RHONE-POULENCE S.A. AND ANOTHER v. GHANA NATIONAL TRADING CORPORATION
May 26, 1972
HIGH COURT
GHANA
CORAM
- ABBAN J
Areas of Law
- Intellectual Property Law
- Civil Procedure
- Commercial Law
- Tort Law
- Equity and Trusts
May 26, 1972
HIGH COURT
GHANA
CORAM
AI Generated Summary
Rhone-Poulence S.A. and its wholly owned subsidiary May and Baker Ltd. sought an interlocutory injunction against the Ghana National Trading Corporation (G.N.T.C.) to restrain the importation and sale of metronidazole in Ghana, alleging infringement of Ghana Patent No. 522 (registered from UK Patent No. 836854). May and Baker, the exclusive licensee, presented metronidazole tablets purchased from G.N.T.C. stores to show ongoing sales. G.N.T.C. argued that International Generics Ltd. in London supplied the product, claimed government authorization under L.I. 395, raised procedural objections under Order 50 and N.R.C.D. 59, and challenged the plaintiffs standing and failure to register licensing interests. Abban J. rejected each objection, held that selling in Ghana products made abroad to the patented process infringes the Ghana patent, found affidavit and labelling evidence sufficient to establish a prima facie case, and concluded the balance of convenience favoured stopping sales. The court granted an interlocutory injunction, required an undertaking as to damages, and awarded costs.
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]
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