Boehringer Ingelheim v Swingward
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob,Lord Justice Tuckey,The Master of the Rolls |
| Judgment Date | 21 February 2008 |
| Neutral Citation | [2008] EWCA Civ 83 |
| Docket Number | Case Nos: A3/2003/0678, 0680, 0681, HC 1999 No 00017, HC 1999 Nos 01894, 02053 HC 1999 No 02051, HC 1999 No 02054, HC 1999 No 02904, HC 1999 No 03040 |
| Court | Court of Appeal (Civil Division) |
| Date | 21 February 2008 |
[2008] EWCA Civ 83
The Master of The Rolls
Lord Justice Tuckey and
Lord Justice Jacob
Case Nos: A3/2003/0678, 0680, 0681,
0682, 0689, 0690, 0691, 0692, 0693, 0694
HC 1999 No 00017, HC 1999 Nos 01894, 02053
HC 1999 No 02051, HC 1999 No 02054,
HC 1999 No 02904, HC 1999 No 03040
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE LADDIE
Royal Courts of Justice
Strand, London, WC2A 2LL
Richard Arnold QC (instructed by Roiter Zucker) appeared on behalf of
Dowelhurst Limited and Swingward
Simon Thorley QC (instructed by CMS Cameron McKenna) appeared on
behalf of Eli Lilly
Michael Silverleaf QC and Richard Hacon (instructed by REDD) appeared
on behalf of Glaxo Group Limited, Boehringer Ingelheim and
Smithkline Beecham plc
Hearing dates: 29 and 31 January 2008
This is my judgment on the resumed appeals and cross appeals from two judgments of Laddie J (“Laddie 1” and “Laddie 2”) of 28 th February 2000 (no neutral citation, [2000] IP & T 502) and 6 th February 2003, [2003] EWHC 110 (Ch). By Laddie 1 some questions were referred to the European Court of Justice (“ECJ”). The ECJ gave its response (“ECJ 1”) on 23 rd April 2002, Case C-143/00. The hearing before Laddie J resumed for further argument; no more evidence was given. By Laddie 2, judgment was given principally for the trade mark owners. The defendants appealed. The claimants cross-appealed some issues of fact and other matters on which they had lost. We gave judgment on 5 th March 2004, [2004] EWCA Civ 129(“CA 1”). Some matters were finally determined (passing off, the factual questions about necessity). Others we were not sure about and found it necessary to refer questions to the ECJ. Those questions were answered by a judgment (“ ECJ 2”) of 26 th April 2007 in Case C-348/04. The resumed appeal is the result of that judgment.
Notwithstanding the two references to the ECJ and its answers, each “side” (there are several claimant drug companies as claimants and two parallel importers as defendants) claims to have won. That is a sorry state of affairs. European trade mark law seems to have arrived at such a state of uncertainty that no one really knows what the rules are, outside the obviously core case of straightforward infringement (the use of a mark as a trade mark for the defendant's goods which is the same as or confusingly similar to a plaintiff's registered mark registered for the same or similar goods). Big brand owners want bigger rights; smaller players, no change or less. The compromises which have emerged have very fuzzy lines. So it is that in this case, notwithstanding two references (and a host of cases about relabelling parallel imports going back at least 30 years, see Hoffmann-La Roche v Centrafarm, Case 102/77 [1978] ECR 1139), there is still room for argument. There is indeed a yet further reference about the subject still pending before the ECJ, see below.
There is and never has been any dispute as to what the defendants are in fact doing. I described it briefly at [4 – 10] of my judgment in the CA 1 judgment:
[4] I begin by describing the various things the defendants are doing. In each case they purchase in a Member State other than the UK the original pharmaceutical, packed in cardboard boxes appropriate for that Member State containing an appropriate instruction leaflet for that Member State. Some of the goods are pills packed in blister packs. Others are inhalers (commonly called “puffers”) on which is stuck a label. There is no dispute that under the free-circulation rules (and particularly Art. 28) of the EC Treaty they are entitled, so far as trade mark law is concerned, to import and sell these goods in the packaging in which they were purchased.
[5] The actual pharmaceuticals are the genuine goods, identical to those on the UK market. They may indeed come off the same production line since pharmaceutical production does not involve giant factories and distribution is cheap – you can get a lot of pills in a lorry. But the boxing, labelling and information leaflets as they stand are not suitable for this country. Information leaflets for this country must be in English and comply with our regulatory requirements which may differ from those in the country of origin. Moreover the boxes have instructions and details in foreign languages.
[6] The parallel importers therefore, for regulatory and market acceptability reasons, make changes. What they mainly do so far as this case is concerned is called “reboxing”. They take the contents of the foreign boxes out, and put them in fresh boxes designed for the UK market along with fresh information leaflets in English which comply with UK regulatory approval. In the case of inhalers, not only do the importers rebox, they also stick appropriate English language labels on the inhalers themselves, labels which completely overcover the foreign language label.
[7] Reboxing generally involves re-affixing the original trade mark on the information leaflets and boxes. But in some instances the importer has instead only used the generic name of the drug on the box – not its trade mark. This was called “de-branding”. In such a case the original trade mark is not removed from every aspect of the product – in particular blister packs and often the pills themselves bear it. For obvious reasons the mark cannot be removed from the pills or the blister packs without the risk of affecting the quality of the drugs themselves. So “de-branding” in the context of this case really means partial de-branding. The only affixing of the trade mark by the parallel importers is on the new information leaflet prepared for UK use.
[8] In other cases the defendants' new boxes not only bear the trade mark of the drug, but also have a get-up which may serve as being distinctive of the importer. This is called “co-branding.” Such co-branding has always had on the side of the box in clearly legible, but less prominent, small print, the information mentioned below.
[9] An alternative operation is called “stickering”. This involves sticking an appropriate label to an original foreign language box, having replaced the internal foreign information leaflet with an appropriate UK leaflet. Complaint is made of the form of some stickered products.
[10] Whether there is reboxing or stickering, for the purposes of this case it is agreed that we should proceed on the basis that the importer has indicated clearly on the new box or sticker that the goods were procured in the EU and repackaged by the importer. An example of the sort of thing involved reads:
“Manufactured by Lilly SA, Spain. Procured within the EC and repackaged by the licence holder who is:
DOWELHURST LTD”
Actually some of the boxes with which we were concerned did not say all these things, but no point is taken about that.
More detail of these activities is to be found in the Laddie 1 judgment and its annexes where many of the presentations complained of are illustrated.
By the CA 1 judgment the claimants' cross-appeals in passing off were dismissed. And they were dismissed on the basis that the activities complained of contained no false representations and did not cause any confusion – see [55–59] and Laddie 1 at [192]. More widely, in Laddie 1 it was held that none of the defendants' activities caused confusion or harmed the claimants' trade marks or reputation.
Mr Richard Arnold QC for the defendants took us in detail through Laddie 1 to show us the findings of fact in some repetitive detail. It is sufficient here to quote some of Laddie J's conclusions:
[165] …The claimants' assertions of serious damage to their respective trade marks are all at a high level of generality. No evidence has been furnished that any of the individual products and packagings in issue has caused any damage at all to the claimants.
[166] The claimants say that each of the pleaded packagings, whether reboxed or overstickered, is highly damaging to their reputation and exclusivity. Their pleaded trade marks are said to be gravely harmed by the defendants' activities. I have already said that there is no evidence to support these assertions in relation to any particular piece of packaging. But there is also no evidence to support the assertions at the high level of generality at which they are put by the claimants. Indeed, there is much to suggest that they are not accurate. Had the claimants' assertions been true one would have expected some material to be put before the court to show that the claimants had suffered. There is none. But more than that, the absence of such evidence is particularly striking in this case for at least two reasons. First, the defendants' activities have been on a large scale. They have made sales of tens of millions of pounds worth of parallel imported drugs in the packages in...
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