this Court, that it has a legal right to protect pending trial. In this case, that it has exclusive use of colour red which they are  complaining of. And that it has established a prima facie case to warrant the order. He said the Plaintiff/Applicant is complaining of the use of colour red by the Defendants’ in their  capsule. The Plaintiff’s case, according to the learned counsel could only derive from a patent right. Counsel said that even if the colour red was invented by the Plaintiff, without it being registered under the Patent and Designs Act Cap. 344 Laws of the Federation of Nigeria it cannot claim the exclusive use of the colour. He referred to Section 6 of the Act. He  submitted that the reliefs or privileges being erroneously sought by the Plaintiff are rights which have been conferred by laws on a patentee or a person holding a patent right. Learned  counsel submitted further that colours are not patentable by virtue of the provisions of Sections 1(4)(b) and 1(5) of the Patents and Designs Act. He referred to exhibits ‘02′ and ‘04′ to the further and better affidavit of 28/11/96 sworn to by Ukiwe wherein the Plaintiff, according to  the learned counsel pioneered the colour red.

As regards manufacturing of drugs, counsel said that a prospective manufacturer of drugs must obtain certificate from NAFDAC and also the Ministry of Health’s approval. He pointed out that the Plaintiff has failed to produce any certificate from NAFDAC or from any  other regulator body granting licence to produce any drug. He said that the 5th and 6th  Defendants have produced before this Court, certificates from NAFDAC authorising them to  produce and market their drugs. This, according to the counsel shows that the Defendants  have complied with the law. He submitted that before the Plaintiff can show that it has a legal  right, it should show that it has complied with the laws of land by producing its certificates  before this Court. Failure to do this, they are caught by Section 149(d) of Evidence Act.

Counsel said that the Plaintiff has been unable to prove to the satisfaction of the court  that they have a legal right which they seek this court to enforce or protect. Another issue  which the Plaintiff should prove according to the counsel for the 5th and 6th Defendants is the  likelihood of confusing the Plaintiff’s capsules with that of the 5th and 6th Defendants. He said  that the deposition in their counter affidavit is that the Plaintiff has no name for its product’  thereby debunking its assertion that the word “Chemiron” conjures red capsules. He argued that  there are several drugs bearing “Chemiron” . Some of them in capsules and some tonic. This  according to the learned counsel, goes to the point it made that it has goodwill. Counsel  submitted that the Plaintiff has no goodwill. He drew the attention of this Court to exhibits ‘KKI’ to the affidavit of 11/12/96 deposed to on behalf of the 5th & 6th  Defendants/Respondents. Exhibit ‘KKI’ is a leaflet produced by the Plaintiff/Applicant where the colour of its capsule is described as Crimson/Crimson Hard Gelatin. He referred to  paragraphs 19 of their affidavit dated 11/12/96 and paragraph 13 of their counter affidavit of  23/12/96 where it was deposed that the 5th and 6th Defendants capsules are in Scarlet/Scarlet colour. He submitted that none of the parties in this suit has capsules with red colour.

Learned counsel referred to paragraphs 11 and 13 and exhibit ‘003′ of the affidavit  sworn to on behalf of the 5th and 6th Defendants on 10/01/97 wherein the colour  combination of Falbitone is explained by an expert. He said that the packages of the drugs  under consideration are not similar and cannot confuse anyone. Counsel contended that drugs  of this nature are sold in packages. He asked the Court to take judicial notice that doctors prescribed drugs.

As regards the production of this nature, he said that parties to this suit import the hard  gelatin capsules which is the containers or packages that carry the active ingredients. That  there are various sizes of this product which are made according to the capacity of the drug to  be packed in them. He wants the Court to take judicial notice that most if not all blood forming tablets come in the colour red or colour close to or similar to red.

On the balance of convenience, counsel submitted that it will be more convenient and also serve the cause of justice to refuse the application of the Plaintiff. He referred to the  counter affidavit in opposition to the Plaintiff’s application; wherein the deponent stated the  number of staff working with the 5th and 6th Defendants/Respondents. He said that the Court  should consider their fate. He submitted that the balance of convenience tilts towards the  Defendants and therefore, the order sought by the Plaintiff must be refused. He cited the  following cases:- Kotoye v. C.B.N. (1989) 1 NWLR (Pt. 98) 419; Ojukwu v. Governor of Lagos State (1986) 3 NWLR (Pt. 26) 39 and Onyesoh v. Nnebedum (1992) 3 NWLR (Pt. 229)  315. Learned counsel referred to the 2nd affidavit in support of the Plaintiff’s application  deposed to by Dr. Ajayi. He said that they offend paragraphs 85, 86 and 87 of the Evidence  Act. He also said that the exhibit attached to the affidavit bears no signature, and as such, it  should be discountenanced. Counsel distinguished the case of Hoffman. He said that the drug  in issue in that case was a patented product.

In conclusion, learned counsel referred to the case of Williams v. Broulley (1905) 26  R.P.C. 765; Treabor (Nig.) Ltd. v. Associated Industries Ltd. (1972) NNLR 60 at 62; and  Niger Chemist v. Nigeria Chemist (1965) 1 ALL NLR 171.

He urged the Court to dismiss the Plaintiff’s motion because it is frivolous.

In his reply, learned counsel for the Plaintiff/Applicant submitted on the following points:

Judicial Notice: On the submission of the 5th & 6th Defendants/Respondents’ counsel  that the Court should take judicial notice of the fact that the drugs in question are not sold in  sachets, but in packets. Counsel said that the criteria for taking Judicial Notice has not been  satisfied:-

1. Where the fact is notoriously known that no reasonable person can  argue otherwise. Such as – 25th of December is a Christmas day.

2. Where there are no primary contradictory evidence to that which this  Court is asked to take judicial notice. He said that paragraph 19 of  Jacob Edo’s affidavit shows that there is primary evidence.

As regards the question of non-exhibition of a licence from NAFDAC and the statement of account of the Plaintiff/Applicant, counsel said that neither of them that is, the 1st to 4th Defendants/Respondents on the one part and the 5th & 6th Defendants/Respondents on the other part specifically traversed those allegations in their affidavits. And that if any of them  have done so, they, the Plaintiff/Applicant would have joined issues on those points, and  would be required to exhibit the documents. In support of this he cited the case of Ladunni v.  Kukoyi ALL NLR (1973) (Pt. 1) 133; Kofi v. Kogbe ALL NLR (1961) 122. He further  submitted that even if the Plaintiff/Applicant had exhibited its licence, NAFDAC does not issue licence to manufacture drugs. It is only a regulatory body whose duty is to ensure that standards are maintained. He referred to Food & Drugs Act Laws of the Federation of Nigeria 1990. He also cited the case of Lijadu v. Lijadu (1991) 1 NWLR (Pt. 109) 627, and American  Cyanamid Co. v. Ethicon Limited (1975) AC 396.

Counsel submitted that Section 149(d) of the Evidence Act is not applicable to an  application for interlocutory injunction. He said that it is only when issues are joined in the  course of trial and a party fails to tender a document that this section becomes relevant.

In distinguishing the case of F. Hoffman-La Roche & Company A.G. and Anor. v. D.D.S.A. Pharmaceuticals Limited (supra) and the case under consideration, counsel said that  the learned counsel for the 4th & 5th Defendants/Respondents misconceived the issues  between passing off and Trade Marks. He contended that the Defendants/Respondents are using the Plaintiff/Applicant’s colour which is a question of passing off. Relying on Hoffman’s  case, counsel submitted that notwithstanding the fact that Chemiron apply to a group of drug does not detract from the fact that the Plaintiff/Applicant can protect a particular drug within the  group.

On the issue that the Plaintiff/Applicant did not obtain the consent of the Defendants/  Respondents before it instituted this suit in a representative capacity, counsel said that the only  requirement to be complied with is that leave of this Court should be obtained.

He finally submitted that once the Court finds that there is likelihood of deceit by the  mere look of the product in question, the Court can grant an interlocutory injunction if the balance of convenience is in the Applicant’s favour. He urged the Court to grant the injunction.

In his final reply, learned counsel for the 4th & 5th Defendants/Respondents said that  the essence of comparison was to show that products that belong to the same class with similar formulations do come in the same colour, but they will come in different packages. He said that the Plaintiff/Applicant’s capsule comes in Crimson/Crimson colour while those of the  5th & 6th Defendants/Respondents come in Scarlet/Scarlet colours. He said that the issue of red is out of the question.

The main issue to be decided in this ruling is, whether this Honourable Court should grant an order of Interlocutory Injunction sought by the Plaintiff/Applicant; that is, restraining the Defendants/Respondents from passing off their Red Capsule as that of the Plaintiff/Applicant.

The first question that comes to my mind is, what is passing off? Passing off is defined in Kerly’s Law of Trade Marks and Trade Names by T. A. Blanco White at page 362 as, I quote:-

“An actionable wrong for the Defendant to represent for trading purposes, that  his goods are those or that his business is that of the Plaintiff, and it makes no  difference whether the representation is effected by direct statements, or by  using some of the badges by which the goods of the Plaintiff are known to be  his or any badges colourable resembling these, in connection with goods of the  same kind, not being the goods of the Plaintiff, in such a manner as to be  calculated to cause the goods to be taken by ordinary purchases for the goods of the Plaintiff”.

The grant of an injunction is an equitable relief. It is granted at the discretion of the Court. Before it is granted however, there are certain factors which the Court should take into  consideration and these factors should be strictly observed. In the case of Gwabo Gever & 2  Ors. v. James Toyota China (1993) 9 NWLR (Pt. 315) Katsina-Alu J.C.A. stated at page 108  of the report thus:

“The principles upon which the Court acts in granting interlocutory injunction  pending the determination of the substantive suit must be strictly observed. The  decided cases show of course that it is impossible to lay down any general rule  regulating the discretion of the Court in all cases, but it must be borne in mind  that interlocutory injunction are not granted for the asking”.

The main factors to be taken into consideration by the Court, while considering  applications for interlocutory injunction as laid down by the Appellate Courts are as follows:-

(1) That he has a legal right which he wants the Court to protect.

(2) The Applicant must show that there is a serious issue to be tried.

(3) That the balance of convenience is on the side of the Applicant that is, that more justice will result in granting the application than in refusing it.

(4) The Applicant must also show that damages cannot be an adequate  compensation for his damage or injury from the violation of his right, if  he succeeds in the action.

(5) He must give an undertaking as to damages.

Before I apply the aforestated factors to the application under consideration, I will quickly consider two issues raised by the learned counsel for the Defendants/Respondents.

Firstly, counsel for the 1st to 4th Defendants/Respondents submitted that the persons  being sued in this case do not represent a single class because various interests of persons  selling red capsules cannot be the same. He said that this action should have been directed to  those selling one brand of drug. He further submitted that a person suing in a representative capacity must have been authorised to do so. I must say that I see no basis for the first leg of  his submission. This is because, I do not know how possible it is for one to find a group of  persons who is selling the same brand of drug. To my mind, Drug Sellers or Chemists as they  are referred to sell various types of drugs ranging from tablets to capsules and of course, drugs  in liquid form. He also said that a person suing in a representative capacity must have been  authorised to do so. Although it was held in the case of Atanda & Anor. v. Akunyun & Ors.  (1988) 4 NWLR (Pt. 89) 394 that the authority to represent a group in representative capacity  is usually given by that group, and that the Court merely approves the authority given. I am of  the view that the type of authority envisaged in Atanda’s case (supra) is not to my mind  possible in the type of application under consideration, wherein the Plaintiff is suing 6  Defendants “(on their behalf and on behalf of and as representing all other persons who are  manufacturers or engaged in the trade or business or offering for sale any capsule which has  the colour red or is confusing similar product purported to be Chemiron’s Capsules)”. To my  mind, this class of persons may not even know themselves. As a matter of fact, the 5th & 6th  Defendants/Respondents were joined as co-Defendants by the order of this Honourable Court  on the application of their Counsel. Once the Plaintiff had obtained the leave of this  Honourable Court in suing the Defendants in representative capacity, I hold that they are  properly sued by the Plaintiff. Learned counsel for the 5th and 6th Defendants/ Respondents said that the motion on notice of 25/11/96 which is the subject of this ruling disclosed no  relief. This, according to the counsel, is because the Plaintiffs product is not indicated in the  motion paper. If I may revisit the relief sought by the Plaintiff again, it is seeking for “an order  of interlocutory injunction restraining the Defendants etc. from passing off their red drug  capsules as those of the Plaintiff ….”. Since the Plaintiff has only one red capsule, this in my  view, is sufficient to identify the Plaintiff’s product. Moreso, when the Plaintiff’s contention is  that the Defendants are passing off their capsules as that of the Plaintiff’s red capsules. And  there is nothing before this Court to show that the Plaintiff manufactures more than one type of  capsule.

In considering the relevant factors which should guide the Court in granting or refusing  interlocutory injunction, the affidavit evidence before the Court must be considered as a whole.  Also the Court must at this stage confine itself to the order being sought by the Applicant so as  not to consider the substantive issue which is meant for trial. In the case of Chief Odumegwu Ojukwu & Anor. v. Military Governor of Lagos State & Ors. (1986) 3 NWLR (Pt. 26) 39  Nnaemeka-Agu J.C.A. (as he then was) stated at page 45 of the report as follows:-

“It cannot over emphasize the need for trial judge in interlocutory rulings  desisting from making any findings which may prejudice the substantive case”.

The first factor to consider in the instant application is –

1. Has the Plaintiff/Applicant a legal right to protect in this case?  Furthermore, is there any serious issue to be tried at the hearing of the substantive action?

In the case of Anosike Building & Commercial Co. Ltd. v. Federal Capital Development  Authority (1994) 8 NWLR (Pt. 363) 421 Mohammed J.C.A. stated at Page 433 of the report  as follows:-

“It is fundamental rule of law that a Court will only grant an injunction to support  a legal right. Montgomery v. Montgomery (1965) Probate 46. The Court cannot exercise this equitable jurisdiction where there is no legal right cognisable by the Courts. Injunction will therefore be granted only to protect the violation of a legal right. The Courts have always inclined towards keeping the  remedy of interlocutory injunction flexible. In deciding whether to exercise the discretion in favour of the Applicant, the Court ought to consider the case as a  whole, having regard to the case of the parties”.

In deciding whether or not the Plaintiff/Applicant has a legal right to protect and that  there is a serious issue to be tried at the hearing of the case particularly in a passing off  action, he must show:-

1. That it has established a reputation and goodwill in the subject matter of its action, and in the instant case the Plaintiff/Applicant’s red capsule.

2. That the product of the Defendant as manufactured is likely to cause confusion in the minds of the public.

Whether or not the above has been established can be ascertained in the affidavit  evidence before the Court.

At Paragraphs 3 to 5 of the affidavit in support of this application which was deposed  to by one Adenrele Jacob Ebo, the following facts emerged; That as a result of series of  research which took place between 1986 and 1993, by the Plaintiff/Applicant, a combination of  iron, multivitamins and minerals “that would be most effective in enhancing vitality, red blood  cells formulation, anti-oxidation and anti-stress factors” was discovered. As a result of this  research, a sum of over 1.6 Billion was expended in building pharmaceutical laboratories,  employing pharmaceutical experts both locally and abroad, carrying out series of laboratory tests, employing support staff in Nigeria and carrying out extensive clinical trials in 11 Teaching  Hospitals in Nigeria”.

By paragraphs 6 and 8 of the afore-mentioned affidavit, the Plaintiff/Applicant deposed  that the research was successful in 1986; It hereby “pioneered both locally and internationally a  red capsule now known as Chemiron Capsule. A pioneer certificate with registration No. 0014  granting the Plaintiff a tax relief for 5 years is exhibited to the affidavit of one Ola Ukiwe as exhibit ‘OUI’. And to assist the public in easily identifying this drug, it adopted red for its  capsules. In paragraphs 9, 10 & 11 of the same affidavit, it was deposed on behalf of the  Plaintiff/Applicant that the Plaintiff’s red capsule being a new colour “in relation to capsules”  with which the public was unfamiliar, spent over 500 Million in advertisements in order to get  people to know and familiarise themselves with the new capsules and its colouration. And to  further assist the public in distinguishing its products the Plaintiff sells and retails its red  capsules in blister forms. For over ten years, the public have come to identify the Plaintiff’s capsules -’Chemiron’ with the colour red and the blister forms in which it is dispensed.

Paragraphs 11, 12, 13, 14, 15, 19, 20, 27 and 28 of the affidavit is better set out  hereunder:-

“11. The Plaintiff’s capsules have been marketed, advertised with this novel  colour for over 10 years and as such, the public have come to identify  the Plaintiff’s capsules “Chemiron” with the colour red and the blister  forms in which it is dispensed. These red capsules have been very  successful and by 1995 the profit of sale were running at 40,000,000  (Forty Million Naira) gross and rising.

12. Recently the Plaintiff noticed a downward trend in its pharmaceutical  products to such an extend that its employees were threatened with  retrenchment, delayed salary and unemployment.

13. As a result, the Plaintiff conducted an investigation into the said  downward trend and discovered various other imitation forms of its red  capsules. Now shown to me and marked “Exhibit DE-1″ is a sample of  the Plaintiff’s product.

14. These capsules are identical in colour to that of the Plaintiff and are  sold in blister forms as that of the Plaintiff for example 10 red capsules  per blister. Now shown to me and marked “Exhibit DE-2″ is a sample  of the Defendants products.

15. Further investigation revealed that the infringing products are  manufactured in India with major distributors in Nigeria who assist in  dispensing and selling the said product.

19. The Defendants not only pass off their infringing capsules as that of the  Plaintiff, but do so at ridiculously low prices – For example

(a) Cost of genuine Chemiron capsules per blister – 60.00

(b) Cost of infringing red passed off as Chemiron is between 20 and  25.

20. That this singular act by the Defendant has caused the Plaintiff  substantial losses forcing it to retrench a number of its staff and to close  major parts of its warehouses.

27. That the Defendants adoption of a coloration and packaging similar to  that of the Plaintiff is calculated to mislead the general public into  believing that the capsules are one and the same and or at any rate,  having a common origin.

28. That the use of a colour similar or identical to that of the Plaintiff is  aimed at taking advantage of the Plaintiff’s –

(a) extensive and expensive research

(b) well established goodwill and reputation

(c) calculated to deceive the general public”. Based on the above, the learned counsel for the Plaintiff/Applicant submitted that it has  a legal right to protect because it has established a reputation and goodwill in the red capsule  manufactured by the Plaintiff/Applicant As earlier stated in this ruling, the learned counsel for the 1st to 4th Defendants relied  on two affidavits filed on the 11/12/96 and 6/1/97 respectively. I will for ease of reference  reproduce the most relevant paragraphs below. Firstly, paragraphs 4(iii), (iv), (v), (vi), (xiii);  5, 6, 9 & 10 of the affidavit filed on 11/12/96.

“(4) (iii) That the Defendants/Respondents have not in anyway  whatsoever and howsoever passed off the Plaintiff/Applicant’s  product – Chemiron or any other products or at all.

(iv) That the colour ‘Red’ is a generic term and cannot be a Trade Mark, Trade Name or subject of a Patent because any capsule for blood vessel or as blood tonic is by trade practice and/or  usage RED in colour.

(v) That the Defendants products which have been produced and  marketed in Nigeria have been well-known for more than fifteen (15) years and are registered under Trade Marks Act 1965 Laws of the Federation of Nigeria 1990.

(vi) That the 1st Defendant has registered more than thirty (30)  pharmaceutical products such as Ranferon-12 Blood Tonic among others copies of the certificates of registrations of some  of the Trade Names/Marks are attached hereto and marked  Exhibits ‘B1′ to ‘B2′.

(xiii) That contrary to the averments contained in the said affidavit in  support and of urgency of the Motion Ex-parte particularly with  regard to all the exhibits attached thereto, the Plaintiff’s and the  Defendant’s products – “Chemiron” and “Ranferon”, “Maxiron”, “Falbitone Plus” and “Hemferon XP” are marketed and sold in  blisters packed inside packets showing both the “Trade Names”  and the names of the “Products”.

(5) That the Plaintiff do not manufacture but only import crimson crimson,  empty gelatin capsules.

(6) That the said crimson crimson empty gelatin capsules are imported by the Plaintiff whereas the 1st to 4th Defendants import finished products  in scarlet colour which is in internationally recognised sizes of “O’, “1”  and “2″ among others.

(9) That Chemiron blisters colour is crimson crimson, the capsules are  transparent, the name Chemiron is clearly written on each capsule and  the blister carries “Chemiron’s name in front and back of each blister  vide attached photocopy marked “C”.

(10) That the 1st to 4th Defendants’ products colour is Scarlet Scarlet.

For the purpose of the issue under consideration that is, whether the Plaintiff/Applicant  has a legal right to protect, I will also reproduce paragraph 6 of the 2nd affidavit relied upon by  the counsel for the 1st to 4th Defendants which was deposed to by one Haresh Nand  Kotwaney on 6/1/97:-

“6. That the 4th Defendant has been manufacturing and marketing in  Nigeria for several years Ranferon 12 Liquid and Capsules and has  registered the product under Trade Marks Act vide attached hereto and  marked Exhibits ‘A’ Renewal of Certificate of Registration”.

I am still on the issue of whether or not the Plaintiff/Applicant has a legal right in this  action. The learned counsel for the 5th and 6th Defendants adopted the submissions of the counsel for the 1st to 4th Defendants. Thus, I need not reproduce the averments in their (the 5th & 6th Defendants’) counter affidavit which contain the issues raised in the affidavits of the 1st to 4th Defendants affidavit already set out above.

I will reproduce only paragraphs 3, 4, 7, 9, 10, 15, 16, 20, 21, 22 and 26. They are as follows:-

“3. That the 5th Defendant was formerly known as Biogen Nigeria Limited  and the sole importers of Falbitone/Falbitor Plus Capsules and the  Registered Trade Mark Owners of Falbitone/Falbitone Plus. Attached  and marked Exhibit “AB1″ is a copy of the Certificate of Incorporation  indicating change of fifth Defendant’s name from Biogen Nigeria Limited  to Jawa International Limited.

4. That the sixth Defendant are jointly distributors and marketers of Falbitone/ Falbitone Plus Capsules with the fifth Defendant in Nigeria.

7. That the fifth and sixth Defendants’ products Falbitone/Falbitone Plus were registered with the Trade Marks Section of the Ministry of Trade  and Commerce in 1992. Attached and marked Exhibit AB2/AB3 are  copies of the acceptance letter in respect of the said registration of  Trade Marks.

9. That the fifth and sixth Defendants have two different brands of  Falbitone Capsules; Falbitone containing Ferros Fumesale (iron) which  was formulated and introduced into Nigeria Market in 1991 in compliance  with the then prevailing essential drug list of the Federal Ministry of  Health, and Falbitone Plus introduced into the Nigeria market in 1993 as a result of the suspension of restrictions on combinations of iron,  vitamins and mineral by the regulatory bodies. Attached and marked  Exhibit “AB5″ are products of the two brands of the fifth and sixth  Defendants products under reference.

10. That after fulfilling necessary conditions, the fifth Defendant’s product  Falbitone Capsules was duly registered and a certificate of registration  issued to the fifth Defendant in respect thereof. Attached and marked  Exhibit “AB6″ is a copy of the said certificate of registration which will  expire on the 1st day of November, 1999.

15. That it is to my knowledge that both our product Falbitone and the  Plaintiff’s product Chemiron are displayed in Chemists shops and other  places where drugs are sold in the country in packets and equally sold  in packets and not in capsules.

16. That most prescriptions of drugs are made by Doctors who normally  names the drugs being prescribed.

20. That most blood forming capsules worldwide come in red colours or  colour close to red in order to convey a mental picture of blood which is  red in colour.

21. The packaging of capsules in blister form is the most acclaimed world-wide acceptable standard of delivering capsules in the pharmaceutical industry.

22. The Plaintiff claiming exclusive use of its alleged red capsule is totally  wrong and misleading. Hard gelatin capsules is only a container or  packaging that carries the active ingredients like iron, vitamins and  minerals. All drugs manufacturers in Nigeria (both Plaintiff as well as  Defendants) do the same. The Plaintiff imports the empty gelatin  capsule and fills it with his own formulae of ingredients; whereas the  Defendants’ imports the capsule in a filled form with their respective  formular of ingredients.

26. The above 4 of the Plaintiff’s products with different specification and  contents come in general brand name Chemiron”. Before I proceed further on this question of legal right, I want to make an observation.  The learned counsel for the 1st to 4th Defendants/Respondents submitted at length, on what  the Plaintiff should prove in a passing off action. My reaction to this aspect of the learned  counsel’s submissions is that most of them may be relevant at the trial of this case, and not at the stage of hearing this type of application, that is, application for interlocutory injunction.

“The Court when considering an application for interlocutory injunction should not try to resolve conflicts of evidence on affidavit as to facts on which the claims of either party may ultimately depend or decide difficult questions of law  which call for detailed argument and consideration. A judge in determining such  application must be careful and ensure that he does not in the determination of  the application, determine the same issues that would arise for determination in  the substantive suit” – Per Ogwuegbu JSC in Sunday Arissi Oduntan v.  General Oil Ltd. (1995) 4 NWLR (Pt. 387) 1 at Page 13 .

See also Williams v. Dawodu (1988) 4 NWLR (Pt. 87) 189 and Akapo v. Hakeem Habeeb &  Others (1992) 6 NWLR (Pt. 247) 266.

From the affidavit evidence before this Court, the exhibits annexed to them and the  submissions of the learned counsel on both sides, below are the main issues that emerged.

1. That colour red which the Plaintiff/Applicant used for its empty hard  gelatin capsules is generic and no person can lay claim on this colour.

2. That the colour of the Plaintiff’s capsule is crimson crimson while those  of the Defendant is scarlet scarlet.

3. That the capsules are dispensed on doctors prescription.

4. That there are distinctions between the packets in which the sachets of  capsules are packed ready for sale and that the capsules are not sold in  sachets but in packets.

5. That most blood forming capsules come in red colours.

6. That the hard empty gelatin capsules are imported by the Plaintiff who  manufactures its product here in Nigeria, while the Defendants import finished products from India and appoint distributors and dealers in  Nigeria.

7. That the Defendants, in keeping with the law of Nigeria registered their  products with Trade Mark and NAFDAC which the Plaintiff has not done or shown to the court to have been done.

On the issue of the colour – red it was vehemently argued by the Defendants’ counsel, that the colour is generic and as such, no person can make any claim on it. Furthermore, that  the Plaintiff is not the inventor of the red colour.

There have been decided cases on passing off which were based on colour. The case  of F. Hoffman La Roche & Company & Anor. v. D.D.S.A. Pharmaceuticals Limited (supra) appears to be the locus classicus on passing off based on colour. Ironically, it involved drugs,  and to be precise capsules as in the application under consideration. In F. Hoffman La  Roche’s case the Plaintiff’s capsule came in black and green. So also was the Defendant’s  capsules. It came in black and green. The similarities between the application under  consideration and the case of F. Hoffman La Roche are as follows:- The subject matter of both cases are drugs in the form of capsules. Both are based on colour. In each case, both  capsules contain the same pharmaceutical ingredients. The only difference between the two  cases is that in Hoffman La Roche case, the drug was patented drug. But I quickly add here  that it was not the colour black and green that was patented – but the drug. It was held that  the marketing of capsules by the Defendants in almost identical form to those of the Plaintiffs  was calculated to cause damage to the Plaintiff’s business.

In Hoffman La Roche case, the Plaintiff’s black and green capsule bore the word  “Roche” on each capsule while that of the Defendants, also in black and green colour bore the  letter “D.D.S.A.” instead of Roche.

Harman LJ stated at page 20 of the report as regards the colour of the two capsules  as follows:-

“Members of the public when receiving a particular tablet or capsule for treatment of a particular ailment whether it be given from a hospital dispensary  or dispensed upon a doctor’s prescription from a retail pharmacy come to expect the particular capsule or tablet to be in the form in which they first  receive it and consequently come to identify it by the size, colour and shape to which they become accustomed. They are not concerned with the identity of  the manufacturer but are most concerned that the pill or capsule should be the  right medicine, i.e of the same formulation and should have the same effect as  those received previously”.

From the above quotation of Harman L.J. it appears to me that a colour may be  generic, nevertheless a person can still acquire a reputation in a particular colour.

The Defendants counsel submitted that the capsules in question are prescribed by  doctors. They are not sold over the counter. And the packets in which they are packed i.e. their containers are different in colour and in sizes. I must state here, that from my little experience, that when drugs are prescribed by doctors, the pharmacist who dispenses them  does not usually leave drugs in the packets or containers in which they come from the  manufacturers. In some cases, they even remove the leaflets in which the dosages and other information about the drugs are written. For this reason, I do not accept the submission of  the Defendants’ counsel that the capsule in question is different because they are packed in different packets. “In Hoffman’s case (Supra) Harman L.J. further stated at Page 20 as regards the containers in which the drugs are packed.

“It is admitted for the purposes of this motion anyhow that the trade, that is to say the dispensing chemists, and the doctors are not deceived. They know perfectly well the Plaintiffs’ distinctive substance LIBRIUM; the doctor prescribed  it, the chemist dispenses it; to him it comes in a container which bears no resemblance to the Defendants’ container. Here I have the Plaintiff’s container for LIBRIUM, with the 10 mg. capsules; and here the Defendant’s container. It is in the little capsule inside the container where the similarity comes. But that is all that the customer ever sees; he does not see these things which the dispensing chemist has, he merely sees a little bottle labelled “The Tablets; 3  times daily as directed by the physician”.

The above stated practice which is adopted in other countries like Great Britain where  Hoffman’s case was decided is to my mind the same here in Nigeria. The Defendants’  counsel submitted that their drugs are not sold over the counter but on prescription. This  shows that it is only the sachets of these drugs that are dispensed to the patients who take  their prescriptions to the chemists.

It was also argued on behalf of the Defendants/Respondents that “Chemiron” is written  on the Plaintiff/Applicant’s drug. While each of the Defendants’/ Respondents’ drugs also  contain its name. And as such there can be no confusion of these drugs. The case of White  Hudson & Co. Ltd. v. Asia Organisation Limited (1965) RPC Vol. 82. 45 is relevant to this  point. In Hudson’s case, the Plaintiffs’ sweet was sold in orange cellophane wrappers on  which was printed the words “Hacks”. The Defendant also started to use orange cellophane  wrappers similar to the Plaintiff’s but printed the word “Pecto” on them. In a passing off action  instituted against the Defendant by the Plaintiff, it was held that the Defendants sweets  resembled the Plaintiffs to such an extent as to lead to confusion. Also, that the difference in  the names printed on the wrappers was not sufficient to distinguish the goods in the eyes of a  purchasing public largely unable to read English, and that passing off had therefore been established. Lord Guest stated at page 50 of the report thus:-

“It may well be that to an English speaking customer the word “Pecto” on the  Respondent’s sweet would be sufficient to distinguish their sweets from those of  the Plaintiffs. But according to the trial judge the majority of purchasers of  these sweets are unable to read English and accordingly “Pecto” is not sufficient  to distinguish the Defendants’ goods”.

In the instant case, the name of each capsule is written on the sachets, but the shape  and colour of the capsules are the same. The name to my mind does not make any difference  in the eyes of ordinary purchasing public who cannot read the names written thereon. I held  this view, because, conservatively, about 60% of our population cannot read any other  language apart from their local languages.

It was further submitted on behalf of the Defendants/Respondents that the colour of their capsules is scarlet scarlet while that of the Plaintiff/Applicant crimson crimson. To  buttress their submissions, a letter from an expert from Great Britain stating the differences in  colour combination of the Plaintiff’s drug – “Chemiron” and the 5th and 6th Defendants drugs – Falbitone Plus capsules was exhibited to Mrs. Farinus affidavit of 10/1/97 as exhibit “DD3″. I  have gone through the analysis. And I am of the view that it is only an expert who can know  what it means. I mean the scientific terminologies therein. In those days, we were taught in  the school that there are –

1. Neutral colours i.e. Black and White.

2. Primary colours i.e. Red, Yellow and Blue.

3. Secondary colours i.e. Orange, Purple and Green and

4. Tertiary colours which are obtained from the mixture of primary and  secondary colours.

Thus, when an expert is called upon to come and tell a lay man on the street that a  shade of red is scarlet scarlet or crimson crimson, that in my view will be going too far. I have  seen the capsules in question i.e. the sachets. Not the packets which contain the sachets.  And I have no doubt in my mind that red is the name of the colour that can be given to the  capsules and I so hold.

Some of the Defendants exhibited the registration certificate of their drugs by the  Federal Ministry of Trade pursuant to the Trade Marks Act Cap. 436 Laws of the Federation of Nigeria 1990, while some of them exhibited certificates from NAFDAC and from the Federal  Ministry of Health. It was submitted on behalf of the Defendants/Respondents that before the Plaintiff/Applicant can show that it has a legal right, it must prove that it has complied with the  laws of the land by producing its certificates before the Court. I am to state here that the  Defendants should not mix the point in issue in this action. That is, an action based on  passing off with that of infringement of Trade Marks. This distinction was dealt with by the  Supreme Court in the case of Patkun Industries Ltd. v. Niger Shoes Manufacturing Co. Ltd. (1988) 5 NWLR (Pt. 93) 138 where Kariby-Whyte JSC stated that the true intendment and purpose of Section 3 of the Trade Marks Act are that:

a. no person shall sue for infringement of an unregistered Trade Mark,

b. any person can sue for passing off of an unregistered Trade Mark,

c. any person can sue for infringement and passing off of a registered  Trade Mark,

Thus, whether or not the Plaintiff/Applicant registered its product under this Act, it can still bring an action in passing off.

Furthermore, registration with regulatory authorities such as NAFDAC and the Federal  Military of Health, to my mind is not a condition precedent to the institution of passing off action. Therefore, the matter before this Honourable Court is whether, the Defendants/Respondents are passing off their red capsules as that of the Plaintiff/Applicant.

Both learned counsel for the 1st to 6th Defendants/Respondents attached the affidavit  deposed to by one Dr. G.O. Ajayi of Department of Obstetrics and Gyneacology, College of  Medicine University of Lagos. Learned counsel for the 1st to 4th Defendants/Respondents  contended that paragraphs 4, 6, 7, 8, 9, 11, 12, 19 and 25 contain extraneous matter and  should be struck out. While counsel to the 5th and 6th Defendants said that the entire affidavit  should be struck out because it is contrary to the provisions of Sections 85, 86 and 87 of the Evidence Act.

I have gone through the entire affidavit. I found that in some of the paragraphs of the  affidavit in question, Dr. G. O. Ajayi deposed to facts within his personal knowledge as a  Specialist Doctor in Gyneacology, who undertook research on behalf of the Plaintiff/Applicant  sometime in 1991. That being so, those paragraphs which relate to this research are not to my  mind extraneous matters. These are paragraphs I to II.

Again, in paragraphs 12, 13, 14, 15, 19, 20, 21, & 22, Dr. Ajayi deposed to the facts  within his knowledge as a Specialist Doctor in Gyneacology. For this reason, I hold that these paragraphs do not offend Sections 85, 86 and 87 of Evidence Act.

But I found that paragraphs 16, 17(1), (2), and (3), 18, 23, 24, 25 and 26 are  matters which are not within the knowledge of Dr. Ajayi, and as such they are hereby struck  out. In brief, the following is the summary of Dr. Ajayi’s deposition:-

That the Plaintiff has pioneered its Red Capsules in the Market as far back as 1987.  And as a result of the view held by the National Formulary Review Committee of the Federal Ministry of Health, that irons should not be combined with vitamins but must be administered separately and in order for the Plaintiff/Applicant’s capsule to be included in the essential  drugs list of the committee, the Plaintiff/Applicant decided to carry out certain clinical trials on  Chemiron Capsules. The Plaintiff/Applicant mandated Dr. Ajayi and Dr. Fadiran of the School  of Pharmacy, College of Medicine of the University of Lagos (now of the Foods and Drugs Administration – National Institute of Health – Baltimore, Maryland USA) to carry out scientifically controlled clinical trials to attain the following:-

“1. Debunk the motion behind singular administered irons as opposed to  combined (irons folic acid, vitamins traces element) formulates.

2. Consider and educate the review board and the public on the effect of  different iron therapy “hematological indices and placental formulation  mostly in pregnant women”.

Paragraphs 8, 9 and 10 of the affidavit contain the details of the clinical trials  conducted by Dr. Ajayi, while paragraphs 11, 19, 20, 21 and 22 contain his personal experience as a doctor, wherein he deposed inter alia that during the course of his trial, he observed that most patients usually recognise the tablets or capsules they purchased or have  being prescribed by the colour of the capsules. That patients are usually more likely to accept the capsules if it is of the same shape size and colour as the former one to which they are accustomed.

I cannot but also refer to the affidavit of one Iheoma Joan Farinu – a Superintendent  Pharmacist in the employment of the 6th Defendant.

In her affidavit, she deposed that it is usually for drug manufacturers to conduct clinical trials. That Ranferon blood capsules had been in the Nigerian Market long before 1987 when  the Plaintiff allegedly introduced its capsules; that drugs are described, identified and dispensed  by their names and not by their colours, that manufacturers of pharmaceutical products are entitled to any colour of their choice as no particular company has exclusive use to any  particular colour, but must give a distinctive name for its product and package same in a  distinctive manner.

The averment in the affidavit in support and the affidavit of Dr. Ajayi that the Plaintiff/  Applicant pioneered the red capsules was not contradicted by the Defendants/Respondents. This is evidenced by the pioneer certificate – Exhibit OU2 issued by the Hon. Federal Minister of Industries.

There is also evidence that the Plaintiff/Applicant expended a huge sum of money on  advertisement in order to familiarise the public with its colour. See paragraph 9 of the affidavit  in support.  There is no evidence before this Court that the Defendants/Respondents spend any sum of money to advertise their products to the general public. It may rebuttably be that the Defendants/Respondents took the advantage of the goodwill already created by the  Plaintiff/Applicant on its red capsule to market their own capsules as contended by the learned counsel for the Plaintiff/Applicant. The true position will irrebuttably be established by evidence  at the trial of the substantive case.

From the affidavits in support of the Plaintiff’s application, the exhibits attached thereto  and the submissions of its counsel and the authorities he cited, I have no doubt in my mind  that it has been established that the Plaintiff/Applicant has a legal right to protect and that there is serious issue to be tried.

Having scaled through the first huddle, I should now consider whether the balance of  convenience is on the side of the Plaintiff/Applicant. The first question to ask is, what is themeaning of balance of convenience? This is defined by Ubaezeonu JCA in the case of Vee Gee (Nig.) Ltd. v. Contact (Overseas) Ltd. (1992) 9 NWLR (Pt. 266) at Page 506 of the  report thus:

“Balance of convenience with regard to interlocutory injunction means whether  the Defendants will suffer greater inconvenience, hardship or injustice if the  injunction is granted and he ultimately turns out to be right or that if the Plaintiff  will suffer greater inconvenience, hardship or injustice if the injunction is  refused and he turns out to be right” – See Kotoye v. C.B.N. (1989) 1 NWLR  (Pt. 98) 419; Obeya Memorial Specialist Hospital v. Attorney-General of the  Federation (1987) 3 NWLR (Pt. 60) 320 and Misini v. Balogun (1968) 1 ALL  N.L.R. 318.

In weighing the balance of convenience between the Plaintiff/Applicant and the  Defendants/Respondents in this case therefore, recourse must be had to the affidavit evidence  before me, while bearing in mind that the burden of proof is on the Plaintiff/Applicant. In  Ndibe Ilechukwu v. Odili Iwugo (1989) 2 NWLR (Pt. 101) 99 Uwaifo JCA stated at page 108  of the report thus:

“The burden of proof that the inconvenience which the Plaintiff will suffer by the  refusal of the injunction is greater than that which the Defendant will suffer, if it  is granted lies on the Plaintiff”.

It is not always easy for a court to decide which side the balance of convenience lies.  As observed by Omo JSC in the case of Orji v. Zaria Industries Ltd. (1992) 1 NWLR (Pt. 216)  124 at 148 –

“The question whether or not the balance of convenience is in favour of the  Applicant or Respondent is sometimes a difficult one to determine. It cannot be  ascertained with mathematical exactitude”.

But in considering the balance of convenience, his Lordship continued:

“The Plaintiff’s need for protection against injury by violation of his right must be weighed against the corresponding need of the Defendants to be protected  against injury resulting from having been prevented from exercising his own legal rights”.

Bearing in mind the aforestated guidelines, I will now quickly peruse through the  affidavit evidence before me to see where the scale of convenience tilts.

The Plaintiff/Applicant, in its main affidavit in support averred at paragraphs 4, 5 and 6 that it embarked an a series of research “to discover the best combination of iron, multivitamins and minerals that would be effective in enhancing vitality Red Blood Cells formation, anti-exudation and anti-stress factors”. Towards this, it expended over 1.6 Billion in the following:

(a) building pharmaceutical laboratories,

(b) employing pharmaceutical experts both locally and abroad,

(c) carrying out a series of laboratory tests,

(d) employing support staff in Nigeria,

(e) carrying out extensive clinical trials in 11 Teaching Hospitals in Nigeria.

In paragraphs 6 & 7, the Plaintiff/Applicant also averred that it pioneered the  manufacturing of the drug in question and adopted red colour for its capsules. Through  extensive advertisements which gulped over 500 Million, the public familarised itself with its red  capsules in blister forms. That in 1995, the profits from sale were running at 40 Million. All  these show that the Plaintiff/Applicant has established reputation and goodwill in its red  capsule. However, profits went down in 1996 as a result of the Defendants’ capsules which  came out in the same red and in blister form as that of the Plaintiff. See paragraphs 7 to 13  of the affidavit in support. It is further averred on behalf of the Plaintiff/Applicant that it  employs over 600 Nigerians in the manufacture of its red capsules, but the Defendants  manufacture their drugs in India and have distributors in Nigeria who assist in dispensing and  selling their capsules. The aforestated averment is confirmed by paragraph 30 of the counter affidavit of the 5th and 6th Defendants and paragraph 6 of the affidavit of the 1st to 4th  Defendants which was deposed to on 11/1/97. In paragraph 12 of the supporting affidavit, it  was averred that because of the downward trend in the sales of the Plaintiff/Applicant’s drug,  its employees were threatened with “retrenchment, delayed salary and unemployment”.

I will now consider the inconveniences which the 1st to 4th Defendants/Respondents  are likely to suffer if the Plaintiff/Applicant’s application for interlocutory injunction is granted by  this Honourable Court. It was averred on behalf of the 1st to 4th Defendants in the affidavit  deposed to by one Haresh Nand Kotwaney on 11/12/96 that the Plaintiff/Applicant imports  hard empty gelatin, that is, the container that carries the active ingredients, while the 1st to 4th  Defendants/Respondents import finished products from India to Nigeria. It was further averred  in the same affidavit that their business will be in serious jeopardy. (See paragraph 4(xv) and  paragraphs 5 & 6 of the affidavit).

Learned counsel also submitted that the drugs which are already in Nigeria which are  time conscious will expire.

The inconveniences which the 5th and 6th Defendants/Respondents will suffer if an order of interlocutory injunction is granted to the Plaintiff/Applicant are as contained in  paragraphs 27, 29, 30 and 31 of the counter affidavit of 23/12/96. They are as follows:- Their large consignments of the drug in question which were imported at great costs with attendant obligation to some banks will be rendered unwholesome in a couple of months. If  they are not sold, their business will suffer severe set back and the welfare of their workers put  in great jeopardy.

I will now consider the inconveniences which the Plaintiff/Applicant is likely to suffer in  the event of refusal to order an interlocutory injunction being sought in the application under  consideration. In the first place, I will want to restate again as averred in the affidavits of the Defendants/Respondents that: the Plaintiff/Applicant’s capsule is manufactured in Nigeria as against those of the 1st to 6th Defendants who import finished capsules into Nigeria. The  evidence before this Honourable Court including the affidavits of the 1st to 6th Defendants/Respondents is that the only item imported by the Plaintiff/Applicant is the hard empty gelatin  containers in which the active ingredients of their drugs are packed. As a matter of fact, learned counsel for the Plaintiff/Applicant submitted that the bulky aspect of the materials  required for the production of the capsule are obtained in Nigeria. I know that after manufacturing the capsules they are not shut up in the factory. It is common knowledge that  the Plaintiff/Applicant will also have their agents and distributors for the sale of the drug in  question. The point I am trying to make here is that part of the inconveniences which the  Defendants claimed that they will face is that their agents and distributors will lose their jobs.  But it is not only the agents and distributors of the Plaintiff/Applicant that will lose their jobs,  but its numerous factory works – administrative, technical and professionals Nigerian Staff. It is  averred in para. 5 of the affidavit in support that over 1.6 Billion was expended in building  Pharmaceutical Laboratories, employing Pharmaceutical experts both locally and abroad,  carrying out a series of laboratory tests, employing support staff in Nigeria and carrying out  extensive clinical trials in 11 Teaching Hospitals in Nigeria.

Para. 9 states that over 500 Million Naira was expended on advertisement in getting  members of the public to familiarise themselves with the capsules in question. In para. 1, it  was averred that since there has been a downward trend in its pharmaceutical product, its  employees were threatened with retrenchment, delayed salary and unemployment.

Moreover, the cost of the Plaintiff’s capsule is 60 per blister while those imported by  the 1st to 6th Defendants sell at between 20 to 25 per blister. This is not controverted by the Defendants/Respondents.

Even as of now, as averred at paragraph 20 of the affidavit in support the purported  act of passing off of the Defendants/Respondents “has caused the Plaintiff/Applicant substantial losses forcing it to retrench a number of his staff and to close some major parts of  its warehouses”. Because of the foregoing, the extent of the loss and inconveniences which  the Plaintiff/Applicant is likely to sustain if an injunction is not granted, will, to my mind, be  greater than those of the Defendants. From the evidence before this Honourable Court, the  loss and inconveniences which the Plaintiff/Applicant is likely to suffer will not be limited to its  agents and distributors alone. It will start from the beginning of productions to its final stage.  It may also spread to their machineries, their raw materials and of course their manpower. All  these will be put into jeopardy while the Defendants will still carry on their production from their  bases in India as averred in their respective affidavits.

Therefore, weighing the inconvenience to be suffered by either party if the injunction  sought by the Plaintiff/Applicant is not granted, the scale tilts much more to the side of the  Defendants/Respondents. But if it is granted, the facts as contained in the affidavit evidence before me show clearly that the balance of convenience will be on the side of the Plaintiff/ Applicant’s side. For this reason therefore, I hold that the balance of convenience is on the  side of the Plaintiff/Applicant.

The next factor to consider is whether damages will be adequate compensation for the Plaintiff/Applicant.  It has been held that interlocutory injunction will be ordered where a  Plaintiff is able to show that he will suffer irreparable damage or injury, that cannot be compensated in damages if the Defendants’ acts are not restrained. Thus, if damages will be  adequate compensation to the Plaintiff for the injury he may suffer before the determination of  the substantive issue or issues, interlocutory injunction should not be granted.

In the case of Akapo v. Hakeem Habeeb (1992) 6 NWLR (Pt. 247) 266 Nnaemeka-Agu J.S.C. stated at page 302 of the report as follows:-

“Indeed the first principle of the law of interlocutory injunction is that a person  does not prima facie obtain such an order to restrain actionable wrongs for  which damages are proper remedy: See London and Blackwall Rly v. Cross  (1886) 31 Ch. D. 354 at P. 369. But it has always been the law that an  action which demands more adequate relief than money can be restrained by an  order of injunction see Lamley v. Wagner (1852) 21 LJ Ch. 898″

His Lordship continued –

“So, once an application for interlocutory injunction shows that there is a serious  issue to be tried relating to the violation of his right, and that the damages he  may suffer before the final determination of the suit will be such that it cannot  adequately be compensated for in damages, the Court as a guardian of the rule  of law will, if all other relevant considerations can be resolved in favour of the  Applicant, grant him the relief of interlocutory injunction”.

In the instant application, can damages be adequate compensation for the Plaintiff/  Applicant?

Before damages can be said to be adequate compensation for the Plaintiff/ Applicant,  the extent of such damages should be such that could be quantified. From the evidence  before this Court, and as already stated while considering the issue of balance of convenience,  the extent of damages which the Plaintiff/Applicant would incur if the order of injunction sought  for is not granted seems to me to be enormous that damages cannot be adequate  compensation for the Plaintiff/Applicant. Take for instance, the Defendants/Respondents ought to know the quantity of drugs (particularly their capsules which is the subject matter of this  action) which they have imported into this country within a specified period.

Secondly, their distributors and agents are not likely to be dealing with the capsules under dispute alone. As a matter of fact each of them i.e. the Defendants/Respondents have  registered more than one type of drug here in Nigeria which means that the hardship to be  encountered by their agents and distributors will not be too much compared with the Plaintiff/Applicant’s.

Coming to the Plaintiff/Applicant, the type of damages it has suffered and will continue  to suffer is stated at paragraphs 20 of its affidavit in support where it is averred that the  singular act of the Defendants has caused the Plaintiff substantial losses forcing it to retrench a  number of its staff and close major parts of its major warehouses. From the affidavits of the  Plaintiff/Applicant and those of the 1st to 6th Defendants/Respondents, it seems to me that  the Plaintiff/Applicant is at a disadvantage position as against the Defendants/Respondents as  far as the question of quantum of damages is concerned. This is because, (as stated earlier in  this ruling) the Plaintiff/Applicant manufactures its capsules here in Nigeria. The bulky part of  its job is carried out in Nigeria, but the hard empty gelatin in which the active ingredients of its  product is filled is imported. Thus, the inevitable damages which will continue to occur from its  machineries to its workers and even from the sales of the production of its red capsules cannot to my mind, be quantified. On the other hand, the Defendants/Respondents have their  factories and their workers in India. Thus, from the commencement of the production of their  red capsules to their packaging in hard gelatin are carried out in India. In fact, they deposed in their respective affidavits that they import finished products into Nigeria.

From the foregoing therefore, I have no doubt in my mind, that damages will not be  adequate compensation for the Plaintiff/Applicant. And I so hold.

The last issue to consider is the provision of an undertaking in damages.

“The general accepted principle of law is that except in recognised cases as  stated in paragraph 1072 (pgs 596 – 597) and paragraph 1074 of Halsburys  Laws of England, 4th Edition, in an application (whether exparte or on notice)  for an interim or interlocutory injunction, a beneficiary to such an order must  provide an undertaking in damages. He is usually required to give an undertaking to pay all damages caused to the opposing party if the order so  granted ought not to have been made”. Per Wali, JSC in Afro Continential  (Nig) Ltd. v. Joseph Ayantuyi & Ors. (1995) 9 NWLR (Pt. 420) 411 at 428.  This undertaking in damages , as stated by Nnaemeka-Agu JSC in the case of  Kotoye v. C.B.N. (1989) 1 NWLR (Pt. 98) at Page 451 is “the price which  every Applicant for an interlocutory injunction has to pay”.

In the affidavit in support of the instant application, learned counsel for the 5th and 6th  Defendants/Respondents said that it is not enough for the Plaintiff/Applicant to aver in its  affidavit in support that the Plaintiff/Applicant is giving an undertaking in damages; and that he  ought to have filed a separate undertaking in damages. In view of the decision of the Supreme  Court in the case of Onyesoh v. Joseph Nnebedum (1992) 3 NWLR (Pt. 229) 315, the  deposition in the affidavit in support of the Plaintiff’s application that it is giving undertaking in  damages seems to be proper. In Nnebedum’s case, it was held that where an Applicant for an  order of interlocutory injunction has voluntarily deposed in the affidavit in support of the  application that he undertakes to pay damages, the necessity for the Court to extract an  undertaking in damages would not arise. In the light of this decision, and my personal  conviction, an undertaking in damages already made under oath is adequate and more effective  than by any other means. I therefore hold that the undertaking in damages under paragraph  36 of the affidavit in support remains binding, effective and adequate.

Since I have held that the Plaintiff/Applicant has a legal right to protect and that there  is a serious issue to be tried, that the balance of convenience is on its side and that damages  will not be adequate compensation for the Plaintiff/Applicant, I will make the following order.

I hereby grant an order of interlocutory injunction restraining the 1st, 2nd, 3rd, 4th, 5th  and 6th Defendants in this suit, and each of those on whose behalf the Defendants are sued,  whether acting by themselves, their servants, agents, privies or otherwise from passing off  their Red Drug Capsule as those for the Plaintiff/Applicant pending the determination of the trial of this suit.

This matter will be given an accelerated hearing. But since the parties have not joined  issues by exchange of pleadings, I will suggest that this be done within 21 days from now (that  is, if it is possible) so that the whole matter could be concluded as soon as possible.

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