Glaxo Group Ltd & Anor v Europharm of Worthing Ltd & Anor

This is an application for summary judgment in relation to one of the issues which arises in a passing off and trade mark infringement action. The claimants are Glaxo Group Limited and The Wellcome Foundation Limited. The defendants are Europharm of Worthing Limited and Eurochem Limited. The defendants have imported from other countries within the EAA pharmaceutical products which had been put on the market there by or on behalf of the claimants under various trade marks of which the claimants are registered proprietors. This is, in other words, a parallel importation case.

In the action the claimants allege that the sale of the goods amounts to an infringement of the rights given to them by virtue of registration of their marks. The defendants plead that their actions can not be prohibited as a result of the application of Community law concerning the free movement of goods. The action therefore involves the same legal issues as arise in the proceedings which were commenced by these claimants, Boehringer Ingelheim KG, SmithKline Beecham Plc and various associated companies against Dowelhurst Limited and Swingward Limited. The latter proceedings, which for convenience I will refer to as the Dowelhurst action, resulted in a trial before me in January 2000, a reference of certain points of law to the European Court of Justice, a judgment of the latter court in April 2002 and a further judgment from me on 6 February of this year.

One of the issues which will arise for determination in the current proceedings is whether or not it was “necessary” for the defendants to repackage various of the claimants’ products in order to gain effective access to the United Kingdom market. The defendants argue that, because I found the existence of such necessity in the Dowelhurst action, there is no realistic prospect of the claimants succeeding on this issue in these proceedings and there is no other compelling reason why it should be tried. For these reasons there should be summary judgment for the defendants on this issue. Hence the current application under CPR rule 24.2.

The claimants raise two objections. The first is technical. The defendants only gave three days notice of this application. The rules require 14 days notice. The claimants acknowledge that courts will frequently give permission to serve short, but they say that the rules are there to control the way in which litigation is conducted and, absent special circumstances, should be adhered to. Since the timing of an application like this is specified by the CPR, the onus must be on the defendants to justify short service. Here the defendants have not attempted to do so.

Mr Arnold QC, who appears for the defendants, responds that permission to serve short should be given because the claimants have not been prejudiced by the failure to give full notice. He also relies on the fact that giving short notice is appropriate because it enabled him to raise the matter at the beginning of the Dowelhurst trial which meant that the claimants were already in court as were their counsel, including Mr Hacon. Allowing the matter to come on at the beginning of that trial avoids the need for a separate hearing with the increased costs that would involve.

I am not convinced that these arguments are sufficient. Each case must be considered on its own facts. The primary question is not whether the application can be dealt with now but whether the defendants have provided any satisfactory explanation for why notice was not given a week earlier. As I understand it, no explanation has been given. The defendants appear to have assumed that they could more or less ignore the provisions of the CPR on this matter. However, it is not necessary for me to decide this application on this basis.

The claimants’ second objection is one of substance. Mr Hacon points out that the ECJ has ruled that the issue of whether it was necessary to repackage or relabel the parallel imported drugs is an issue of fact. He says that there is no question of issue estoppel here because the Dowelhurst action did not involve the same parties. Furthermore he says that, although his clients have lost this issue, at least at first instance, in the Dowelhurst action, they are free to try to put better evidence before the court in this action. Before a different judge with different evidence the outcome might be different. They cannot be deprived of the opportunity of trying to win this issue. I agree. It may well be that if the issue of necessity goes the same way in this case as it did in Dowelhurst, the court will have to consider whether defending it was reasonable in all the circumstances. If it decides that it was not, this may be reflected in any order for costs made. However there is a difference between holding that a plea or defence is so weak that its pursuit should be penalised in costs and prohibiting the party from advancing that plea or defence in the first place. I would only add that it is not said that either party in the current proceedings would be significantly adversely affected by the additional cost involved in having this issue determined at the trial.

In the circumstances I reject this application.