Merck & Co Inc

Where goods seized by customs provide a strong prima facie case of trade mark infringement, the court may grant delivery-up and Norwich Pharmacal relief pending the return date. Information supplied by customs may be used for the application where it is material permitted by the applicable customs regulation; information whose use is prohibited must remain protected. In assessing interim relief, the court may weigh the strength of the infringement case, the risk of unsafe or improperly labelled products entering circulation, the likely harm to the importer, and the claimant’s cross-undertaking in damages.

Merck applied for delivery-up and Norwich Pharmacal relief concerning pharmaceutical products seized by HM Revenue & Customs. The products had been tested and were not counterfeit, but Merck alleged trade mark infringement. The importer’s identity was known to Merck but not disclosed to the court because of the restrictions in Article 12 of Council Regulation 1388-2003. The application concerned whether the available customs information established a sufficiently arguable infringement case and justified disclosure and interim control of the goods.

1. Relief granted. The court ordered delivery-up of the goods to Merck’s solicitors, subject to Merck’s undertaking to preserve them pending the return date. HM Revenue & Customs was ordered to provide the importer’s name, address and contact details, with protection for its costs and expenses.
2. Article 12 of Council Regulation 1388-2003 prohibited Merck from using the particular information identifying the importer. The other information supplied by HMRC, including the seizure, samples, test results and photographs of the packaging, was material which Merck was permitted to use for the application.
3. That permitted material established a serious possible case of trade mark infringement and enabled the court to exercise its Norwich Pharmacal jurisdiction to require HMRC to disclose the importer’s identity. The court did not need to decide the wider policy arguments advanced by Merck.
4. There was a clear prima facie case that the products had been used without Merck’s express or implied consent in the EEA. The Turkish and Malaysian packaging and limited or market-specific safety information supported the contention that marketing the products in the United Kingdom would infringe section 12(2). It was also strongly arguable that opening and breaking down the consignments in the United Kingdom for onward posting would constitute import followed by export, rather than mere transit.
5. The balance of convenience favoured Merck. The goods had already been held by customs for several weeks, so a short further period was unlikely materially to harm the importer. By contrast, circulation of products without proper United Kingdom safety leafleting could cause unquantifiable harm, and Merck was able to meet any liability under its cross-undertaking in damages.