RHONE-POULENCE S.A. AND ANOTHER v. GHANA NATIONAL TRADING CORPORATION [1972] 2 GLR 109
HIGH COURT, ACCRA
Date: 26 MAY 1972
Before: ABBAN J.
CASES REFERRED TO
(1) Renard v. Levinstein (No. 2) (1865) 11 L.T. 766.
(2) Emslie v. Boursier (1869) L.R. 9 Eq. 217; 39 L.J.Ch. 328; 18 W.R. 665.
(3) Von Heydon v. Neustadt (1880) 14 Ch.D. 230; 50 L.J.Ch. 126; 42 L.T. 300; 28 W.R. 496, C.A. (4) Badische Anilin und Soda Fabrik v. Hickson [1906] A.C. 419; 75 L.J.Ch. 621; 95 L.T. 68; 22
T.L.R. 641, H.L.
(5) Saccharin Corporation Ltd. v. Anglo-Continental Chemical Works [1901] 1 Ch. 414; 70 L.J.Ch.
194; 48 W.R. 444; 44 S.J. 392; 17 R.P.C. 307.
(6) Wright v. Hitchcoch (1870) L.R. 5 Exch. 37; 39 L.J. Exch. 97.
(7) Weatherby & Sons v. International Horse Agency and Exchange Ltd. [1910] 2 Ch. 297; 79 L.J.Ch.
609; 102 L.T. 856; 26 T.L.R. 527.
(8) King v. Brown, Durant & Co. [1913] 2 Ch. 416; 82 L.J.Ch. 548; 109 L.T. 69; 29 T.L.R. 691; 57
S.J. 754.
NATURE OF PROCEEDINGS
APPLICATION by the plaintiffs for an order of interim injunction to restrain the defendant from
infringing their patent rights and offering for sale the drug “metronidazole,” the product and invention of the plaintiffs.
COUNSEL
J. B. Quashie-Idun (Mrs. Ansah with him) for the plaintiffs.
J. A. Ayitey for the defendant.
JUDGMENT OF ABBAN J.
In this application, the plaintiffs are asking for an order of interim injunction restraining the defendant from infringing the plaintiffs’ patent rights in respect of the Ghana Patent No. 522, and from offering for sale a drug, called metronidazole, the product involved in the said infringement.
[p.113] of [1972] 2 GLR 109 The two plaintiffs are limited liability companies. The first plaintiff is the owner of the United Kingdom Patent No. 836854. This patent was sealed in the United Kingdom Patent Office, on 28 September 1960, and it covered an invention entitled the “New imidazole derivations and processes for their preparation.”
The said patent was later registered in Ghana, under the Patents Registration Ordinance, Cap. 179 (1951 Rev.), as Patent No. 522, and dated 18 October 1962. Patents covering the said invention have also been sealed by the first plaintiff in other countries, namely, West Germany, United States of America, Soviet Union, Japan, Holland, Canada, Denmark and Sweden.
The second plaintiff is a manufacturer and it is registered in this country as an external company. It deals mostly in pharmaceutical and medical preparations. According to the plaintiffs, the second plaintiff is “a wholly owned subsidiary of the first plaintiff.” The plaintiffs further aver that since the grant of the United Kingdom Letters Patent on 28 September 1960, the second plaintiff has been the sole and exclusive licensee of the first plaintiff in respect of that patent and of all the other patents sealed in other countries including the Ghana Patent No. 522. So that the rights of the patentee (the first plaintiff) deriving from the said invention are exclusively vested in the second plaintiff. From the photocopy of the patent specification, attached to the affidavits of the plaintiffs, it is clear that one of the imidazole derivatives covered by the patent has the generic name of “metronidazole.” This “metronidazole” is manufactured and sold by the second plaintiff in this country and in other parts of the world under the trade name Flagyl. This drug, according to the plaintiffs, “has been an outstanding success since its introduction on the market in 1960; and until the introduction in
1969 of a chemically related substance, called nitrimidazine, metronidazole was the only product effective for the oral treatment of vaginal trichomoniasis.”
Even after 1969, the drug has been, and still is, extremely useful in treating many infections.
The defendant’s case is that it received the product in question from corporation, carrying on trading
business in Ghana, has infringed and has threatened to continue to infringe the said Ghana Patent No. 522, by offering for sale, and for selling, metronidazole drug which was not produced by the second plaintiff. The plaintiffs have therefore instituted the present action for perpetual injunction and for damages. But until the substantive case is heard, they are, in this application, praying for an order of interlocutory injunction.
The defendant’s case is that it received the product in question from its manufacturer-supplier, called international Generics Ltd. of London, for sale in this country; and in the circumstances it cannot be held responsible for the production of the said drug. The defendant further averred, in paragraph 19 of its affidavit in opposition, that at the hearing [p.114] of [1972] 2 GLR 109
of this application it would seek leave of the court to join the said International Generics Ltd. who
“have agreed by telex to indemnify the defendant and who would be sending their managing director from London to be present during the hearing of the application, in order to show what document this company [International Generics Ltd.] holds to justify the sale of the drug.”
I should observe that the said managing director of the International Generics Ltd. was not present during the hearing of the motion. Also no document was tendered or shown to the court by the defendant to justify the manufacture and sale of metronidazole in this country by the International Generics Ltd. My view is that the International Generics Ltd. are not the patentees of the said metronidazole, neither are they licensees of the patentees.
It is perhaps worth pointing out that several preliminary objections were raised by learned counsel for the defendant. But the court decided to hear arguments on the merits as well, and to consider the application as a whole. The motion was therefore argued at great length.
Three bottles containing metronidazole tablets and purchased from the defendant’s shops in Accra,
Kumasi and Takoradi, respectively, were tendered by learned counsel for the plaintiffs without objection.
The defendant’s receipts issued in respect of those purchases were attached to one of the affidavits filed by the plaintiffs and were marked SAA3, SAA4 and SAA5, respectively. Learned counsel for the
plaintiffs submitted that these exhibits show that the defendant has infringed the said patent. Counsel contended that all that is necessary at this stage is to make out a prima facie case, namely, that the plaintiffs are the owners or the exclusive licensees of the Ghana Patent No. 522, and that there is some infringement of that patent. Counsel submitted that the evidence so far produced by the plaintiffs before the court, justifies the making of an order of interlocutory injunction against the defendant, and the court ought to grant the application.
As I indicated earlier on, certain objections were raised and ably argued by learned counsel for the
defendant. He contended that no prima facie case of infringement has been established, and even if it is held otherwise, there are many impediments which militate against the granting of the interlocutory injunction. The first objection put forward by learned counsel for the defendant is based on the State Proceedings Decree, 1972 (N.R.C.D. 59). Learned counsel argued that since the defendant is a statutory corporation, having been established under the Statutory Corporations Act, 1964 (Act 232), it comes within the ambit of section 1 of N.R.C.D. 59. Counsel said the International Generics Ltd. supplied the metronidazole tablets to the defendant for sale in Ghana under an agreement entered into between the defendant and the said International Generics Ltd., and that the International Generics Ltd., being a foreign company, the present case falls within section 1 (b)
[p.115] of [1972] 2 GLR 109 of N.R.C.D. 59. Thus the Attorney-General’s fiat was required before the defendant could be sued. But since the plaintiff did not obtain that fiat before issuing the present writ, the action itself is a nullity, and in consequence the application for the interlocutory injunction cannot be entertained. Learned counsel for the plaintiffs disagreed with this contention, and briefly submitted that the action herein has nothing to do with the alleged contract between the defendant and the said International Generics Ltd. and, as such, the fiat of the Attorney-General was not necessary in this case.
I think N.R.C.D. 59 is not applicable to the present action. This Decree came into operation on 19 April 1972 and section 1 thereof provides that: [His lordship here read the provisions as set out in the headnote and continued:] Careful reading of these provisions will show that the contracts being referred to in this Decree are those to which the intended plaintiff is or has been a party; and the legal proceedings in question must have arisen out of those contracts. An intended plaintiff who has not entered into any contract with any of the bodies or agencies mentioned in the Decree, and whose intended action will not be grounded on any such contract, does not require the Attorney-General’s fiat under this Decree before he can issue his writ of summons. In my opinion, the Decree is very restricted in its application, and it is not open to this court to give it a greater field of operation. The plaintiffs are not parties to the alleged contract entered into by the defendant and the said International Generics Ltd.; and the proceedings herein are based on a tort alleged to have been committed by the defendant, independent of any such contract. The plaintiffs did not therefore require the fiat of the Attorney- General, and the present action commenced without the said fiat is quite in order.
The second objection raised by learned counsel for the defendant is that if there was an infringement, that infringement was authorised by the government. He contended that the Ghana National Trading
Corporation Instrument, 1965 (L.I. 395), which laid down the objects of the defendant corporation,
permitted the importation and selling of goods including all types of drugs. Thus, submitted counsel, if in the course of carrying out the said objects, there has been an infringement by the defendant of the plaintiffs’ patent rights, that infringement ought to be taken to have been authorised by the government under the said L.I. 395.
The objects of the defendant are specified in paragraph 1 (a) to (d) of the said L.I. 395. I need not set them out in extenso. I will only say that there is nothing in these objects which bears out learned counsel’s submission. Nothing in those objects gives the defendant the power or the right to operate its business without regard to the laws and regulations governing trade. The objects, indeed, do not say anything about infringement of patent rights. If the argument of learned counsel is accepted, it will have far reaching consequences, because the logical conclusion will be that so far as the G.N.T.C. is concerned, it has a standing [p.116] of [1972] 2 GLR 109 authority of the government to breach any trade laws and regulations which may stand in its way.
I think L.I. 395 has not, either expressly or impliedly, authorised any such conduct. The defendant in
carrying out its objects, as defined in the said instrument, will have to respect the patent rights of others, and to conform to the laws of the land, as well as to the generally accepted trade practices as required of any trading firm or organization. Likewise, the provisions of section 4 of the State Proceedings Act, 1961 (Act 51), cannot avail the defendant. Because the defendant has not been able to produce any evidence, documentary or otherwise, showing that the Republic authorised the infringement in question. I therefore hold that the government did not at any time authorise the infringement of the Ghana Patent, No, 522.
It was further argued by learned counsel for the defendant that the present application itself is irregular, because the motion paper and its supporting affidavits were served on the defendant at the same time as the writ of summons. Counsel contended that under Order 50, r. 8 of the Supreme [High] Court (Civil Procedure) Rules, 1954 (L.N. 140A), the writ of summons should have been served on the defendant first; and the motion paper ought to have been served some time later and after the service of the said writ, and since this was not done, the application is irregular and should be dismissed.
With due respect to learned counsel, this contention is not tenable. Order 50, r. 8 provides that:
“An application for an order under Rules 4, 5 or 7 of this Order may be made to the Court or a Judge by any party. If the application be by the plaintiff for an order of mandamus or for an injunction or the appointment of a receiver, it may be made either ex parte or with notice, and if for an order under Rules 4, 5 or 7 of this Order it may be made after notice to the defendant at any time after the issue of the writ of summons, and if it be by any other party then on a notice to the plaintiff and at any time after appearance by the party making the application.”
(The emphasis is mine). Rule 4 mentioned in the above Order deals with applications for an order for the sale of perishable goods. Rule 5 concerns applications for detention and preservation or inspection of property; and rule 7 is about applications for interim injunctions, such as the one under consideration in this matter. In all these cases, the application can be made after the writ of summons has been issued. It is the issue of the writ and not its service which must precede the making of the application. So that if the writ of summons is filed and sealed, and a few hours or minutes are allowed to elapse before the motion is filed, the question of irregularity will not arise, even if all the documents, that is, the writ of summons and the motion for the interim injunction, are served on the defendant at the same time. In a situation like this, all that is necessary is that the court must make sure that there are, at least, [p.117] of [1972] 2 GLR 109 two clear days between the date of service and the date named in the motion paper for the hearing of the said motion.
In the present case, it is clear from the court’s record that the writ of summons was issued on 18 April 1972, and the motion for the interim injunction was filed two days later, that is, on 20 April 1972. Thus, the fact that service of these two documents was effected on the defendant by a court bailiff on the same day and at the same time cannot make the application invalid. The provisions of the said rule were strictly complied with by the plaintiffs, and the application is therefore regular and it is properly before the court.
The locus standi of both plaintiffs was also challenged. Learned counsel for the defendant contended that the Ghana Patent No. 522 was registered in the name of a company, called Societe des Usines Chimiques Rhone-Poulence which is quite different from the first plaintiff whose name is Rhone-Poulence s.a.
Learned counsel therefore submitted that the first plaintiff is not the patentee, and as such, cannot institute the present action. I think this objection is adequately answered by paragraph (3) of Mr. Anaman’s affidavit which says:
“prior to 29 December 1961, the first plaintiff was named Societe des Usines Chimiques Rhone-Poulence but it was changed to its present name with effect from 29 December 1961. This change of name was communicated to the Patent Office of United Kingdom which office acknowledged the change and made record thereof in its register.” This assertion of Mr. Anaman is borne out by the certificate issued by that office and attached to Mr. Anaman’s said affidavit and marked SAA1. The certificate states: “Patent Office, 25 Southampton Buildings, London.
I, the undersigned, being an officer duly authorised in accordance with section 62 (3) of the Patents and Designs Act, 1907 to sign and issue certificates on behalf of the Comptroller-General, hereby certify that a Patent numbered 836, 854 and dated the 6 May 1958, was sealed to Societe des Usines Chimiques Rhone-Poulence, a French Body Corporate, of 21 Rue Jean-Goujon, Paris, France, on the 28 September 1960, for an invention entitled ‘New imidazole derivatives and processes for their preparation.’ I also certify that under date, the 25 July 1962, notification of the change of name of the said Societe des Usines Chimiques Rhone Poulence to Rhone-Poulence S.A. was recorded in the Register of Patents; that under date, the 6 August 1971, notification of the change of address of the said Rhone-Poulence S.A. to 22 Avenue Montaigne, Paris, France was recorded in the Register of Patents; that no other document affecting the proprietorship of the said Patent [p.118] of [1972] 2 GLR 109 has been entered in the Register of Patents; that, subject to the payment of the prescribed renewal fees, the term for which the said Patent was granted will end at the expiration of sixteen years from the 6 May 1968; and that the said Patent is still in force.”
(The emphasis is mine). There is therefore more than sufficient evidence to show that the first plaintiff is the owner of the United Kingdom Patent No. 836854 which has also been registered in Ghana as Patent No. 522. Learned counsel for the plaintiffs stated from the Bar that the registrar of patents in Ghana was also informed of the change of name. I have no reason to doubt the veracity of this statement of learned counsel. In any case, since the person who owns United Kingdom Patent No. 836854 is the person who also owns Ghana Patent No. 522, and since it is proved that the first plaintiff owns the said United Kingdom Patent, it follows that no person other than the first plaintiff owns the Ghana Patent No. 522.
Consequently, even if it is assumed, for the purpose of argument, that the registrar of patents in Ghana has not been notified of the change of name, or that the change of name has not been effected in the Ghana Patent, there is still some evidence before this court to hold that the first plaintiff is the same as the person whose name appears on the Ghana Patent No. 522.
As regards the second plaintiff, learned counsel for the defendant submitted that it has no cause of action.
He contended that the second plaintiff is a bare licensee and, as a bare licensee, it ought to have asked the patentee of the invention, under the Patents Act, 1949 (12, 13 & 14 Geo. 6, c. 87), s. 35 (3), to bring this action; and if the said patentee failed to do so within two months, it is only then that the second plaintiff will have a cause of action, which will then entitle it to bring the present suit. It should be noted that the Patents Act, 1949, which is the foundation of counsel’s argument, is a United Kingdom Act. It is a consolidating Act which came into effect on 1 January 1950, and it consolidated the Patents and Design Acts 1907 to 1946. It will therefore be seen that that Act is not a statute of general application. Neither have its provisions been adopted by the law-makers of this country. In the circumstances, the said Act is not applicable in Ghana. In any case, the plaintiffs deny that the second plaintiff is a bare licensee. They contend that the second plaintiff is the exclusive licensee of the first plaintiff. Mr. Rowley, in paragraphs
(1) and (10) of his affidavit in support of the application, stated as follows:
“(1) I am pharmaceutical chemist and am West Africa Area Manager of May and Baker Ltd. the second named plaintiff herein. . . . (10) Since the grant of United Kingdom Letters Patent No. 836854 on 28 September 1960, my company has been the sole and exclusive licensee of the patentee under this patent and numerous corresponding patents including Ghana Letters Patent No. 522 and in consequence, exclusive rights in the invention deriving therefrom, have been vested, not in the
patentee, but in my company.” [p.119] of [1972] 2 GLR 109 Apart from being the exclusive licensee of the patentee, the second plaintiff further contends that it is “a wholly owned subsidiary of the first plaintiff.” I am of the opinion that there is evidence that the second plaintiff is not a bare licensee. It is an exclusive licensee of the first plaintiff, and as such, the second plaintiff has every right to take proceedings in respect of infringements committed after the grant of its licence and the patentee can also join the suit as a plaintiff. See Halsbury’s Laws of England (3rd ed.), Vol. 29, p. 93, para. 197, where the learned editor said:
“The right to sue for infringement of a patent belongs to the registered proprietor of the patent, to his
exclusive licensees, that is, persons on whom the patentee has conferred, to the exclusion of all other persons (including the patentee) any right in respect of the patented invention, and, in certain circumstances, to holders of compulsory licences and licences under patents endorsed ‘licences of right.’ When licensees sue alone, the patentee must be made a defendant, but is not liable for costs unless he enters an appearance and takes part in the proceedings. Where the patentee sues, it is usual to join exclusive licensees as plaintiff.”
(The emphasis is mine). In Renard v. Levinstein (No. 2) (1865) 11 L.T. 766, Wood V.C. at p. 767, held,
inter alia, that the court could give redress in respect of an infringement of patent at the suit of those who were the exclusive licensees. I therefore hold that the second plaintiff properly joined the first plaintiff in bringing this action.
The absence of an affidavit from the first plaintiff in support of the application was also made the subject of objection. Both Mr. Anaman and Mr. Rowley, who swore to the affidavits in support of this motion, are servants of the second plaintiff. Counsel therefore contended that the matters concerning the invention could only be in the knowledge of the first plaintiff and its servants, and in a situation like this, it is not safe to rely on the facts deposed to by these two gentlemen. It is true that those two persons never stated that they were also authorised by the first plaintiff to swear to those affidavits. Neither are they the servants of the first plaintiff. However, one of them Mr. Rowley, swore positively in his affidavit that he is familiar with the Ghana Patent No. 522 and with the contents of the specification of the United Kingdom Letters Patent No. 836854. It therefore appears to me that the details of the specification of the said invention are well known to Mr. Rowley, which knowledge he acquired in the course of managing the business of the second plaintiff, who is the exclusive licensee of the first plaintiff. So that the fact that Mr. Rowley did not state that he was authorised by the first plaintiff to depose to those facts about the invention, does not necessarily mean that the details concerning the specification of the invention, as given by him in his said affidavit, are not true. The court is therefore entitled to attach some weight to the facts deposed to in that affidavit.
[p.120] of [1972] 2 GLR 109 It was further submitted that since the second plaintiff did not register his licence or whatever interest was assigned to it by the patentee, in accordance with the Patents Registration Ordinance, Cap. 179 (1951 Rev.), s. 10, the second plaintiff cannot have any cause of action in this country. This submission, again, is misconceived. The section does not make the registration of such assignments or interests compulsory.
The said section 10 provides that:
“Where a person becomes entitled by assignment, transmission, or other operation of law to the privileges and rights conferred by a certificate of registration or to any interest therein, he may make application in the prescribed manner to the Registrar for the entry on the Register of such assignment, transmission, or other instrument, affecting the title, or giving an interest therein.” (The emphasis mine). I am of the view that the language used by the Ordinance in this section is
permissive. The assignee of the patentee is invested with a discretion and he can therefore decide either to register or not to register his assignment. The word “may” used in this particular context, to my mind, was not intended to be construed as “must” or “shall.” Thus there is no obligation on the assignee to apply for the registration of his said assignment or interest. Since the section has not got compulsory force, I hold that the registration of the assignment of the rights of a patentee, as provided under section 10 of Cap.
179, is not mandatory. I further hold that failure of an assignee to register his said assignment or interest, as in the case of the second plaintiff herein, will not preclude that assignee from instituting an action when there is an infringement of his rights under the assignment, so long as the assignee concerned is the exclusive licensee of the patentee.
Learned counsel for the defendant also contended that the defendant had nothing to do with the
processing or manufacturing of the metronidazole. Counsel stated that the defendant is a mere seller
thereof, and that the action should have been brought in London against the International Generics Ltd.
which actually manufactured the said drugs abroad and supplied them to the defendant in Ghana. I do sympathise with this submission. But what we are concerned with in this case is the sale of the
metronidazole in Ghana, and not its manufacture in the United Kingdom by the International Generics Ltd. According to the plaintiffs, it is the sale of the drug in Ghana by the defendant which constitutes the infringement. In my opinion, where a patent has been granted in Ghana for processing a particular product, the importation from abroad and the sale in Ghana of that product, made according to the patented process by a person who is neither the patentee nor the licensee of the patentee, is an infringement. The case of Elmslie v. Boursier (1869) L.R. 9 Eq. 217 is in point. In that case, it was held that the importation and sale in England of articles manufactured abroad according to the specification of an English patent is an infringement.
[p.121] of [1972] 2 GLR 109 The case of Elmslie was cited with approval by the Court of Appeal in Von Heydon v. Neustadt (1880) 14 Ch.D. 230, C.A. In the subsequent case of Badische Anilin und Soda Fabrik v. Hickson [1906] A.C.
419, H.L., Lord Davey in the course of his judgment in the House of Lords said at p. 422 that:
“It has also been decided in a number of cases that to sell and deliver in this country the product of the invention was an infringement of the monopoly granted, whether such product was made in this country or abroad.”
See also Saccharin Corporation Ltd. v. Anglo-Continental Chemical Works [1901] 1 Ch. 414 and Wright v. Hitchcoch (1870) L.R. 5 Exch. 37 at p. 47. It can therefore be seen that the fact that the defendant was not the manufacturer or had nothing to do with the processing of the metronidazole is irrelevant.
Learned counsel’s next submission was that it was incumbent on the plaintiffs to prove the chemical
components of those tablets sold by the defendant, with a view to showing that the tablets in fact contain the chemicals derived from the substance imidazole, and therefore they come within the specification of the first plaintiff’s said invention. This onus, submitted counsel, the plaintiffs failed to discharge. It may be questioned whether this contention is open to learned counsel. However, the contention is untenable.
Because there is sufficient affidavit evidence on record which, at least, shows that the drug sold and being sold by the defendant has the chemical name as well as the structural formula which complies with the specification involved in the first plaintiff’s invention. Mr. Rowley, who is a pharmaceutical chemist by profession, after explaining in some detail the specification covered by the patent, made the following significant and positive assertions in paragraph (14) of his affidavit. He said:
“(14) Correct labelling of pharmaceutical products is of vital importance in the public interest and
preparations marketed by a firm of repute must be accepted as being correctly labelled. More particularly, any preparation labelled ‘metronidazole tablets’ means to me tablets which contain as
their active ingredient that product of the Patent herein which has the above stated chemical name and structural formula. When the tablets are stated to contain ‘metronidazole BP,’ this means that they contain metronidazole which complies with the requirements specified for this product in the British Pharmacopoeia. When the tablets are impressed with, and/or are sold in packaging marked with, a Trade Mark other than FLAGYL, neither they, nor their constituent metronidazole, have been
manufactured by my company.” (The emphasis is mine). It is worthy of note that the defendant admitted this paragraph (14) to be true. In its affidavit paragraph (24), the defendant said: “(24). That defendant admits paragraph (14) of the affidavit [p.122] of [1972] 2 GLR 109 save that a preparation labelled ‘Metronidazole Tablets’ cannot always have only the monopoly of the
patentee.”
If therefore the defendant admits that any preparation labelled “metronidazole tablets” contains as its ingredient that product of the patent in question, then what was the necessity for the plaintiffs to prove the chemical components of exhibits A, B and C bought from the defendant’s shops and labelled “metronidazole tablets?” On the defendant’s own showing, I hold that those tablets, exhibits A, B and C, sold by the defendant, and labelled “metronidazole” do contain as their ingredient the product of the first plaintiff’s said invention.
The defendant contended that the interim injunction should not be granted, because the plaintiffs delayed for two years before the issue of the writ and that that delay amounted to lanches. It will be recalled that the second plaintiff first wrote to the defendant on 9 February 1970, drawing the defendant’s attention to the patent rights of the second plaintiff in certain drugs, and requested the defendant not to infringe those rights. A copy of that letter attached to Mr. Anaman’s affidavit, shows that at that time, that is, on 9 February 1970, the second plaintiff appeared not to have become aware of the defendant’s infringement of the Ghana Patent No. 522, now in dispute. The infringement which the second plaintiff was aware of, and complained about in that letter, was in respect of the United Kingdom Patent No. 716207 which has been registered in Ghana as Patent No. 288. The said Patent No. 288 related to another product called chlorpromazine, which is also manufactured and sold by the second plaintiff under the registered trade mark “Largactil.”
Apart from this particular drug covered by the said Patent No. 288, the second plaintiff did not complain of any infringement of the Ghana Patent No. 522 in dispute herein, or of any other patents.
The second plaintiff in that letter, however, gave the defendant a list of the second plaintiff’s other
patented drugs, their trade marks and their patent numbers. The letter also requested the defendant, in case it had sold any of those drugs, to furnish the second plaintiff with a statement of those sales, and the stocks being held by the defendant in respect of any of the products listed in that letter. The list incidentally, included “metronidazole” with its Ghana Patent No. 522.
Contrary to expectation, the defendant did not reply the second plaintiff’s said letter. It seems to me that it was after that letter had been written, and the defendant had become aware of the second plaintiff’s interest in the said Patent No. 522, that the defendant started selling the metronidazole in its shops. This conduct of the defendant leaves a lot to be desired, because the defendant set out to do an act which it knew was likely to be an infringement of the patent rights of the second plaintiff. Having regard therefore to the circumstances of this case, and to the fact that the actual infringements, which brought about the present suit, were the sales made by the defendant on 8, 9 and 20 September 1971, respectively, I do not think that the seven months that elapsed
[p.123] of [1972] 2 GLR 109 between 8 September 1971 and 18 April 1972, the date on which the writ of summons was issued, ought to be regarded as amounting to excessive delay. The plaintiffs are not therefore estopped by laches.
The last submission of the defendant’s counsel was that assuming there has been an infringement of the patent, the plaintiffs have not been able to prove to the court the extent of harm or damage done to the plaintiffs’ business or any financial loss incurred by them. The short answer to this submission is that the court will invariably grant an injunction even though no damage, pecuniary or otherwise, is proved, if the acts complained of will result in infringing the legal rights of the plaintiff. This was made quite clear by Parker J. in Weatherby & Sons v. International Horse Agency and Exchange Ltd. [1910] 2 Ch. 297 at p. 305, where the learned judge said:
“But, in my opinion, an unfair use may be made of one book in the preparation of another, even if there is no likelihood of competition between the former and the latter. After all copyright is property, and an action to restrain the infringement of a right of property will lie even if no damage be shewn.”
In the case just cited, the dispute was about copyright, and I think the infringement of copyright and of patent, as in the present case, can be treated on the same footing, the question being one and the same, namely, whether the right of exclusive licensee has been infringed. See also King v. Brown, Durant & Co. [1913] 2 Ch. 416. I therefore hold that it is not necessary for the plaintiffs, at this stage of the proceedings, to prove actual damage. They are only to establish a prima facie case of infringement. This, in my opinion, they have been able to do. So that before they have the chance to establish their rights at law, it is the duty of this court to intervene to protect them by an interlocutory injunction.
Nevertheless, I have given thought to the question whether instead of granting the interlocutory
injunction, I should rather order the defendant to keep an account of all the metronidazole tablets it will sell in this country, and the profits it will make on them, between now and the day of the final hearing and determination of the suit. But I am entertaining great doubts as to whether the defendant would keep proper accounts, especially because of its refusal even to acknowledge the receipt of the plaintiffs’ letter of 9 February 1970; and in view of its refusal to comply with the plaintiffs’ requests and to pay attention to the reasonable remonstrances contained in the said letter. I think in the circumstances of this case, to put the defendant upon terms of keeping an account, and to allow it to continue what may eventually prove to be an improper business, would be a very ineffective mode of recompensing the plaintiffs, if they should, in the long run, turn out to be in the right.
Again, I have cautiously considered the degree of convenience and inconvenience to the parties by
granting or not granting the interim injunction. The business of the second plaintiff is mainly that of the [p.124] of [1972] 2 GLR 109 manufacturer and dealer in pharmaceutical and medical preparations. But the defendant, on the other hand, trades in all sorts of goods and commodities, including every conceivable provision. So that the sale of this particular drug -metronidazole – forms a negligible part of the defendant’s vast business. This is amply borne out by paragraph (27) of the defendant’s own affidavit which states that:
“the defendant’s business is wider than the distribution of International Generics Ltd. products which is very minimal in relation to the defendant’s total operation which covers technical goods, motor vehicles as well as bottling and sale of soft drinks.”
I am therefore satisfied that it would be less inconvenient and less likely to produce irreparable damage, to stop the defendant from selling the said drug, than it would be if the defendant is permitted to sell it and merely keep account. Moreover, I firmly believe that if the defendant is prevented from selling the drug for the time being, the public will not in any way suffer or be affected, because whatever happens, the drug will continue to be available in the open market, or in the drug stores in Ghana through the agencies of the second plaintiff; only the price may differ from that of the defendant.
However, on the consideration of the whole matter, I have come to the conclusion that the course which will best meet the ends of justice is to grant the interlocutory injunction and then put the plaintiffs upon terms. Accordingly, the defendant, its agents, officers, servants, or workmen are restrained from infringing the Ghana Patent No. 522, by importing, purchasing, supplying or offering for sale the product called metronidazole, pending further order of this court. The plaintiffs are ordered to give an undertaking to abide by such order, if any, as to damages as the court may think fit to make, if they should ultimately turn out to be in the wrong.
The said undertaking should be in writing and must be deposited with the senior registrar of this court, and a copy thereof served on the defendant. The order of the interim injunction herein made should not be drawn up by the senior registrar until the said undertaking is given in the manner as indicated (supra), and the order should take effect as from the day on which it is formally served on the defendant or its solicitors.
The plaintiffs are awarded costs assessed at ¢85.00.
DECISION
Application granted.
