Ciba Geigy Plc v Parke Davis & Company Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 19 March 1993 |
| Date | 19 March 1993 |
| Court | Chancery Division |
Chancery Division
Before Mr Justice Aldous
Passing-off - interlocutory injunction - advertisement for painkillers
Advertisements by the manufacturer of a therapeutic equivalent of a rival's established pain-killing drug, as being in effect just as good but cheaper, did not justify the grant to that rival, pending the trial of its action for passing-off, of an interlocutory injunction restraining such advertisements.
Mr Justice Aldous so held in the Chancery Division in discharging an interlocutory injunction, granted on February 17 and continued by the Court of Appeal on February 18 by Mr Justice Lindsay ex parte, but on notice, pursuant to a writ issued on February 15 and a notice of motion dated February 16, which restrained the defendant, trading as Parke Davis Research Laboratories, from, inter alia, issuing advertisements similar to those in the issues of February 13 and 20 of Pulse magazine, or promoting their products under or by reference to (a) the depiction of an apple, as shown in those issues, or (b) the slogan "Everything you would expect from a diclofenac retard".
Mr Antony Watson, QC and Mr Andrew Waugh for the plaintiff; Mr Geoffrey Hobbs, QC and Mr George Hamer for the defendant.
MR JUSTICE ALDOUS said that the UK market for non-steroidal anti-inflammatory drugs (NSAIDs), which relieved pain from rheumatoid arthritis and the like, was worth some £200 million a year.
The plaintiffs had developed and marketed since 1979, under the trademark Voltarol, and by reference to the representation of a green apple, a range of NSAID pain-killers comprising the compound diclofenac sodium and since 1983, under the trade name Voltarol Retard, one which was released slowly into the patient's body, thus relieving pain more evenly over a longer period.
That proved very successful. By 1992 more than 20 million prescriptions for it had been written but it was no longer protected by a patent. Both its name and its connection with the representation of a green apple were well known to doctors and pharmacists, at whom publicity had been directed, since it was only available by prescription.
On February 13 the defendants, who had developed and wished to market what they regarded as an equivalent but cheaper slow-release diclofenac painkiller under the brand-name Diclomax Retard, published two advertisements in Pulse magazine.
The main one was a two-page spread with a 13in high green...
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Bibliography
...judgement handed down 7February 1996) or British Sugarplc v James Robertson & Sons Ltd[1996] RPC 281Ciba Geigy plc v Parke Davis Co14 B.M.L.R. 64.Cosgrove Studio v Paine 408 Pa.314 (1962).De Beers Abrasive Products vInternational Co. of New York.[1975] 2 All E.R. 599.Handyside v United King......
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United Kingdom : Chapter 6
...and can be interpret-4326 [1986] F.S.R. 45.27 See discussion on Internet: http://twobirds.com/liberary/brandtrade/compara-tive.htmp.28 14 B.M.L.R. 64.29 Beller 1995: 929.30 Beller 1995: 929.31 Mills 1996: ed as attacking the honesty or integrity of the competitor, the action ofdefamation ar......