Glaxo Group Ltd v Rowex Ltd
| Jurisdiction | Ireland |
| Judge | Mr Justice Max Barrett |
| Judgment Date | 25 May 2016 |
| Neutral Citation | [2016] IEHC 253 |
| Docket Number | Record No. 2015 No.2537P. |
| Court | High Court |
| Date | 25 May 2016 |
[2016] IEHC 253
THE HIGH COURT
Barrett J.
Record No. 2015 No.2537P.
AND
Intellectual Property – Infringement of trademark – O. 31, r. 29 of the Rules of the Superior Courts – Discovery of documents – Relevancy and proportionality – Disclosure from third–party – Legal entitlement to procure documents
Facts: The plaintiff had commenced an action for trade mark infringement of the European Union Trade Mark ('EUTM') registered for its Seretide Inhaler against the defendant. The plaintiff contended that the colour and get-up of the AirFluSal Inhaler manufactured by the defendant was so close to the colour and get-up of the Seretide Inhaler that it infringed the plaintiff's EUTM. In the present proceedings, both the parties had filed motions for discovery against each other. The main objection on behalf of the plaintiff was that since the defendant had affiliation with the other company incorporated in Germany, the defendant should have made available all the relevant documentation that was in the possession of not only the defendant but also that other company. The defendant expressed its limitations on the number of corporate entities and individual who would make the discovery and also sought costs for making the relevant discovery.
Mr. Justice Max Barrett granted orders for discovery to both the parties in certain categories while refusing to order discovery in certain other categories. The Court observed that a document to be discovered must be in the power and possession of a party, which implied that the party should have an enforceable legal right to obtain that document without needing the consent of anyone. The Court held that the delegation of functions by large companies to small group members would not always confer the legal right to those members to procure any document that was required of it. The Court, however, held that it would be an abuse of the process of law if a party initially declined to make the discovery of documents on the pretext that those documents were in the possession of the main company, but later on, that party had produced those documents at the trial for reliance. The Court held that where the applicant required that the defendant should produce the documents from a related company (non-party), the applicant should be ready to bear the expenses for the production of those documents. The Court held that under o. 31, r. 29 of the Rules of the Superior Courts, the onus was on the applicant to prove that the relevant documents were in the possession of the third party. The Court found that the plaintiff had failed to satisfy the Court that the discovery of documents from the defendant's main company was required. The Court held that the third-party discovery was not available against the corporate entities that were not a party to the present proceedings. The Court found that there was neither principal-agent relationship nor any delegation of function by the other company to the defendant and therefore, the discovery against that company could not be granted.
Two companies within the Glaxo group have sued Rowex, a company within the Sandoz group. Certain Sandoz group entities incorporated and located abroad have volunteered to make information available to the Glaxo companies that they are not obliged to provide. This offer is made subject to the requirements of local data protection law. The Glaxo companies are not satisfied with what has been offered and have raised their concerns with the court. Separately Rowex is seeking discovery against the Glaxo companies. Both applications are made under O. 31, r.12 of the Rules of the Superior Courts (1986), as amended.
The two Glaxo companies that are the plaintiffs in these proceedings are members of the GlaxoSmithKline group of companies. The Glaxo Group is a global healthcare group engaged in the research and development of a broad range of products in the pharmaceutical, vaccine and consumer healthcare sectors. The first-named plaintiff, Glaxo Group Limited is a company incorporated under the laws of England and Wales and is a wholly-owned subsidiary of GlaxoSmithKline plc, the parent company of the Glaxo group. It is also a trade-mark holding company within the Glaxo Group. The second-named plaintiff, GlaxoSmithKline (Ireland) Limited, trading as "Allen &Hanburys", is a company incorporated under the laws of Ireland. It is another wholly-owned subsidiary of GlaxoSmithKline plc. It is also the Irish marketing authorisation-holder for a number of Glaxo group products and carries out the distribution, sale and promotion of Glaxo products in Ireland.
Glaxo sells a respiratory inhaler for the treatment of asthma and chronic obstructive pulmonary disease known colloquially, and referred to hereafter, as the "Seretide Inhaler". The Seretide Inhaler is what is known in the drugs industry as a "blockbuster" product. This is a term reserved for any pharmaceutical product that had sales of over $1bn globally and has been handsomely surpassed by the Seretide Inhaler which has grossed sales of over $62bn worldwide, making it the fourth best-selling pharmaceutical product of all time. In Ireland it has yielded gross income of €40m, €36m, and €34m in 2012, 2013 and 2014 respectively. Since the Seretide Inhaler was launched in Ireland in 1999, it has been packaged, marketed and advertised, in a purple get-up. Glaxo maintains that it has invested considerable time, effort and money in developing the goodwill and reputation of the Seretide Inhaler and, more especially, the colour purple as a distinctive feature of its get-up. In the 17 years or so since it was first launched in Ireland, doctors and pharmacists have been extensively and consistently provided with a significance amount of Seretide marketing in which the colour purple has taken a central role.
Rowex Limited, a company incorporated under the laws of Ireland, is a member of the Rowa group of pharmaceutical group of companies. It is a joint venture between Rowa Pharmaceuticals Limited and Hexal AG, the latter of which is a member of the Sandoz group of companies. Rowex was established in Ireland primarily to produce and sell medicinal products which have been deemed by the relevant regulatory authority to be equivalent to an original medicinal or "reference" medicinal product. Such products are commonly known as "generic" or "therapeutically equivalent" products.
The proceedings of which the present discovery applications are part relate to claims for:
(a) trade mark infringement of Glaxo Group Limited's European Union Trade Mark (EUTM) 003890126 registered on 19th December 2008 in class 10 of the Nice Classification System for particular shades of the colour people (pantones 2587C and 2567C) applied to inhalers of any shape;
(b) passing off of goods not belonging to, owned and/or licensed by the plaintiffs as and for such goods, in particular by Rowex's use of various shades of purple, including pantone colour 2573C on the packaging, labelling and representation of the AirFluSal Inhaler; and
(c) unlawful interference with the plaintiffs' economic interests by the deliberate introduction, sale, distribution and marketing of the AirFluSal Inhaler on the Irish market, in purple colouring and/or in reckless indifference to the fact that the colour and get-up of the AirFluSal Inhaler were so close to the colour and get-up of the Seretide Inhaler as to constitute an infringement of Glaxo's EUTM and/or passing off and/or were such as to enable Rowex to "piggyback" on the plaintiffs' intellectual property rights in such colouring and get-up.
The EUTM is used by Glaxo on the Seretide Inhaler. The plaintiffs allege, inter alia, infringement of the EUTM on the basis of likelihood of confusion (Type II infringement) and taking unfair advantage and detriment of the EUTM given its reputation (Type III infringement). This is on the factual basis that Rowex launched its AirFluSal Inhaler in Ireland in March 2015, in the colour purple pantone 2573C, a pantone between the two pantones of Glaxo Group Limited's EUTM.
As part of the wider battle between the two sides over the Seretide/AirFluSal inhalers and the use of the colour purple, in August 2014 an application for a declaration of invalidity and a revocation of Glaxo's EUTM was filed with OHIM, now EUIPO, by a member of the Sandoz/Novartis group of companies, of which Rowex is a member. This has recently been followed by a further cancellation action. It is the plaintiffs' position that the EUIPO invalidity/revocation proceedings are a tactical manoeuvre in the context of the overall battle being waged between the parties.
The parties exchanged letters seeking voluntary discovery commencing in the autumn of 2015. Some issues of concern arising for the plaintiffs from that correspondence are the limited definition of the "Sandoz Group", i.e. the corporate bodies that may be the subject of any discovery order. Also of concern to the plaintiffs was a passing reference that had arisen in the correspondence as to the potential constraining effects of German data protection law as regards any discovery that might fall to be made to them. Of concern to the defendant was the form of undertaking that the plaintiffs have sought of it as the "price" for accepting a constrained form of discovery and the proposed limitation on the entities and individuals who would make discovery.
In the discovery-related correspondence between the...
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