PARALLEL PACKAGING IN COLOUR

In Glaxo and others v Dowelhurst and others the claimants were all companies which made original pharmaceutical products and the defendants were all parallel importers of the claimants’ products from elsewhere in the European Economic Area into the UK. In a complex action involving different types of repackaging of several different trade mark-protected products, the claimants objected to the way in which their products had been repackaged or relabelled without their consent and sued for trade mark infringement. After questions concerning the lawfulness of repackaging and relabelling had been referred to the European Court of Justice, the parties came back to the High Court in England so that Laddie J could decide the issue of liability.

This February Laddie J issued guidance as to how the issue of liability should be dealt with. The defendants subsequently applied to the High Court for a declaration that their packaging, used for two particular drugs, did not infringe any trade mark rights. The claimants argued that the use of colour might provide them with grounds for objection and that, for repackaging purposes, only black and white livery was permissible. It was the defendants’ contention that they were entitled to use any packaging as long as it minimised collateral damage to the claimants’ trade marks.

On 11 July Laddie J allowed the parallel traders’ application. To decide if the packaging was prohibited, one must consider the parallel trader’s livery carried unnecessary trade mark significance which would have an adverse impact on the claimants’ trade mark rights. Laddie J’s original guidance did not actually say that only packaging which did not use colour was permissible. Nor could it be said that all colour, used in any way, had trade mark significance. In this case, the disputed packaging liveries were very simple and there was no reason to suspect they had trade mark significance. No objection could accordingly be taken to them.