Boehringer Ingelheim Kg & Anor v Swingward Ltd.

A trade mark proprietor may oppose the marketing of repackaged parallel imports unless the importer satisfies all five cumulative conditions governing necessity, product integrity, identification, presentation and notice. Reboxing is objectively necessary where strong resistance from a significant proportion of consumers to relabelled packaging substantially hinders effective market access. That resistance may be established from evidence concerning the market generally.

A truthful generic description of genuine pharmaceuticals does not amount to passing off without a material false representation. Notice of intended repackaging must come directly from the importer. For both reboxed and relabelled products, 15 working days will ordinarily be a reasonable period for the proprietor to react.

Pharmaceutical manufacturers brought trade mark infringement proceedings against parallel importers which bought genuine medicines in other EU member states and marketed them in the United Kingdom after reboxing or relabelling them. Some replacement packaging omitted the principal trade mark, while other packaging used a get-up identifying the importer.

Laddie J found substantial market resistance to relabelled pharmaceutical packaging, rejected a passing-off claim, and referred questions to the European Court of Justice. After receiving its answers, he held that the reboxing claims succeeded but the relabelling claims failed. The manufacturers and importers appealed or cross-appealed.

The Court of Appeal determined the issues concerning factual necessity, passing off, notice and prospective injunctive relief. It deferred the disputes about the permissible form of reboxing and relabelling pending a further reference concerning whether necessity governs the detailed presentation of the repackaged product.

1. Disposition. The cross-appeals challenging the rejection of passing off, the refusal of a prospective notice injunction and the finding that reboxing was factually necessary were dismissed. The appropriate notice period was held to be 15 working days. Judgment on the permissible form of reboxed and relabelled products was deferred pending a further reference to the European Court of Justice.

2. Per Jacob LJ, with whom the court agreed, a proprietor may oppose repackaged parallel imports unless all five cumulative conditions derived from the European case law are satisfied. These concern objective necessity, preservation of the product and its instructions, clear identification of the manufacturer and importer, presentation which does not damage the mark's reputation, and prior notice to the proprietor.

3. The judge's finding of widespread and substantial resistance to relabelled pharmaceutical packs was amply supported by market research, internal industry material and evidence from pharmacists. The question was whether prohibiting reboxing hindered effective access to the market or a substantial part of it. Evidence about market resistance generally was legitimate; a separate product-by-product inquiry was unnecessary. The manufacturers' challenge to the finding of necessity therefore failed.

4. The passing-off claim concerning partially de-branded packaging failed. The generic descriptions accurately identified the medicines. The evidence disclosed no material deception of pharmacists or patients and did not establish the alleged representation that the products came from a generic manufacturer selected by the importer.

5. Jacob LJ's provisional view was that necessity governs the decision to repackage, while the detailed presentation is controlled by the requirement that it must not damage the reputation of the mark or proprietor. Condition four is not confined to defective, poor-quality or untidy packaging. On the facts, neither the co-branding nor the partial de-branding was proved to cause reputational damage. Conflicting European and national authority nevertheless prevented the issue from being treated as acte clair, so no final holding was made on the form of the packaging.

6. Notice must be given directly by the parallel importer. Applying the European Court's guidance, 15 working days was reasonable for both relabelled and reboxed products; there was no material basis for allowing only seven working days for relabelled goods. A wider injunction concerning future products was refused because no continuing threat to omit notice had been shown.

1. Court of Appeal (Civil Division): By [2004] EWCA Civ 129, dismissed the cross-appeals on passing off, factual necessity and prospective notice relief; held that 15 working days was the appropriate notice period; and deferred the packaging-form issues pending a further European reference.

2. European Court of Justice: On the first reference, answered questions concerning the effect of repackaging, the specific subject matter of trade mark rights and when consumer resistance makes replacement packaging objectively necessary. No citation for that ruling is stated.

3. High Court, Patents Court: In judgments dated 28 February 2000 and 6 February 2003, Laddie J made findings of fact, rejected the passing-off claim, referred questions to the European Court, and subsequently held that the trade mark claims concerning reboxing succeeded while those concerning relabelling failed. No neutral citation is stated.