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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Boehringer Ingelheim Ltd & Ors v Vetplus Ltd [2007] EWCA Civ 583 (20 June 2007) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2007/583.html Cite as: (2007) 97 BMLR 1, [2007] BusLR 1456, [2007] HRLR 33, [2007] Bus LR 1456, [2007] EWCA Civ 583, (2007) 30(8) IPD 30052, [2007] ETMR 67, [2007] FSR 29 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Pumfrey
HC 07 C00710
Strand, London, WC2A 2LL |
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B e f o r e :
THE RT HON LORD JUSTICE LONGMORE
and
THE RT HON LORD JUSTICE JACOB
____________________
Boehringer Ingelheim Limited & Ors |
Appellant |
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- and - |
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Vetplus Limited |
Respondent |
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WordWave International Ltd
A Merrill Communications Company
190 Fleet Street, London EC4A 2AG
Tel No: 020 7421 4040 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
for the Appellant
Desmond Browne QC and Jonathan Barnes (instructed by Messrs DWF) for the Respondent
Hearing dates : 16/17 May 2007
____________________
Crown Copyright ©
Lord Justice Jacob:
The basic facts
[6] Competition between VetPlus and Boehringer is intense. VetPlus appears to have been earlier in this market and is the market leader. Other products (Cosequin, Glycoflex, Flexadin) are also in the market, the first of these also sold by a pharmaceutical company (Schering Plough).
[4] …. Chondroitin is a naturally-occurring material which is extracted from cartilaginous material and purified. Broadly speaking its monomers are disaccharides which differ in their sulphation; and the weight of molecules considered to be properly called chondroitin sulphate range from about 5,000 Daltons, or thereabouts, to 40,000 Daltons, or more.
[5] A natural sample from a particular source would consist of a mixture of molecules of different weights (and therefore lengths) and the mixture will differ depending upon the source. I understand that different sources will yield material not merely with different molecular weight distributions but also with different degrees of sulphonation.
The significance of its chemical nature is that chondroitin is not a homogeneous material. So a test which detects one form of it may not detect another.
[7] … I have seen results, I believe, for all the principal products in the market. In doing these tests or causing them to be carried out, Mr. Haythornthwaite [VetPlus' MD] says that VetPlus used the single assay set out in the United States Pharmacopeia called the "CPC assay". Mr. Haythornthwaite took the view that on several occasions Seraquin failed to comply with its contents claimed on the label, which specified 380 mg chondroitin sulphate per tablet. He made no complaint until tablets from two batches, numbers 326768 and 406774, were tested by VetPlus using the CPC test, no chondroitin was detected in the tablets at all. This assay has subsequently been repeated using the CPC technique on a number of occasions on tablets from these batches. I see no reason to doubt that on each such occasion the same result was obtained, or substantially the same result.
[21] On 1st March, a copy of a proposed advertisement together with a document entitled "Are all chondroprotective joint supplements created equal?", intended to be made available to those accepting the invitation in the advertisement to apply, was supplied to Boehringer's solicitors. This document is called "The report". It is pleaded by Boehringer that the advertisement which refers directly to no manufacturer and no product would nevertheless be understood by the interested public to relate to Seraquin because that product is the only one sold in a box in the United Kingdom. Seraquin's box is of a similar colour to that in the advertisement and it is the only product in the United Kingdom to be sold with a claimed content of 380 mg per tablet.
[22] As a basis for identifying Seraquin as the subject matter of the advertisement, this seems to me to be thin; but I cannot at this stage say that it is unarguable. The real sting comes in the report. I shall read two passages from the report because I think that these are the only passages to which attention really needs to be drawn. The first is a section headed "Label Claims and Purity - Essential for Maximum Benefit" and it is as follows:
"Nutritional supplements are currently not required to conform to pharmaceutical standards of production and therefore purity of raw ingredients and label claim content can vary amongst manufacturers. A simple rule when selecting a joint supplement is to read the labels carefully, look for stated purity, high ingredient levels and a product that has been independently verified to meet stated purity and label claims.
"The level of the components within some joint supplements can vary greatly due to the differing grades of ingredients that are available. Cheaper ingredients of low purity will obviously lead to a cheaper product on the shelf, but not the desired maximum benefit that would be obtained from a product of proven high levels and purity. Chondroitin sulphate is an expensive raw material, with high purity pharmaceutical grade raw material costing approximately five times the amount of glucosamine hydrochloride. As a result, there are a number of poorer quality and low purity chondroitin products on the market, many of which do not achieve label claims.
"Studies to evaluate the components in oral joint supplement products when compared to label claims have found that 40% of Glucosamine products did not meet their label claim (17% containing less than 30% of the claim), and 60% did not meet label claim for Chondroitin. This means that many products will provide sub-therapeutic doses of the required component making it difficult for veterinary surgeons and owners to assess efficacy and to objectively select a proper supplement."
[23] Three published documents are referred to in the conventional manner by way of footnote.
"These studies highlight the importance of selecting a supplement with proven purity and label claim."
[24] Then there is a lengthy discussion of the importance of glycosaminoglycans, of which chondroitin is one, in the formation of cartilage in joints.
[25] What is called the "Back Page" of the report contains a table. The table is divided into eight horizontal rows. It reports, or purports to report, variations in consistency of chondroitin sulphate analysis content in leading joint UK supplements in February 2007. It states that the analysis was carried out to the United States Pharmacopeia methods, that certain of the results contain the average of more than one test on the same batch, and they set out two for VetPlus, which are said to have achieved about 110% to 115% of label claim by this test, and then two of Boehringer's, one of which is said to have contained 85% of label and the second of which is alleged to have achieved 8.69% of label.
[26] Then two products of Schering Plough are set out, both of which contain more than 100% apparently of label claim, and two from Vetoquinol, who make material called Flexadin, equally slightly in excess of 100%.
[27] These results, as far as Seraquin is concerned are a mixture of results obtained by Bioiberica on batch number 768 and VetPlus's own results as well. VetPlus's own results taken between 20th December 2006 in relation to the lower content batch had, with one exception only, been nil. The exception was an 11% reading obtained three times. Their results on batch 773 had been uniformly nil. The whole position from VetPlus's point of view is summarised in exhibit DH10 to Mr. Haythornthwaite's witness statement, which sets out in summary all the tests that had been performed by early February this year.
i) The CPC test had worked to show that, within a reasonable margin of error, all the products tested by VetPlus were within the label claims of the various manufacturers. So in all cases (including earlier tests on Seraquin) save for the batches concerned, the formulation and tableting had not interfered with the reliability of the CPC method.
ii) The evidence of the independent experts Miss Hildreth and Dr Roman suggested that if an error were introduced by the CPC method it would be overstating the amount of chondroitin.
iii) The suggestion that a particular ingredient, curcumin, could give rise to a false CPC reading is far from proved: the presence of curcumin did not interfere with the results for the earlier batches of Seraquin.
"In the interests of freedom of speech, the courts will not restrain the publication of a defamatory statement, whether a trade libel or a personal one, where the defendant says he is going to justify it at the trial of the action, except where the statement is obviously untruthful and libellous."
i) that the rule Bonnard v Perryman extends to alleged trade mark infringement;
ii) Alternatively the court should apply the flexible approach called for by s.12(3) of the Human Rights Act
1998 as expounded by the House of Lords in Cream Holdings v Banerjee [2005] 1 AC 253;
iii) The normal Cyanamid rule does not apply.
The Basis of Trade Mark Infringement
1. Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods or services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Art 5 of Directive 89/104?
Prior restraint and trade mark infringement
The rule prohibiting the grant of an injunction where the claim is in defamation does not extend to claims based on other causes of action despite the fact that a claim in defamation might also have been brought, but if the claim based on some other cause of action is in reality a claim brought to protect the plaintiffs' reputation and the reliance on the other cause of action is merely a device to circumvent the rule, the overriding need to protect freedom of speech requires that the same rule be applied.
Passing off is a wrongful invasion of property vested in the plaintiff; but the property which is protected by an action for passing off is not the plaintiff's proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant's misrepresentation.
The whole of the allegations … complained of by the plaintiffs are true in substance and in fact, and I shall be able to prove the same at the trial of this action by subpoenaing witnesses and by cross-examination of the plaintiffs and by other evidence which I cannot, and which I submit I ought not to have to, produce on an interlocutory application.
Mr Browne told us that in practice the court would accept the assurance of responsible counsel that there was material upon which a plea of justification could properly be advanced. Whether that is really appropriate in a procedural "cards on the table" era is not necessary to consider.
[To Mr Turner] "I resolved the s.12(3) issue against you."
[1] My Lords, theHuman Rights Act
1998 introduced into the law of this country the concept of Convention rights. Section 12 made special provision regarding one of these rights: the right to freedom of expression. When considering whether to grant relief which, if granted, might affect the exercise of the Convention right to freedom of expression the court must have particular regard to the importance of this right: section 12(4). Additionally, section 12(2) set out a prerequisite to the grant of relief against a person who is neither present nor represented. The court must be satisfied the applicant has taken all practicable steps to notify the respondent or that there are compelling reasons why the respondent should not be notified. Further, section 12(3) imposed a threshold test which has to be satisfied before a court may grant interlocutory injunctive relief:
"No such relief [which might affect the exercise of the Convention right to freedom of expression] is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed."
Some flexibility is essential. The intention of Parliament must be taken to be that "likely" should have an extended meaning which sets as a normal prerequisite to the grant of an injunction before trial a likelihood of success at the trial higher than the commonplace American Cyanamid standard of "real prospect" but permits the court to dispense with this higher standard where particular circumstances make this necessary.
Section 12(3) makes the likelihood of success at the trial an essential element in the court's consideration of whether to make an interim order. But in order to achieve the necessary flexibility the degree of likelihood of success at the trial needed to satisfy section 12(3) must depend on the circumstances. There can be no single, rigid standard governing all applications for interim restraint orders. Rather, on its proper construction the effect of section 12(3) is that the court is not to make an interim restraint order unless satisfied the applicant's prospects of success at the trial are sufficiently favourable to justify such an order being made in the particular circumstances of the case. As to what degree of likelihood makes the prospects of success "sufficiently favourable", the general approach should be that courts will be exceedingly slow to make interim restraint orders where the applicant has not satisfied the court he will probably ("more likely than not") succeed at the trial. In general, that should be the threshold an applicant must cross before the court embarks on exercising its discretion, duly taking into account the relevant jurisprudence on article 10 and any countervailing Convention rights. But there will be cases where it is necessary for a court to depart from this general approach and a lesser degree of likelihood will suffice as a prerequisite.
But there will be cases where it is necessary for a court to depart from this general approach and a lesser degree of likelihood will suffice as a prerequisite. Circumstances where this may be so include those mentioned above: where the potential adverse consequences of disclosure are particularly grave, or where a short-lived injunction is needed to enable the court to hear and give proper consideration to an application for interim relief pending the trial or any relevant appeal.
Lord Justice Longmore:
Lord Justice Pill: