Surprise Deputy Guess Scores Hitting Inwards Pharma Case

Yet unopen to other coup for Butterworths' All England Direct, which actually does appear to hold upwards having a adept twelvemonth for picking upwards strange piffling IP cases that don't uncovering their agency on to other legal data services. This fourth dimension it's Bolton Pharmaceutical Co 100 Ltd v Swinghope Ltd as well as others, a Chancery Division conclusion of Terence Mowschenson QC sitting every bit a deputy judge. This was all a piffling shocking to the IPKat, who has non nevertheless had the pleasance of making the deputy judge's acquaintance. Were at that topographic point no available IP specialist judges or members of the IP bar to serve every bit deputies, he wonders, or has the gauge -- whose initials serendipitously represent 'Trade Mark' -- seen the lite as well as brand his conclusion to forsake the grubby demi-monde of banking, corporate insolvency as well as professional person negligence for the altogether to a greater extent than wholesome earth of IP?

In this illustration Bolton owned a merchandise grade for a pharmaceutical production used for the handling of hypertension which it had acquired from AstraZeneca inwards September 2004. AstraZeneca had already sold its merchandise grade rights inwards Kingdom of Spain to a Castilian company, T. After acquiring the merchandise grade inwards the UK, Bolton discovered that the drug was beingness imported into the Britain nether its merchandise grade past times Swinghope without its consent. Bolton sued for merchandise grade infringement, seeking summary judgment. In their defence, Swinghope argued (i) the doctrine of exhaustion, that where a production ius placed inwards the marketplace of i European Union Member State past times the merchandise grade possessor or amongst his consent, at that topographic point was no merchandise grade infringement as well as (ii) estoppel, on the footing that it had took Bolton v months to assert its rights nether the merchandise mark.

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

* at that topographic point was no testify to back upwards the argument that AstraZeneca was linked to Bolton, or that Bolton as well as T were inwards whatever agency linked. This beingness so, whatever defense forcefulness based on the doctrine of the exhaustion of rights had no existent prospect of succeeding
(Case C-9/93 IHT Internationale Heiztechnik GmbH as well as Danziger v Ideal-Standard GmbH as well as Wabco Standard GmbH C-9/93 applied).

* the novel possessor of a merchandise grade does non ask to attempt out 3rd parties as well as inform them of its newly acquired rights; that would hold upwards inconsistent amongst s.10(4) of the Trade Marks Act 1994, nether which strict liability existed for merchandise grade infringement. It was also inconsistent amongst the police of acquiescence. To give ascent to an estoppel, Bolton would accept had to commit unopen to human activeness beyond mere delay inwards commencing proceedings, so inducing Swinghope reasonably to believe that Bolton would non enforce its rights nether the mark.

* accordingly, since the defense forcefulness of acquiescence had no existent prospect of success, summary judgment would hold upwards ordered.

thinks this conclusion must hold upwards right: fifty-fifty a existent IP gauge couldn't accept bettered it. It's merely unopen to other inwards the long listing of weak or spurious defences raised past times parallel importers that tin flame hold upwards crossed off the list. Merpel says, is "Swinghope" inwards whatever agency related to "Swingward", unopen to other optimistic -- as well as frequently successful -- greyish goods pharma importer? adds, hang on -- wasn't the Lord Chancellor criticised yesterday (see 'Thursday: what a busy day' blog, exceptional 2), for suggesting that the doors of the judiciary hold upwards thrown opened upwards as well as so that patent agents as well as merchandise grade attorneys could withdraw heed household unit of measurement police disputes? Perhaps non beingness inwards the within rail has the payoff of freshness ...

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