Facts:

The respondent was incorporated in 1979 under the name of Continental Pharmaceutical Ltd but had its name changed to CPL Industries Ltd in 1993. The company is the manufacturer of pharmaceuticals, toiletries, cosmetics and plastics. Among the pharmaceutical products of the company is ‘Conphamol’, an analgesic that contains paracetamol, which was registered by the Trade Marks Registry under its Trade Mark and Device RTM 40551 in 1981 and renewed in 1992.

The respondent used this trade mark to market its Conphamol tablets an analgesic preparation for headaches, pains, rheumatic pains, feverish conditions etc. It also designed the packaging of the Conphamol tablets with salient features of its registered trade mark RIM 40551 having white font with vertical thin edges and brand horizontal edges with an eclipse shape superimposed on a blue package with the name “Conphamol” in the middle with the words “96 TABLETSII in front top of the package and the words “for relief of pain” at the bottom of the package. At the back of the package is the dosage information with the heading that says “Contains paracetamol”.

The respondent also claimed that the packaging logo/design features of its Conphamol tablets are distinctive and the product has been in the market since 1980 in Nigeria and throughout West African sub-region with a sale average of N70million per annum.

However, sometimes in 1995, the respondent discovered a pharmaceutical product labeled “Paracetamol” in the Nigerian market produced by the appellant with identical packaging as that of its Conphamol. The respondent’s solicitors wrote a ‘Cease and Desist’ letter to the Appellant and to some other offending pharmaceutical companies. While some of the companies replied the respondent promising to desist from further infringement, the appellant continued with its infringement.

Aggrieved, the respondent instituted an action against the appellant for infringement which has led to consumers confusing its product for that of the respondent thereby leading to a drop in its sales.

In its defence, the appellant stated that it was incorporated as a pharmaceutical company and has registered trademarks “MSJ” and “MORISON” in Class 5 of the Trade Mark Register as RTM 30507 and 30511 for classes of goods including pharmaceutical, veterinary and others within Class 5. It asserted that its use of “PARACETAMOL” on its product did not infringe on the respondent’s “Conphamol” because “PARACETAMOL” is a generic name for drug substance used for relief of pains and so can be used by any company that is registered to manufacture and sell the product. It contended that the name “PARACETAMOL” cannot confuse customers who go to pharmacies to buy the respondent’s “Conphamol” because its packaging contains the eclipse shape of the trade mark “MSJ” and its orange colour with surrounding of white and black which colours are for identification and distinction in Nigeria; West Africa and the United Kingdom. That, the three colours of orange, white and black are peculiar to its trademarks. Therefore the name of “PARACETAMOL” is not a pass-off of the respondent’s “Conphamol”.

At the conclusion of trial, the learned trial Judge found and held that the appellant infringed the respondent’s trademark and awarded N10million as general damages against the appellant for infringement of the respondent’s trademark and passing off its “PARACETAMOL” as that of the respondent.

Dissatisfied, the appellant appealed to the Court of Appeal.