Boehringer Ingelheim Kg & Anor v Swingward Ltd. [2004] EWCA Civ 129 (05 March 2004)

Boehringer Ingelheim Kg & Anor v Swingward Ltd. [2004] EWCA Civ 129 (05 March 2004)

Parallel importers are entitled to rebox pharmaceuticals where necessary to overcome significant consumer resistance to relabelled products, provided the five BMS conditions are met. Co-branding and de-branding do not, on the facts of this case, damage the reputation of the trade mark or mislead consumers, and thus do not infringe trade mark rights or constitute passing off. The necessity test does not extend to require that every aspect of packaging be the minimum necessary, provided there is no damage to the mark's reputation.

Citation
[2004] EWCA Civ 129
Parties
Appellant/claimant: Boehringer Ingelheim KG; Appellant/claimant: Boehringer Ingelheim Pharma GmbH & Co KG; Appellant/claimant: Boehringer Ingelheim Limited; Appellant/claimant/respondent: Glaxo Group Limited; Respondent/claimant: Smithkline Beecham plc; Respondent/claimant: Beecham Group plc; Respondent/claimant: Smithkline and French Laboratories Limited; Respondent/claimant: Eli Lilly and Company; Respondent/defendant: Swingward Limited; Appellant/defendant/respondent: Dowelhurst Limited
Jurisdiction
England and Wales
Judgment Date
05 March 2004
Procedural Posture
Appeal and Cross Appeal From High Court (patents Court) / Court of Appeal Judgment With Reference to ECJ
Outcome
Appeals allowed in respect of reboxed products; cross-appeals concerning restickered boxes dismissed; reference to the ECJ required for further clarification.
Legal Topics
Trade Marks, Parallel Imports, Repackaging, Passing Off, Exhaustion of Rights, Free Movement of Goods
Intellectual Property European Union Law Trade Marks Parallel Imports Repackaging Passing Off Exhaustion of Rights Free Movement of Goods

Case Brief

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Parties

Boehringer Ingelheim KG

Appellant/claimant

Boehringer Ingelheim Pharma GmbH & Co KG

Appellant/claimant

Boehringer Ingelheim Limited

Appellant/claimant

Glaxo Group Limited

Appellant/claimant/respondent

Smithkline Beecham plc

Respondent/claimant

Beecham Group plc

Respondent/claimant

Smithkline and French Laboratories Limited

Respondent/claimant

Eli Lilly and Company

Respondent/claimant

Swingward Limited

Respondent/defendant

Dowelhurst Limited

Appellant/defendant/respondent

Procedural Posture

Appeal and Cross Appeal From High Court (patents Court) / Court of Appeal Judgment With Reference to ECJ

Legal Issues

  1. 1 Whether parallel importers may lawfully rebox, relabel, co-brand, or de-brand pharmaceuticals bearing trade marks under EU law and the Trade Marks Directive; whether such acts infringe trade mark rights or constitute passing off; the scope and application of the 'necessity' test for repackaging; the effect of ECJ jurisprudence on national law.

Ratio Decidendi

Parallel importers are entitled to rebox pharmaceuticals where necessary to overcome significant consumer resistance to relabelled products, provided the five BMS conditions are met. Co-branding and de-branding do not, on the facts of this case, damage the reputation of the trade mark or mislead consumers, and thus do not infringe trade mark rights or constitute passing off. The necessity test does not extend to require that every aspect of packaging be the minimum necessary, provided there is no damage to the mark's reputation.

Court Disposition

Appeals allowed in respect of reboxed products; cross-appeals concerning restickered boxes dismissed; reference to the ECJ required for further clarification.

Orders

  • Appeals by parallel importers allowed regarding reboxed products.
  • Cross-appeals by trade mark owners on relabelled products dismissed.