Boehringer Ingelheim KG v Swingward Ltd; Glaxo Group Ltd and Others v Dowelhurst Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Laddie |
| Judgment Date | 11 July 2003 |
| Neutral Citation | [2003] EWHC 110 (Ch) |
| Court | Chancery Division |
| Date | 11 July 2003 |
| Docket Number | HC 1999 No. 02054 HC 1999 No. 01894 HC 1999 No. 02904 HC 1999 No. 03040 HC 1999 No. 00017 HC 1999 No. 02051 |
[2003] EWHC 110 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand
London WC2A 2LL
The Hon. Mr Justice Laddie
HC 1999 No. 02054
HC 1999 No. 02053
HC 1999 No. 01894
HC 1999 No. 02904
HC 1999 No. 03040
HC 1999 No. 00017
HC 1999 No. 02051
Mr Richard Hacon instructed by Gouldens for the Claimants
Mr Richard Arnold QC instructed by Roiter Zucker for the Defendants
Hearing date: 11 July 2003
Approved Third Judgment
I have before me today a defendant's application pursuant to liberty to apply under orders I made on 27 February 2003. This arises in relation to the continuing dispute between Glaxo Group and the Wellcome Foundation, SmithKline Beecham, Beecham Group, and SmithKline French Laboratories on the one hand, and Dowelhurst and Swingward Limited on the other relating to the parallel importation of the claimants' pharmaceuticals into the UK.
The history of this action is that proceedings were brought in the year 2000 in which the claimants complained of the importation of their own products by the defendants in packaging which was said to constitute an infringement of the claimant's trade marks. This raised important issues under European law. After giving judgment in relation to the issues brought before me, I referred the matter to the European Court of Justice. Guidance was given by European Court of Justice and the parties came back before me to implement that guidance. That resulted in the second judgment, in which I tried to apply the guidance to the packaging then in issue.
What has happened since then is that the parties have failed to agree how the approach adopted by me in the second judgment should be extended to further packaging to which the claimants now object. The purpose of the application before me today under liberty to apply is to determine whether certain packaging used by the defendants breach the claimant's trade mark rights. For present purposes it is necessary to bear in mind that in accordance with the second judgment I gave on 6 February of last year, two crucial factors are to be borne in mind when deciding whether or not imported packaging, which bears a registered trade mark, constitutes an infringement of that mark.
First, I held that there was, in accordance with the decision of the European Court of Justice, an irrebuttable presumption that the repacking is prejudicial to the specific subject matter of the registered mark. This has the result that all repackaging must be treated as harmful and only to be tolerated to the extent that it can be shown to inflict minimal collateral damage on the claimant's mark. Second, in applying that general principle, I said as follows:
"Two forms of packaging, at least, can be said to meet this requirement. The first consists of packaging which imitates the original packaging save in respect of features which have no trademark significance whatsoever. For example, a parallel importer could repackage in boxes which bear exact copies of the claimant's get up and trademarks, save for changes in language (say German to English). The second consists of completely plain boxes which depict nothing but the claimant's trademark.".
The defendants have brought before me today a number of packages to which objection is taken by the claimants. In this judgment I will consider only the packaging for two drugs, Flixotide and Serevant, both of which are products originally put on the market by Glaxo Wellcome. The boxes put on the market by the defendants therefore contain authentic Flixotide or Serevant as case may be. The objection is taken to the get up used on the boxes themselves.
The nature of the get up can be described as follows, taking the box used for Flixotide 250 milligram inhaler as an example. The box can be likened to the box in which cigarettes are sold, with large front and back panels and narrower side panels. The back panel contains technical information, is in white with lettering in black. The front is basically white, the word Flixotide is at the top of the front in pale pink. Underneath that is a rectangular box also in pale pink, but a shade slightly paler than the word Flixotide, on which in white are written the words, "215 microgram evohaler". Underneath that on a part of the white area of the box in black are printed the words "fluticasone propionate" (that is a reference to the active ingredient in pharmaceutical preparation). Below that is an equilateral triangle, which is in shades of pink being darker at the top proceeding down to a very much paler pink at the point which faces downwards. Across the bottom of that triangle in black letters are printed the words "120 metred acuations". The two side panels of the box are also predominantly pink. Each has printed on it in white letters the words "Flixotide 250 microgram evohaler" and "120 metred acuations". There is also in black on one of the side panels technical details relating to the batch numbers and expiry and licence number. On the top flap of the box, that is the flap which has to be pulled out to allow the patient to gain access to the contents, the words "Flixotide 215 microgram evohaler" is...
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