Boehringer Ingelheim KG & Ors v Swingward Ltd

Where an appeal turns on unresolved questions of European trade mark law concerning parallel-imported pharmaceutical products, the Court of Appeal may refer a comprehensive set of questions to the ECJ. The questions are the court’s, not the parties’, and may include matters said to be already answered or partly answered where this may secure a coherent code. The reference may address reboxing, overstickering, necessity, damage to trade mark reputation, notice, burden of proof, proportionality and financial remedies. Pending the ECJ’s answers, the appeals may be adjourned and costs deferred until the reference and overall outcome are known.

These conjoined appeals arose from Chancery Division proceedings before the Hon Mr Justice Laddie concerning parallel imports of pharmaceutical products, including reboxed and overstickered products.

After this Court’s judgment of 5 March 2004, the parties failed to agree a single set of questions for reference to the ECJ and submitted competing versions. The Court had to determine which questions should be referred on the conditions governing repackaging, notice, remedies and burden of proof, and how costs should be dealt with while the reference remained outstanding.

Disposition. Lord Justice Jacob gave the judgment, with Lord Justices Clarke and Kennedy agreeing. Questions were referred to the ECJ, and the appeals were adjourned pending the European result. No order for costs was made at that stage.

1. The questions in a reference are those of the court, not the parties. The submission of two independent sets of questions made the task harder, but no further oral argument was necessary. [1]-[2]
2. There remained substantial uncertainty concerning the rules governing parallel-imported pharmaceutical products. It was therefore appropriate to include questions which might already have been answered or partly answered, in the hope that the ECJ would provide a single comprehensive code. The Court adopted the defendants’ proposals, with shortening and amendments reflecting the claimants’ observations. [5]-[7]
3. The reference covered the conditions identified in Bristol-Myers Squibb v Paranova (Joined Cases C-427/93, C-429/93 and C-436/93), including the necessity of repackaging, the effect of the manner and style of reboxing or overstickering, possible damage to the reputation of the trade mark, notice, burden of proof and the consequences of non-compliance. It also sought guidance on subsequent importations, proportionality and the assessment of damages or profits. [3], [7]
4. The defendants had succeeded on several cross-appeal issues, principally necessity for reboxing and passing off. Nevertheless, given the scale and overall context of the litigation, all costs questions were deferred until the ECJ reference and the overall result of the cases were known. [8]

• Court of Appeal (Civil Division): Following its earlier judgment of 5 March 2004, the Court formulated questions for reference to the ECJ, referred them, adjourned the appeals pending the result and deferred costs.
• Chancery Division: The appeals originated from proceedings before the Hon Mr Justice Laddie. The citation of the decisions appealed from is not stated in the judgment.