Further judgment on parallel imports and repackaging

Boehringer Ingelheim & Ors v Swingward & Ors

High Court - Judgment of Mr Justice Laddie dated 11 July 2003

An ongoing dispute is continuing between the pharmaceutical industry and parallel importers concerning the extent to which importers may re-box branded pharmaceuticals and the manner of re-boxing. On 6 February 2003 Mr Justice Laddie found in favour of the pharmaceutical companies, Eli Lilly, GlaxoSmithKline and Boehringer Ingelheim in relation to most of their complaints concerning the re-boxing of branded products by Dowelhurst Limited and Swingward Limited. Mr Justice Laddie there found that "partial de-branding" being the removal of the manufacturer's mark from the outer packaging only, and "co-branding", being the addition of the importer's own trade marks and housestyles, were both unacceptable. He gave the parties "liberty to apply" in order to return to Court should further guidance be required. The importers made an application following ongoing disputes as to whether certain packaging was acceptable or not.

Mr Justice Laddie considered two packages in this application both being products originally placed on the market by Glaxo and re-boxed by Swingward Limited. One was described in detail and featured a pink and white colour scheme and a distinctive triangle shape. This style of box was also used by Swingward for at least one other product. Glaxo argued that the nature of this re-boxing was objectionable, given Mr Justice Laddie's clear finding in February 2003 that the use of housestyles by importers which are designed to build up brand awareness and reputation are not acceptable. The defendants argued that their use of colour was permitted as it conveyed no trade mark significance and further, that use of colour was generally desirable for safety reasons. In this connection they referred to guidance issued by the Medicines Control Agency (now the MHRA) which had referred to "the judicious use of colour" being encouraged to ensure accurate identification of a medicine.

In a brief judgment Mr Justice Laddie indicated that he did not regard the design of the products in issue as having trade mark significance, saying that "simple colour schemes, in my view, do not carry with them an automatic trade mark impact". For that reason he did not believe that their use interfered with Glaxo's rights and held that there could be no objection. He acknowledged that "the more sophisticated a design, the more likely it is that it will become known as having some trade mark significance".

This judgment raises the difficult prospect of distinguishing between colour schemes which do have trade mark significance and those which do not. Surely the critical question is whether the colour/design scheme is in fact used as an identifier for the importer, regardless of its simplicity or complexity. It is to be hoped that once the application resumes later this year and final judgment is given, further and more practical clarification is provided. If not, the longstanding battles between pharmaceutical companies and importers are set to continue. In any event, Mr Justice Laddie's judgment of 6 February 2003 is subject to appeal which is due to be heard by the Court of Appeal early next year.

For further details please contact Stephen Whybrow at [email protected], Lucy Kilshaw at [email protected] or Zelda Pickup at [email protected] .