ACCU CHEK CONSIGNMENT NOT IMPLIEDLY MARKETED IN EEA; LATEST IJLIT

Use of CE mark does not imply consent to resale in EEA

Last Thursday Chancery Division judge Mr Justice Lewison was back in action again, in Roche Products Ltd v Kent Pharmaceuticals Ltd. This gem can be found on both the Lawtel and All England Direct subscription services, but not (yet?) on BAILII. It will however be reported in the European Trade Mark Reports later this year.

Roche, a pharmacecutical company that made ACCU CHEK Advantage II strips for self testing of glucose levels in blood, sued parallel importers Kent for trade mark infringement, seeking summary judgment. Roche alleged that a consignment of goods imported by Kent from France was first marketed in the Dominican Republic on the basis that it would be used exclusively in clinical trials but would not be resold or transferred to other parties. The imported goods bore a "CE" mark (indicating compliance with European Community standards) and bore information and instructions in three European languages.

Kent said argued that the public would regard packaging that bore the CE mark and the use of three European languages as showing Roche's unequivocal consent to the marketing of the consignment within the EEA. Roche submitted that it was the state of mind of the owner that counted, not the state of mind of a section of the public within the EEA.

Lewison J gave judgment for Roche, holding as follows:

* it was plain from the authorities that the court sought a demonstration of actual consent, either express or implied, by the trade mark proprietor to its products being marketed in the EEA -- not deemed consent.

* Roche had not consented to the marketing of the units within the EEA when it supplied them to the third party. The presence of a CE mark on packaging showed that the product had been formally approved for sale and that regulations had been complied with, but this was an issue of quality assurance, not an indication that Roche had consented to the product being placed on the market within the EEA.

* it could not be said that it had been shown that Roche renounced its trade mark rights or that it had impliedly consented to the marketing of the goods within the EEA.

* there was no reasonable prospect that Kent would successfully defend Roche's action.

The IPKat agrees that Lewison J has got it right again. The presence of the CE mark on the products might well be a necessary condition for the marketing of those products, but the fulfilment of a necessary condition is not the same thing as the giving of implied consent to marketing in the EEA.

More on the CE sign here and here


Latest IJLIT

The IPKat's Spring 2006 issue of the International Journal of Law and Information Technology, published quarterly by Oxford University Press, has now emerged. It contains four cracking good pieces:

* Roger K. Baker (ItemPlus Consulting) writes on the application of the EU's 8th Data Protection Principle (“Personal data shall not be transferred to a country or territory outside the European Economic Area unless that country or territory ensures an adequate level of protection for the rights and freedoms of data subjects in relation to the processing of personal data.”) to offshore IT outsourcing;

* Margaret Jackson and Marita Shelly (RMIT University) discuss the Australian view of copyright infringement through "authorisation" - a topic on which Australian and UK courts have taken substantially different views;

* Warren B. Chik (left, Singapore Management University) considers issues relating to communications privacy on that very public medium, the internet;

* Philip Michael Romero (American Professional Safety Trainers Alliance) employs the metaphors of immunology when examining information counter-terrorism;

* Lior Zemer (University of Leicester, soon to be UCL) incites readers to do some serious rethinking of basic copyright concepts.

Full contents and abstracts available here