Merck & Co Inc

This is an application to obtain delivery up and Norwich Pharmacal relief in relation to a number of pharmaceutical products which have been seized by HM Revenue & Customs and which are alleged to infringe Merck’s trademark. Mr Fernando has taken me through quite a lot of material (which I am not going to refer to in any detail). I have no doubt that it is appropriate to make the orders which are sought.

Norris J had a similar application at the end of last week in relation to some of Pfizer’s pharmaceuticals and he reviewed in his admirable concise ex tempore judgment the relevant provisions and rehearsed the arguments that Mr Fernando put before him and are put before me that might be raised by the defendant against this application. I hope I will be forgiven if I shamelessly plagiarise what he has to say.

I have been referred to Articles 9 and 12 of the Customs Regulations, Council Regulation 1388-2003. To cut the story short, the HMRC served notice on Merck pursuant to Article 9 and the upshot after testing was that these were not counterfeit goods, but there is an issue of trademark infringement.

It has been suggested to me that there might be an argument that there has been such delay in bringing this application as to disentitle Merck from the relief which they seek. If such an argument ever were raised, I for one would give it extremely short shrift. The result of the test was not known until 24^th October, which is less than a week ago, and I think people have moved pretty fast to get this matter before the court.

The urgency in the application was, I do not believe it still is, but it certainly was when it was launched, that HMRC, as they must, were going to return these goods to the importer today or tomorrow. I understand that that might not now be happening, but it will not happen unless they breach the order that I am about to make.

Merck of course know the name of the importer; I do not know it and they are referred to in the heading as a person unknown. The reason that I do not know it is because of Article 12, which prohibits the use of that particular piece of information which HMRC has given to Merck. Although there may be arguments about the precise scope of Article 12, I am persuaded at least for the purposes of this application, that the other information provided by HMRC to Merck is material which they are permitted to use for the purposes of this application. It follows that they, that is to say Merck, can use the fact of the seizure and the fact of the samples and the results of the samples and the photographs, the packaging, to show the court that there is a serious possible case of trademark infringement and for this court then to exercise its Norwich Pharmacal jurisdiction to require HMRC to reveal the information which is sought. One bit of that information will be to identify the importer, whose identity is already known (but not to me) so that the court would be able to make orders against a person known rather than unknown.

Mr Fernando, who has rehearsed some of the policy arguments that he suggests lead to that conclusion, which strike me as probably being correct, but it is unnecessary for me for the purpose of this application to decide them, even on a provisional basis in the absence of contrary argument.

So far as trademark infringement is concerned, there is, in my judgment, a clear prima facie case, it is at least well arguable, that there has been an infringement. There has clearly been no consent from Merck to use these pharmaceuticals in the EEA. There is neither express nor implied consent and that has to be shown in order for use not to be infringing.

The products themselves have come either from Turkey or from Malaysia. The Turkish import (if I can use that word without pre-judging the issue) are in Turkish language packaging and contain no product safety information. The Malaysian imports do contain product safety leaflets in some, if not in all cases, which is in English. But it is clearly directed at the Malaysian market.

It would be inappropriate to allow products with that packaging and limited safety leafleting to be marketed in the United Kingdom. Merck would accordingly have a well-arguable case under section 12(2) to prevent a breach of the trademark. There is a possible argument about the meaning of importing and exporting in the context of an infringement based on import or export. It is at least strongly arguable on the material I have seen that these products which arrived in large boxes or in boxes containing many packages, were to be opened, broken down and in the individual packages posted. If that was to be done in this country, it could not successfully be argued that this was a mere transit case; rather there would be an import and then an export of the allegedly infringing products. It may be that the person unknown importer will be able to give the court a convincing explanation of why that is incorrect, but it seems to me on what I have seen that that is unlikely to be the case. Not least of the problems is for the importer to explain why the labelling on the packages shows an address of an apparently non-existent pharmacy (this is on some of them at least) PO Box 3329, Slough, UK. It cannot be a mistake for Slough in some other country, it is Slough, UK. Complete Care Pharmacy, so far as present researches have been able to ascertain, does not exist. So there seems to me to be a strong prima facie case for establishing infringement.

The balance of convenience, in my judgment, at this stage, for a short period at least, is clearly in favour of Merck. As I have said, there is a strong prima facie case to show infringement and it would be most undesirable to allow these products to be in circulation without proper safety leafleting if that could be properly prevented. There is no way of ascertaining the damage that that could do to Merck if there were infringements of that sort. On the other hand, it seems to me that there can be little, if any, damage suffered by the importer. These goods have been in the hands of Customs for some weeks. A further period is not likely to make any difference to the commercial position of the importer. In any event, Merck is quite clearly good for any damage under the cross undertaking which it will have to give.

Accordingly, I propose to make the order for delivery up to the solicitors to Merck on their undertaking to preserve the goods pending the return date. I will make an order against Revenue & Customs in terms sought in the draft order to supply to Merck the name, address and contact details of the importer, subject, of course, to Revenue & Customs being protected in relation to their costs and expenses.