Eli Lilly & Company & Anor v 8pm Chemist Ltd [2008] EWCA Civ 24 (05 February 2008)

Eli Lilly & Company & Anor v 8pm Chemist Ltd [2008] EWCA Civ 24 (05 February 2008)

8PM's activities did not amount to use of the Lilly trade marks 'in the course of trade' within the EU because the goods remained non-Community goods under customs control, were never released for free circulation, and were not marketed in the EU. The mere physical presence and processing of the goods in the UK under inward processing relief did not constitute 'import' or 'export' for trade mark infringement purposes. The right of first marketing in the EU was not interfered with, and factual disputes about misrepresentation to US patients were irrelevant to the legal test under EU trade mark law.

Citation
[2008] EWCA Civ 24
Parties
Claimant/respondent: Eli Lilly and Company; Claimant/respondent: Lilly Icos LLC; Defendant/appellant: 8PM Chemist Ltd
Jurisdiction
England and Wales
Judgment Date
05 February 2008
Procedural Posture
Appeal / Appeal From Interim Injunction Decision in High Court (chancery Division, Intellectual Property)
Outcome
Appeal allowed; interim injunction discharged
Legal Topics
Trade Mark Infringement, Customs Procedures, Exhaustion of Rights, Transit and Importation, Interim Injunctions
Intellectual Property Customs Law Pharmaceutical Law Trade Mark Infringement Customs Procedures Exhaustion of Rights Transit and Importation Interim Injunctions

Case Brief

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Parties

Eli Lilly and Company

Claimant/respondent

Lilly Icos LLC

Claimant/respondent

8PM Chemist Ltd

Defendant/appellant

Procedural Posture

Appeal / Appeal From Interim Injunction Decision in High Court (chancery Division, Intellectual Property)

Legal Issues

  1. 1 Whether 8PM's activities constituted use of the Lilly trade marks 'in the course of trade' within the EU under the Trade Marks Directive and Regulation
  2. 2 Whether the goods were 'imported' or 'exported' within the meaning of the relevant legislation
  3. 3 Whether the use of UK postal marks and dispensing labels created an actionable misrepresentation or infringement

Ratio Decidendi

8PM's activities did not amount to use of the Lilly trade marks 'in the course of trade' within the EU because the goods remained non-Community goods under customs control, were never released for free circulation, and were not marketed in the EU. The mere physical presence and processing of the goods in the UK under inward processing relief did not constitute 'import' or 'export' for trade mark infringement purposes. The right of first marketing in the EU was not interfered with, and factual disputes about misrepresentation to US patients were irrelevant to the legal test under EU trade mark law.

Court Disposition

Appeal allowed; interim injunction discharged

Orders

  • Interim injunction against 8PM discharged
  • Parties invited to agree terms of undertakings regarding supply to EU customers and handling of returns