Eli Lilly successfully opposes eight registrations on appeal

In Eli Lilly and Company v Salenab Nigeria Limited (FHC/L/CS/534/99), the Federal High Court of Nigeria has overturned the decision of the registrar of trademarks to register eight marks that are identical or confusingly similar to marks owned by pharmaceutical giant Eli Lilly. In reaching this decision, the court rejected the expert testimony of a doctor.

US-based Eli Lilly is the registered owner of a number of marks in Nigeria including LILLY, KEFLEX, CECLOR and HUMULIN. It has also applied to register ILENTIN. The company instituted opposition proceedings against one of its former distributors, Salenab Nigeria, when it applied to register the following eight marks at the Nigerian Trademark Registry: LILLY ILETIN LENTE, LILLY HUMULIN LENTE, LILLY HUMULIN PROFILE 30/70, LILLY ILETIN REGULAR, LILLY CECLOR GRANULES, LILLY ILETIN NPH, LILLY KEFLEX CAPSULES and LILLY CECLOR CAPSULES.

The registrar rejected the opposition on the grounds that Salenab's marks are not so similar to Eli Lilly's marks as to deceive the public or cause confusion. In reaching this conclusion, he relied on the expert testimony of a doctor who said that since the products in question are prescription drugs, and doctors use generic names when prescribing drugs, the trademarks would not create confusion. Eli Lilly appealed.

The Federal Court overturned the registrar's decision, holding that (i) Salenab's marks are identical or confusingly similar to those of Eli Lilly, and (ii) the products, though prescription drugs, are also sold over the counter. As a result, consumer confusion was likely. Accordingly, the court ordered that Salenab's marks be deleted from the Trademark Register.

Folasade Laniyan, Jackson Etti & Edu, Lagos