Eli Lilly & Company & Anor v 8pm Chemist Ltd

Eli Lilly & Company & Anor v 8pm Chemist Ltd

There is no arguable case of trade mark infringement because the goods handled by 8PM Chemist Ltd never entered free circulation in the EU, remained non-Community goods under customs control, and were not put on the market in the Community. The use of UK postal marks and dispensing labels does not amount to 'use in the course of trade' or 'import/export' under the Directive. The activities do not interfere with the trade mark proprietor's right of first marketing within the EU.

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
Civil Appeal / Appeal From Interim Injunction Decision
Outcome
Appeal allowed; interim injunction discharged
Legal Topics
Trade Mark Infringement, Exhaustion of Rights, Customs Procedures, Import/export Law
Intellectual Property Customs Law Trade Mark Infringement Exhaustion of Rights Customs Procedures Import/export Law

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

Civil Appeal / Appeal From Interim Injunction Decision

Legal Issues

  1. 1 Whether the activities of 8PM Chemist Ltd constitute trade mark infringement under EU/UK law when goods are not released for free circulation in the EU
  2. 2 Whether the use of UK postal marks and dispensing labels amounts to 'use in the course of trade' or 'import/export' under the Trade Marks Directive

Ratio Decidendi

There is no arguable case of trade mark infringement because the goods handled by 8PM Chemist Ltd never entered free circulation in the EU, remained non-Community goods under customs control, and were not put on the market in the Community. The use of UK postal marks and dispensing labels does not amount to 'use in the course of trade' or 'import/export' under the Directive. The activities do not interfere with the trade mark proprietor's right of first marketing within the EU.

Court Disposition

Appeal allowed; interim injunction discharged

Orders

  • Interim injunction discharged
  • Parties to agree terms of undertakings; if not, to submit contentions in writing within 7 days for final order