Boehringer Ingelheim Ltd & Ors v Vetplus Ltd

The Bonnard rule against prior restraint where a defendant proposes to justify an alleged defamation does not, as such, govern a genuine trade mark infringement claim. A comparative advertising claim nevertheless engages freedom of expression. Under section 12(3) of the Human Rights Act 1998, an applicant will normally have to show that it is more likely than not to succeed at trial before publication is restrained.

Commercial and reputational damage alone is not a particularly grave consequence that justifies a lower threshold. An honestly held belief in a damaging comparison does not necessarily make its use of a rival’s trade mark an honest commercial practice if the comparison proves false.

Boehringer and Vetplus marketed competing nutritional supplements for dogs. Vetplus proposed comparative advertising which asserted, in substance, that Boehringer’s Seraquin tablets did not contain the stated level of chondroitin sulphate. Boehringer sought an interim injunction, alleging libel, malicious falsehood and trade mark infringement.

Pumfrey J refused relief in the Patents Court: [2007] EWHC 972 (Ch). Boehringer appealed. The central issue was the correct interlocutory test where a trade mark proprietor sought to restrain comparative advertising which allegedly disparaged its product.

1. Appeal dismissed. Jacob LJ gave the leading judgment. Longmore LJ and Pill LJ agreed that the refusal of an interim injunction should stand.

2. The rule in Bonnard v Perryman [1891] 2 Ch 269, which prevents prior restraint of alleged defamation where the defendant intends to justify it, applies to defamation and malicious falsehood. It does not apply as such to a genuine trade mark infringement claim. The latter protects registered trade mark rights and the goodwill attached to a mark, rather than merely reputation. The judge below was wrong to treat Bonnard as directly governing the trade mark claim.

3. That error did not alter the result. Comparative advertising, although commercial, engages freedom of expression. Section 12(3) of the Human Rights Act 1998 therefore supplied the applicable threshold. Applying Cream Holdings v Banerjee [2005] 1 AC 253, the court should normally be satisfied that the applicant will probably succeed at trial before restraining publication. The ordinary American Cyanamid test did not govern this application.

4. Boehringer had not shown that it was more likely than not to establish at trial that Vetplus’s proposed comparison was misleading or otherwise impermissible. The competing evidence about the CPC assay could not be resolved summarily. The potential injury to commercial reputation was not a particularly grave consequence warranting departure from the normal section 12(3) threshold.

5. Jacob LJ also rejected the submission that a comparative advertiser acts in accordance with honest practices merely because it reasonably and honestly believes its damaging statement to be true when made. If the statement proves false, an advertiser unwilling to compensate the owner of the damaged mark does not thereby obtain the statutory defence. Section 10(6) of the Trade Marks Act 1994 had no separate effect.

• Court of Appeal (Civil Division) — dismissed Boehringer’s appeal and upheld the refusal of interim relief: [2007] EWCA Civ 583.
• High Court, Chancery Division, Patents Court — Pumfrey J refused an interim injunction: [2007] EWHC 972 (Ch).