Boehringer Ingelheim Kg & Anor v Swingward Ltd.

Boehringer Ingelheim Kg & Anor v Swingward Ltd.

The Court of Appeal upheld the High Court's findings that reboxing by parallel importers is necessary due to significant market resistance to stickered products, and that neither co-branding nor de-branding as conducted in these cases caused damage to the reputation or distinctiveness of the claimants' trade marks. The passing off claim was dismissed for lack of evidence of deception. However, the Court found the law unclear regarding the necessity test's application to the form of repackaging and relabelling, and referred these questions to the ECJ for clarification. Notice periods for trade mark owners were set at 15 working days for both reboxed and stickered products.

Parties
Appellant/claimant: Boehringer Ingelheim KG; Appellant/claimant: Boehringer Ingelheim Pharma GmbH & Co KG; Appellant/claimant: Boehringer Ingelheim Limited; Appellant/claimant: Glaxo Group Limited; Respondent/claimant: Smithkline Beecham plc; Respondent/claimant: Beecham Group plc; Respondent/claimant: Smithkline and French Laboratories Limited; Appellant/claimant: Eli Lilly and Company; Respondent/defendant: Swingward Limited; Respondent/defendant: Dowelhurst Limited
Jurisdiction
England and Wales
Judgment Date
05 March 2004
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Appeal From High Court, With Reference to ECJ Pending
Outcome
Appeals allowed in part, cross-appeals dismissed in part, reference to ECJ for further questions, judgment on form of reboxing and relabelling deferred.
Legal Topics
Trade Marks, Parallel Importation, Repackaging of Pharmaceuticals, Passing Off, Exhaustion of Rights, Free Movement of Goods
Intellectual Property Competition Law EU Law Trade Marks Parallel Importation Repackaging of Pharmaceuticals Passing Off Exhaustion of Rights +1 more

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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

Smithkline Beecham plc

Respondent/claimant

Beecham Group plc

Respondent/claimant

Smithkline and French Laboratories Limited

Respondent/claimant

Eli Lilly and Company

Appellant/claimant

Swingward Limited

Respondent/defendant

Dowelhurst Limited

Respondent/defendant

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Appeal From High Court, With Reference to ECJ Pending

Legal Issues

  1. 1 Whether parallel importers may lawfully rebox, co-brand, or de-brand trade-marked pharmaceuticals for the UK market
  2. 2 Whether the manner of repackaging or relabelling infringes trade mark rights or constitutes passing off
  3. 3 Whether the necessity test applies to the form and presentation of repackaged goods

Ratio Decidendi

The Court of Appeal upheld the High Court's findings that reboxing by parallel importers is necessary due to significant market resistance to stickered products, and that neither co-branding nor de-branding as conducted in these cases caused damage to the reputation or distinctiveness of the claimants' trade marks. The passing off claim was dismissed for lack of evidence of deception. However, the Court found the law unclear regarding the necessity test's application to the form of repackaging and relabelling, and referred these questions to the ECJ for clarification. Notice periods for trade mark owners were set at 15 working days for both reboxed and stickered products.

Court Disposition

Appeals allowed in part, cross-appeals dismissed in part, reference to ECJ for further questions, judgment on form of reboxing and relabelling deferred.

Orders

  • Cross-appeals on passing off and injunction for notice dismissed.
  • Cross-appeal on factual necessity to rebox dismissed.