Glaxo Welcome UK Lt (t/a Allen & Hanburys) & Anor v Sandoz Ltd & Ors

Disclosure issues in complex passing off litigation should be defined with sufficient clarity for document reviewers and limited to what is necessary to deal with the case justly under Civil Procedure Rules 1998, rule 31.5(7). An issue should not import disputed legal terminology where simpler wording can identify the relevant documents. Evidence of intention may be relevant even though intention is not an essential element of passing off. Where product design develops progressively, disclosure concerning intention may properly extend from the outset of the design process. A goodwill issue may remain in scope where it is confined to relevant indicia and imposes no disproportionate burden.

The claimants brought passing off proceedings concerning the get-up of a generic inhaler product. The sixth and seventh defendants were joined because they had played a significant role in designing, developing and licensing the product. At a case management hearing, the Chief Master determined three disclosure issues concerning intention, goodwill and the date range for searches.

The parties had agreed most search terms, custodians and issues. The remaining questions were whether disclosure should address conscious risk-taking or similarity in product get-up, whether goodwill disclosure should be included, and whether searches should begin in October 2004 or March 2003.

1. Disclosure framework. The court directed the parties to define disclosure issues by reference to the need to limit disclosure to what is necessary to deal with the case justly under Civil Procedure Rules 1998, rule 31.5(7). Issues must be clear and sufficiently precise for document reviewers. The greater the clarity, the simpler, quicker and less costly the review process will be.
2. Intention. Although proof of intention is not essential in a passing off claim, it may be a relevant factor, as recognised in United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513. The disclosure issue should therefore capture documents showing that the defendants knew or had reason to believe that there was a risk or likelihood of confusion, or a degree of similarity or matching between the competing get-ups. The proposed references to living dangerously or sailing close to the wind were not adopted as disclosure terminology because they imported jurisprudence and could be difficult for reviewers to apply. The court nevertheless treated the underlying concept as relevant, following the approach discussed in Specsavers v Asda [2012] EWCA Civ 24.
3. Goodwill. Goodwill was too important to exclude from disclosure altogether. The issue was proportionately confined to documents showing that the relevant trade and public associated the claimants’ products with specified indicia, including colour, shape and packaging. Whether the indicia were to be considered separately and together was not determined.
4. Date range. Disclosure concerning intention was to begin at the outset of the design process, on 1 March 2003, rather than 1 October 2004. The court rejected a precise start date based on evidence describing an alternative design as commencing in October 2004. Product development was likely to have involved a gradual transition, and earlier design work could be relevant to whether the defendants had chosen to live dangerously. No evidence established that the wider date range would impose a disproportionate burden.
5. The costs of the disclosure issues were costs in the case.

This was a first-instance case management decision. The judgment records that, on 3 July 2018, a Deputy High Court Judge vacated the October 2018 trial date and joined the sixth and seventh defendants. The trial was re-fixed for July 2019. The present judgment determined the remaining disclosure issues.