American Cyanamid Company v. Vitality Pharmaceuticals Ltd.

Law Cases and Principles

American Cyanamid Company v. Vitality Pharmaceuticals Ltd.

Court: Supreme Court of Nigeria
Judgment Delivered: February 8, 1991
Citation: 34 NIPJD [SC. 1991] 12/1989
Suit No.: SC.12/1989
Jurisdiction: Nigeria

Coram:

  • Mohammed Bello, J.S.C.
  • A.G. Karibi-Whyte, J.S.C.
  • S. Kawu, J.S.C.
  • S.M.A. Belgore, J.S.C.
  • O. Olatawura, J.S.C. (Delivered the Lead Judgment)

Appearances

  • For the Appellant: G.N. Uwechue (with U.E. Egbe)
  • For the Respondent: Unrepresented

Case Summary

Key Issue:
Does continuous prior use of an unregistered trademark entitle a defendant to protection from infringement claims under the Trade Marks Act?

The case revolved around two antibiotic drug trademarks: “GONOCIN” (registered in 1973 by the appellant) and “GONORCIN” (used since 1968 by the respondent). The appellant sued for infringement, while the respondent relied on prior continuous use.

I. Facts

On June 19, 1973, the American Cyanamid Company registered “GONOCIN” as a trademark for antibiotic capsules. Vitality Pharmaceuticals claimed to have marketed a similar product under the name “GONORCIN” since 1968, and registered that name with the Pharmacy Board in 1978. The respondent argued that it had built goodwill in the Nigerian market long before the appellant’s registration and relied on Section 7 of the Trade Marks Act to defend its continued use.

The trial court dismissed the infringement claim, a decision affirmed by the Court of Appeal. The appellant then appealed to the Supreme Court.

II. Full Case Facts

  • The Appellant sought:
    1. An injunction restraining the Respondent from infringing GONOCIN.
    2. Destruction of infringing goods.
    3. ₦500,000 damages or account of profits.
    4. Costs and further relief.
  • The Respondent counterclaimed, asking the court to delete the registration of GONOCIN.
  • Plaintiff’s Claims:
  • GONOCIN was lawfully registered and widely sold.
  • GONORCIN was confusingly similar and likely to mislead the public.
  • Defendant’s Defence:
  • Had sold GONORCIN since 1968, long before the plaintiff’s registration.
  • Products were distinct, and use of the name was in good faith.
  • Relied on receipts, invoices, and letters to support claims of long-standing use.
  • Argued that GONORCIN was descriptive of the antibiotic type and had market recognition.
  • Requested deletion of the appellant’s mark under Section 7 of the Trade Marks Act.
  • Trial Court: Found that the defendant had been continuously using GONORCIN since 1968. Applied Section 7 of the Trade Marks Act and dismissed the infringement claim.
  • Court of Appeal: Affirmed the lower court’s decision, recognizing Vitality Pharmaceuticals Ltd. as a successor to Vitality Medicine Stores and entitled to protection.
  • Supreme Court:
  • Found no conflict between the lower courts’ findings.
  • Emphasized that Section 7 protects continuous users of an unregistered mark that predates the registered one.
  • Held that “continuous use” does not mean daily use, but uninterrupted goodwill or activity.
  • Found no basis to interfere with concurrent findings of fact.

III. Final Judgment

  • Appeal Dismissed
  • Registration of “GONOCIN” remains, but defendant is protected under Section 7 due to prior continuous use.
  • Defendant’s continued use of “GONORCIN” upheld

IV. Legal Principles Affirmed

  • Section 7 of the Trade Marks Act, 1965 protects prior users of an unregistered mark from later claims of infringement.
  • Prior continuous use must be proven with credible, documented evidence.
  • Where a company is a clear successor in title (even if later incorporated), it may inherit the goodwill and trademark rights of its predecessor.
  • “Continuous use” in trademark law does not require daily use but consistent presence in the market.

V. Cases Cited

  1. Gbadamosi Tokunboh & Anor. v. J.T. Chanrai & Co. Ltd. (1976) 2 F.R.C.R. 55
  2. Vincent I. Bello v. Magnus A. Eweka (1981) 1 S.C. 101
  3. Adejumo v. Ayantegbe (1989) 3 NWLR (Pt. 110) 417
  4. Niger Construction Ltd. v. Okugbeni (1987) 4 NWLR (Pt. 67) 787
  5. Nwadike v. Ibekwe (1987) 4 NWLR (Pt. 67) 718
  6. Ayanwale v. Atanda (1988) 1 NWLR (Pt. 68) 22
  7. Magaji v. Cadbury Nigeria Ltd. (1985) 2 NWLR (Pt. 7) 393
  8. Onwuka v. Ediala (1989) 1 NWLR (Pt. 96) 182
  9. Emegokwue v. Okadigbo (1973) 4 S.C. 113
  10. Nwabuoku v. Ottih (1961) 2 SCNLR 232
  11. Lagos City Council v. Ajayi (1970) 1 All NLR 291
  12. Sunmonu v. Gbadamosi Ashorota (1975) 1 NMLR 16
  13. Smith, Bartlett & Co. v. British Pure Oil, Grease & Carbide Co. Ltd. (1933) 51 R.P.C. 157