Pfizer, Re

At the interim stage, a claimant establishes an arguable trade mark infringement case where goods bearing its mark are imported for onward transmission, even though the goods are genuine. A possible transit defence does not defeat arguability where its factual basis is speculative. Consent requires an unequivocal demonstration that the proprietor has renounced its rights in relation to the intended dealing. Consent by relevant EEA authorities does not itself amount to consent by the trade mark proprietor. An injunction is appropriate where damages would be inadequate for harm caused by distribution without safety information, and the respondent’s loss from temporary detention can be compensated under a cross-undertaking in damages.

Pfizer sought interim relief concerning genuine pharmaceutical products bearing its trade marks. HM Revenue & Customs had detained a consignment imported from Turkey at Birmingham Airport. Some packaging lacked patient information, while other information was in Turkish, and one product might have exceeded its safe-use period.

The claimants sought delivery up of the goods pending the return hearing and Norwich Pharmacal disclosure of the consignor’s identity. The central issues were whether the proposed trade mark claim was arguable, whether the Customs procedure restricted use of information obtained during inspection, whether consent or transit defeated the claim, and whether interim relief was justified.

1. Arguable infringement. The claim was founded on Trademarks Act 1994, section 10, including section 10(4), under which importing or exporting goods under the sign constituted use. Importation from Turkey for onward transmission could therefore amount to infringement, even though the goods were genuine.
2. Customs information. Article 12 of Council Regulation 1383 of 2003 restricted use of particulars supplied under the first subparagraph of Article 9.3 to claims relating to counterfeiting. That restriction did not prevent reliance on information obtained from inspecting the goods themselves. The draft particulars had been framed to avoid using information supplied under Article 9.3.
3. Consent. Applying the approach identified by Neuberger LJ in Roche v Kent Pharmaceuticals, [2006] EWCA Civ 1775, the relevant question was whether Pfizer had unequivocally renounced its rights in connection with the intended dealing. No express consent had been shown, and the possible implied-consent argument lacked sufficient substance. The mark’s indication that the relevant authorities had consented to use in the EEA did not establish Pfizer’s consent. Any implied consent would also not prevent objection where the condition of goods had been impaired after marketing, including by removal of patient information.
4. Transit. The suggested transit defence did not deprive the claim of arguability. Its factual foundation was speculative, and the nature of the consignment suggested that goods might be broken down and reposted to other destinations.
5. Interim relief. Damages would not be an adequate remedy because loss from dissemination without appropriate safety information, and possibly beyond the safe-use period, could not readily be calculated. Conversely, the consignor’s loss from temporary delay concerned a defined consignment and was capable of monetary compensation. Pfizer offered a cross-undertaking in damages and could meet it. Delivery up to the claimants’ solicitors for safekeeping pending the return hearing was therefore ordered. Norwich Pharmacal relief was also granted against HM Revenue & Customs to disclose the consignor’s identity. No discretionary ground justified withholding relief.