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Continental Pharmaceutical Ltd. (CPL) Industries Ltd v. Sterling Products Nig. Plc and SmithKline Beecham

Federal High Court

Citation: 38 NIPJD [FHC. 1995] 460/1995

Suit No. FHC/L/CS/460/95        Jurisdiction: Nigeria

 Judgement delivered by Justice James Tsoho

Appearances: Ekpe Asuquo for the Plaintiff

SUMMARY OF CASE AND JUDGEMENT

In a legal battle that lasted for 16 years, the plaintiff (Continental Pharmaceutical Ltd., a Nigerian Company), manufacturers of a registered trademark comprising the eclipse logo with blue and white package design with the words “Conphamol” brought an action against the defendants for allegedly infringing on the salient features in the packaging of Conphamol, substituting only the words “Panadol” and “Panadol Extra” in the same style and font.

The plaintiff provided evidence to show that on November 10, 1981, it had registered Conphamol (RTM 40551) in Nigeria following prior search for conflicting marks at the Trademarks Registry and that on June 14, 1982, the mark was advertised for publication in Nigeria.  The plaintiff also contended that on March 20, 1992, the registration was renewed for a period of 14 years with effect from November 10, 1988 and that since then, it had exclusively, extensively and continuously used its registered trademark in relation to its pharmaceutical preparation, Conphamol, for the treatment of rheumatic pains, toothache, period pains, cold and influenza, chest and throat infections, mild immunisation and vaccination reaction in Nigeria and abroad, particularly the ECOWAS sub-region, without objection by the defendants or any individual or corporate body.

The 1st defendant filed a counterclaim alleging that it was licensed by the 2nd defendant, SmithKline Beecham, owners of the world known eclipse device with the words “Panadol” inscribed on it.  The 1st defendant also contended that the 2nd defendant had been marketing Panadol, prior to 1981 when the plaintiff registered Conphamol in Nigeria.

In their counterclaim, the defendants sought:

1. An injunction restraining the plaintiffs from using the eclipse device, with the Conphamol inscribed therein;

2. A rectification of the trademarks register on the grounds that a previous unregistered eclipse device with the words Panadol inscribed therein has been used for several years before the plaintiff’s registration.

In defence of the plaintiff’s claim, the defendants contended that they had registered the trademark “Panadol” in Nigeria as No. 8785 in Class 3.  However the mark was only registered as a word mark without a logo.

On Monday June 27, 2011, Justice James Tsoho of the Federal High Court sitting in Lagos, awarded N500 million against the defendants as damages for passing-off (part of a N1.2bn award) and for infringing on the plaintiff’s registered trademark Conphamol and device in Class 5.

“The defendants illegally adopted the plaintiff’s trademark to deceive the buying public in an attempt to pass out their Panadol as the plaintiff’s product,’’….Justice James Tsoho

The judge also awarded N700 million as special damages for infringing on the copyright in the artistic work of the trademark and barred the defendants from importing, manufacturing, selling or supplying any analgesic preparation containing the active ingredient “Paracetamol” bearing the name Panadol or Panadol Extra in a container or any packaging with the logo closely resembling the plaintiff’s registered trademark for Conphamol.

Judgement

On June 27, 2011, after examination of both oral and documentary evidence, Justice Tsoho of the Federal High Court concluded that:

a) Although a Panadol analgesic was manufactured in England and distributed in Nigeria prior to the registration of CPL’s trademark, the said analgesic did not carry the “eclipse” design on its packaging.  It only contained the word “Panadol” on the package of the analgesic.

b) CPL registered and renewed its trademark (which incorporated the “eclipse” design) in Nigeria without opposition by the defendants. The Judge did not find any evidence establishing that the defendants opposed CPL’s application for trademark registration or  that the defendants responded to CPL’s cautionary notices that were published in local and foreign newspapers.  The Judge therefore concluded that CPL had a valid and exclusive legal right in its registered trademark including the associated design.

c) The 2nd defendant only applied to register its trademark “Panadol” with the “eclipse” design several years after the registration by CPL.

d) Due to the high rate of illiteracy in Nigeria, the “eclipse” design on the analgesic products will certainly stand out to illiterate costumers. Therefore, by adapting the “eclipse” design on the defendants’ “Panadol” and “Panadol Extra” analgesic, there is a potential for causing confusion.

e) By virtue of CPL’s registration, the action of the defendants amounted to an infringement of the plaintiff’s registered trademark and the defendant’s were also liable for passing off.

While delivering the verdict, which lasted for two hours, the Judge awarded N500 million against the defendants as damages for passing-off and for infringing on the plaintiff’s registered trademark for Conphamol and Device in Class 5, he awarded N700 million as special damages for infringing on the copyright in the artistic work of the trademark.

The Judge also barred the defendants from importing, manufacturing, selling or supplying any analgesic preparation containing the active ingredient known as “Paracetamol” bearing the name Panadol or Panadol Extra in a container or any packaging with the logo closely resembling the plaintiff’s registered trademark for Conphamol.  The Judge ordered the defendants to swear to an affidavit that they would remove all goods in their custody, control and possession bearing the marks complained about by the plaintiff and which would be a breach of the orders of the court.

The Judge however refused to award the plaintiff’s relief seeking a N1,000 per package cost on the proceeds of the infringed trademark prescribed under section 20(1) of the Copyright Act, Cap C28 of the Law of the Federation of Nigeria 2004, saying that it related to criminal matters liable upon conviction and not applicable to civil proceeding such as the suit.

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