Glaxo Group Ltd & Ors v. Dowelhurst Ltd & Anr [2000] EWHC Ch 134 (28th February, 2000)

Glaxo Group Ltd & Ors v. Dowelhurst Ltd & Anr [2000] EWHC Ch 134 (28th February, 2000)

The defendants' use of the claimants' registered trade marks on parallel imported pharmaceuticals did not harm the specific subject matter of the marks, as the goods were genuine, accurately marked, and the repackaging or over-stickering did not mislead as to origin or quality. Therefore, under ECJ jurisprudence and the Treaty of Rome, the claimants could not enforce their national trade mark rights to impede the defendants' activities. The requirement of necessity for repackaging must be interpreted in light of whether the specific subject matter is harmed; mere lack of necessity, without harm, does not justify prohibition.

Citation
[2000] EWHC Ch 134
Parties
Claimant: Glaxo Group Limited; Claimant: The Wellcome Foundation Ltd; Claimant: Boehringer Ingelheim KG; Claimant: Boehringer Ingelheim Pharma KG; Claimant: SmithKline Beecham Plc; Claimant: Beecham Group Plc; Claimant: SmithKline and French Laboratories Limited; Claimant: Eli Lilly and Company; Defendant: Dowelhurst Limited; Defendant: Swingward Limited
Jurisdiction
England and Wales
Procedural Posture
Intellectual Property Infringement (trade Marks and Passing Off) / Final Judgment at First Instance
Outcome
claims dismissed
Legal Topics
Trade Mark Infringement, Passing Off, Parallel Importation, Exhaustion of Rights, Free Movement of Goods, Repackaging of Goods
Intellectual Property European Union Law Trade Mark Infringement Passing Off Parallel Importation Exhaustion of Rights Free Movement of Goods Repackaging of Goods

Case Brief

Summary, issues, holding and outcome

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Parties

Glaxo Group Limited

Claimant

The Wellcome Foundation Ltd

Claimant

Boehringer Ingelheim KG

Claimant

Boehringer Ingelheim Pharma KG

Claimant

SmithKline Beecham Plc

Claimant

Beecham Group Plc

Claimant

SmithKline and French Laboratories Limited

Claimant

Eli Lilly and Company

Claimant

Dowelhurst Limited

Defendant

Swingward Limited

Defendant

Procedural Posture

Intellectual Property Infringement (trade Marks and Passing Off) / Final Judgment at First Instance

Legal Issues

  1. 1 Whether the defendants' use of claimants' registered trade marks on parallel imported pharmaceuticals constitutes infringement under UK law.
  2. 2 Whether the principles of free movement of goods and exhaustion of rights under the Treaty of Rome preclude the claimants from enforcing their trade mark rights against the defendants' activities.
  3. 3 Whether repackaging or over-stickering by the defendants goes beyond what is 'necessary' and thus infringes the claimants' rights.

Ratio Decidendi

The defendants' use of the claimants' registered trade marks on parallel imported pharmaceuticals did not harm the specific subject matter of the marks, as the goods were genuine, accurately marked, and the repackaging or over-stickering did not mislead as to origin or quality. Therefore, under ECJ jurisprudence and the Treaty of Rome, the claimants could not enforce their national trade mark rights to impede the defendants' activities. The requirement of necessity for repackaging must be interpreted in light of whether the specific subject matter is harmed; mere lack of necessity, without harm, does not justify prohibition.

Court Disposition

claims dismissed

Orders

  • All claims for trade mark infringement and passing off are dismissed.
  • No injunctions or relief granted against the defendants.