Glaxo Group Ltd v Dowelhurst Ltd; Boehringer Ingelheim KG v Dowelhurst Ltd; Boehringer Ingelheim KG v Swingward Ltd; Eli Lilly & Co v Dowelhurst Ltd; Glaxo Group Ltd v Swingward Ltd; SmithKline Beecham Plc v Dowelhurst Ltd
Date
28 February 2000
Legislation
Trade Marks Act 1994, s.10, EC Treaty Arts. 28, 30
Keywords
Parallel imports; trademark infringement; requirement of notice; whether re-packaging necessary; free movement of goods
Counsel
Michael Silverleaf QC, Richard Hacon, Nicholas Green QC, Henry Carr QC, Simon Thorley QC, Mark Brealey
Solicitors:
Gouldens, Roiter Zucker, Willoughby & Partners, CMS Cameron McKenna
Judge:
Laddie J.
Court:
High Court (Patents Court)
Reported:
[2000] 2 CMLR 571, [2000] ETMR 415, [2000] FSR 529.
Summary:
The Claimants brought actions for trademark infringement and passing off against the Defendants for parallel imports, the importation of pharmaceuticals into England from other Member States of the European Community. The goods were those of the registered trademark proprietor, but had been re-labelled and re-boxed and still bore the registered trademarks. There was no suggestion that the quality of the goods had been compromised or impaired, but the Claimants alleged that the re-packaging of the goods went beyond what was necessary in order to market the products in the UK. And, since they had not given notice to the trade mark proprietor of the type of packaging that they intended to use on the parallel imported products, their activities, at least for a limited time, were to be treated as infringements.
The case centred on questions of whether the parallel importer had to prove necessity before he could use the proprietor's mark and if so, what amounted to necessity, and also whether it was mandatory that advance notice be given to the proprietor by the parallel importer.
It was held that from Arts. 28 and 30 EC Treaty, free movement of goods was a fundamental principle in Community law, and in the intellectual property context restrictions on inter-State trade could only be justified if significant harm would be caused to the 'specific subject matter' of the intellectual property right. The 'specific subject matter' of trademarks was the essential function of a trademark to guarantee the origin of the trademarked product.
Further, if the proprietor of the mark deliberately or otherwise placed his mark in the way of free movement of goods for reasons, which were not objectively justifiable, the principle of free movement of goods would continue to apply and the registered proprietor could not prohibit such use of his trademark.
After reviewing the authorities, it was held that there was no clear guidance on whether any form of repackaging, which was not necessary could be prohibited, especially when there was no harm caused to the specific subject matter. If it could, it was questionable whether any use of the mark on products, which was not necessary could apply to any other uses of the mark, e.g. use of the mark on advertising. The judge took the view that this would amount to a disguised restriction on trade contrary to the second sentence of Art 30, but a reference to the ECJ would be needed to clarify the law.
As to the issues of whether there was a requirement to give notice; what would amount to adequate notice, and what the consequences of not giving notice would be, these would also need to be referred to the ECJ. However, after reviewing the authorities, the judge, (reluctantly) took the view that the requirement of notice was correct. The notice must be given some period in advance of marketing and in the absence of guidance from the ECJ, two days notice would be sufficient.
Decision:
The claim for passing off was dismissed and submissions on the drafting of questions to the ECJ were heard.