Boehringer Ingelheim Kg & Anor v Swingward Ltd [2008] EWCA Civ 83 (21 February 2008)

Boehringer Ingelheim Kg & Anor v Swingward Ltd [2008] EWCA Civ 83 (21 February 2008)

The necessity requirement under the BMS conditions applies only to the need to repackage or relabel, not to the manner or style of repackaging. Whether co-branding or de-branding by parallel importers is liable to damage the reputation of the trade mark is a question of fact, not law, and in this case, the trial judge's findings that there was no such damage must stand. There is no irrebuttable presumption of damage from co-branding or de-branding; actual harm must be shown.

Citation
[2008] EWCA Civ 83
Parties
Claimant/respondent: Boehringer Ingelheim KG; Claimant/respondent: Boehringer Ingelheim Pharma KG; Claimant/respondent: Glaxo Group Limited; Claimant/respondent: The Wellcome Foundation Limited; Claimant/respondent: Smithkline Beecham plc; Claimant/respondent: Beecham Group plc; Claimant/respondent: Smithkline and French Laboratories Limited; Claimant/respondent: Eli Lilly and Company; Defendant/appellant: Swingward Limited; Defendant/appellant: Dowelhurst Limited
Jurisdiction
England and Wales
Judgment Date
21 February 2008
Procedural Posture
Appeal / Court of Appeal Judgment Following ECJ References
Outcome
Appeals allowed; cross-appeals dismissed
Legal Topics
Trade Marks, Parallel Importation, Repackaging of Pharmaceuticals, Exhaustion of Rights, Damage to Trade Mark Reputation
Intellectual Property Law European Union Law Trade Marks Parallel Importation Repackaging of Pharmaceuticals Exhaustion of Rights Damage to Trade Mark Reputation

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Parties

Boehringer Ingelheim KG

Claimant/respondent

Boehringer Ingelheim Pharma KG

Claimant/respondent

Glaxo Group Limited

Claimant/respondent

The Wellcome Foundation Limited

Claimant/respondent

Smithkline Beecham plc

Claimant/respondent

Beecham Group plc

Claimant/respondent

Smithkline and French Laboratories Limited

Claimant/respondent

Eli Lilly and Company

Claimant/respondent

Swingward Limited

Defendant/appellant

Dowelhurst Limited

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment Following ECJ References

Legal Issues

  1. 1 Whether co-branding and de-branding by parallel importers of pharmaceuticals infringe trade mark rights under Article 5 and 7 of Directive 89/104/EC and the Trade Marks Act 1994
  2. 2 Whether such activities are liable to damage the reputation of the trade mark under the BMS conditions as interpreted by the ECJ
  3. 3 Whether the necessity requirement applies to the manner of repackaging or only to the fact of repackaging

Ratio Decidendi

The necessity requirement under the BMS conditions applies only to the need to repackage or relabel, not to the manner or style of repackaging. Whether co-branding or de-branding by parallel importers is liable to damage the reputation of the trade mark is a question of fact, not law, and in this case, the trial judge's findings that there was no such damage must stand. There is no irrebuttable presumption of damage from co-branding or de-branding; actual harm must be shown.

Court Disposition

Appeals allowed; cross-appeals dismissed

Orders

  • Findings of no damage to trade mark reputation by co-branding and de-branding stand
  • No injunction or relief granted to claimants on these grounds