⦿ CASE SUMMARY OF:
American Cyanamid Company v. Vitality Pharmaceuticals Ltd. (1991) – SC
by PipAr
⦿ LITE HOLDING
It is well accepted that the purpose of pleading is to reveal to the opposing party the nature of the case, at the earliest opportunity, he is likely to be confronted with. Having been so forewarned it is his responsibility to join issues with those aspects of the pleadings he disputes and considers the other side ought to establish. Where he declines to do so, and therefore has not joined issues, the facts so pleaded will be deemed to have been admitted.
The proprietor or registered user of a trade mark, is not entitled to interfere with an existing trade mark, even if identical with or nearly resembling his own if it has been in continuous use before the use of or registration of his own trade mark.
⦿AREA OF LAW
– Intellectual property
⦿ TAG(S)
– Trademark.
– Continuous use.
⦿ PARTIES
APPELLANT
American Cyanamid Company
v.
RESPONDENT
Vitality Pharmaceuticals Ltd.
⦿ CITATION
(1991) JELR 42035 (SC)
⦿ COURT
Court of Appeal
⦿ LEAD JUDGEMENT DELIVERED BY:
O. Olatawura, J.S.C.
⦿ APPEARANCES
* FOR THE APPELLANT
* FOR THE RESPONDENT
AAA
⦿ FACT (as relating to the issues)
The competing claims of the parties in this appeal relate to the registration of a trade mark about one antibiotic registered by the appellant under the trade mark of GONOCIN as against the respondent which had its own registered as GONORCIN.
Prima facie quite apart from the claim of infringement of the trade mark one is likely to be misled that it is also a passing off action. But their claim and counter-claim leave no one in doubt that priority of registration and continuous use claimed by the respondent played a dominant role in their claims.
Learned Counsel addressed the court and after a review of the evidence and submissions of learned Counsel, Ayinde, J. dismissed the claims on 21st May, 1985. The plaintiff was dissatisfied with the judgment and appealed to the Court of Appeal which in turn confirmed the judgment of Ayinde, J. on 17th July, 1988.
Still dissatisfied with the decision of the lower Court, Plaintiff has here appealed.
⦿ ISSUE(S)
1. Whether or not there was priority of use?
⦿ RESOLUTION OF ISSUE(S)
[APPEAL: DISMISSED]
1. ISSUE 1 WAS RESOLVED AGAINST THE APPELLANT BUT IN FAVOUR OF THE RESPONDENT.
RULING:
i. In the Court of Appeal, Mohammed, J.C.A. in his lead judgment with which Ademola and Kutigi, JJ.C.A. concurred said: “From the state of the pleadings and evidence the respondents have established before the learned trial Judge that before registration of “GONOCIN” by the appellants the predecessors in title of the respondents i.e. Vitality Medicine Stores had been dealing and marketing the antibiotic drug under the name of GONORCIN.” These are concurrent findings of fact which the appellate court will not interfere with unless they are perverse.
ii. Furthermore a close scrutiny of evidence of D.W.1, D.W.2 and D.W.3 shows positively that issue and marketing of GONORCIN had been in the open market before the Medicine Stores was incorporated in 1980, Exhibit supports this conclusion, I will agree with the lower courts the protection provided by section 7 of the Trade Marks Act, 1965 covers the respondent’s case.
⦿ ENDING NOTE BY LEAD JUSTICE – Per
⦿ REFERENCED
⦿ SOME PROVISION(S)
Section 7 of the Trade Marks Act, 1965 provides: “7. Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date previous to – (a) The use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor-in-title of his; or (b) The registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor-in-title of his, whichever first occurred, or (where such use is proved) to object to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under section 13(2) of this Act.”
⦿ RELEVANT CASE(S)
AAAA
⦿ CASE(S) RELATED
⦿ NOTABLE DICTA
* PROCEDURAL
The purpose of pleading is to give the other side at the earliest opportunity, the case the other side is to meet. There was no element of surprise in the respondent’s pleading. – Olatawura, JSC. Cyanamid v. Vitality (1991)
* SUBSTANTIVE
It is a fundamental or primary duty of the court to ascertain the natural meaning of the words used in a statute. The court must not speculate. – Olatawura, JSC. Cyanamid v. Vitality (1991)
In this case, appellant did not challenge the incorporation of the Company itself. Attention was focused rather on the date of incorporation. This it would seem was meant to negate the defence of continuous user pleaded by respondents. I think learned Counsel to the appellant was misled by the view he had taken of the relationship between the user of the name under Registration of Business Name, and after incorporation of the Business Name as Limited Liability Company. Learned Counsel ignored the vital and dominant consideration in section 7 of the Trade Marks Act, 1965, which is the continuous user of the registered Trade Mark. – Karibi-Whyte, JSC. Cyanamid v. Vitality (1991)
