SURPRISE DEPUTY JUDGE SCORES HIT IN PHARMA CASE

Yet another coup for Butterworths' All England Direct, which really does seem to be having a good year for picking up odd little IP cases that don't find their way on to other legal information services. This time it's Bolton Pharmaceutical Co 100 Ltd v Swinghope Ltd and others, a Chancery Division decision of Terence Mowschenson QC sitting as a deputy judge. This was all a little shocking to the IPKat, who has not yet had the pleasure of making the deputy judge's acquaintance. Were there no available IP specialist judges or members of the IP bar to serve as deputies, he wonders, or has the judge -- whose initials serendipitously stand for 'Trade Mark' -- seen the light and make his decision to forsake the grubby demi-monde of banking, corporate insolvency and professional negligence for the altogether more wholesome world of IP?

In this case Bolton owned a trade mark for a pharmaceutical product used for the treatment of hypertension which it had acquired from AstraZeneca in September 2004. AstraZeneca had already sold its trade mark rights in Spain to a Spanish company, T. After acquiring the trade mark in the UK, Bolton discovered that the drug was being imported into the UK under its trade mark by Swinghope without its consent. Bolton sued for trade mark infringement, seeking summary judgment. In their defence, Swinghope argued (i) the doctrine of exhaustion, that where a product ius placed in the market of one EU Member State by the trade mark owner or with his consent, there was no trade mark infringement and (ii) estoppel, on the basis that it had took Bolton five months to assert its rights under the trade mark.

The Deputy Judge allowed Bolton's application for summary judgment. He held that

* there was no evidence to support the contention that AstraZeneca was linked to Bolton, or that Bolton and T were in any way linked. This being so, any defence based on the doctrine of the exhaustion of rights had no real prospect of succeeding
(Case C-9/93 IHT Internationale Heiztechnik GmbH and Danziger v Ideal-Standard GmbH and Wabco Standard GmbH C-9/93 applied).

* the new owner of a trade mark does not need to seek out third parties and inform them of its newly acquired rights; that would be inconsistent with s.10(4) of the Trade Marks Act 1994, under which strict liability existed for trade mark infringement. It was also inconsistent with the law of acquiescence. To give rise to an estoppel, Bolton would have had to commit some act beyond mere delay in commencing proceedings, thus inducing Swinghope reasonably to believe that Bolton would not enforce its rights under the mark.

* accordingly, since the defence of acquiescence had no real prospect of success, summary judgment would be ordered.

The IPKat thinks this decision must be right: even a real IP judge couldn't have bettered it. It's just another in the long list of weak or spurious defences raised by parallel importers that can be crossed off the list. Merpel says, is "Swinghope" in any way related to "Swingward", another optimistic -- and often successful -- grey goods pharma importer? The IPKat adds, hang on -- wasn't the Lord Chancellor criticised yesterday (see 'Thursday: what a busy day' blog, item 2), for suggesting that the doors of the judiciary be thrown open so that patent agents and trade mark attorneys could hear family law disputes? Perhaps not being in the inside track has the advantage of freshness ...

Who is Terence Mowschenson QC? Click here, here and here to find out