Boehringer Ingelheim Kg & Anor v Swingward Ltd

Boehringer Ingelheim Kg & Anor v Swingward Ltd

The Court of Appeal held that the activities of the defendants (parallel importers) by way of reboxing and relabelling, including co-branding and de-branding, did not cause and will not cause damage to the reputation of the claimants’ trade marks on the facts found. The necessity requirement applies only to the need to repackage, not to the manner of repackaging. Whether the presentation of the repackaged product is liable to damage the trade mark’s reputation is a question of fact, and no such damage was found. Accordingly, the defendants complied with the relevant legal conditions and there was no infringement.

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
Civil Appeal / Court of Appeal Judgment After ECJ Reference
Outcome
Appeal allowed (subject to possible further ECJ ruling); no infringement found on current facts.
Legal Topics
Trademark Infringement, Parallel Importation, Repackaging of Pharmaceuticals, Exhaustion of Rights, Market Partitioning, Co Branding, De Branding
Intellectual Property Trademark Law European Union Law Trademark Infringement Parallel Importation Repackaging of Pharmaceuticals Exhaustion of Rights Market Partitioning +2 more

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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

Civil Appeal / Court of Appeal Judgment After ECJ Reference

Legal Issues

  1. 1 Whether the activities of parallel importers (reboxing, relabelling, co-branding, de-branding) infringe the claimants' trade marks under EU and UK law.
  2. 2 Whether such activities are liable to damage the reputation of the trade marks under Article 7(2) of Directive 89/104.
  3. 3 Whether the necessity requirement applies to the manner of repackaging or only to the fact of repackaging.

Ratio Decidendi

The Court of Appeal held that the activities of the defendants (parallel importers) by way of reboxing and relabelling, including co-branding and de-branding, did not cause and will not cause damage to the reputation of the claimants’ trade marks on the facts found. The necessity requirement applies only to the need to repackage, not to the manner of repackaging. Whether the presentation of the repackaged product is liable to damage the trade mark’s reputation is a question of fact, and no such damage was found. Accordingly, the defendants complied with the relevant legal conditions and there was no infringement.

Court Disposition

Appeal allowed (subject to possible further ECJ ruling); no infringement found on current facts.

Orders

  • Parties to make written submissions on the consequences of the ruling.
  • Final decision deferred pending outcome of the Austrian reference to the ECJ.