Smithkline Beecham Plc v Antigen Pharmaceuticals Ltd

• Jurisdiction: Ireland
• Judge: Mr Justice McCracken
• Judgment Date: 25 March 1999
• Neutral Citation: [1999] IEHC 144
• Court: High Court
• Date: 25 March 1999

[1999] IEHC 144

THE HIGH COURT

Record No. 13639P/1998

SMITHKLINE BEECHAM PLC & ORS v. ANTIGEN PHARMACEUTICALS LTD

BETWEEN

SMITHKLINE BEECHAM PLC AND SMITHKLINE BEECHAM (SWG)LIMITED AND SMITHKLINE BEECHAM (IRELAND) LIMITED

PLAINTIFFS

AND

ANTIGEN PHARMACEUTICALS LIMITED

DEFENDANT

Citations:

TRADE MARKS ACT 1996 S14(2)

TRADE MARKS ACT 1963

EEC DIR 89/104 ART 4(1)(b)

UNION V UNION SOLURE 1984 BIE 137

WARNINK V TOWNSEND & SONS (HULL) 1979 AC 731

STERWIN AG V BROCADES (GREAT BRITAIN) LTD 1979 RPC 481

IMPERIAL GROUP PLC V PHILIP MORRIS LTD 1984 RPC 293

Synopsis

Torts

Injunction; passing off; application for interlocutory injunction restraining defendant from passing off its goods as the goods of the plaintiffs and from infringing plaintiffs" trade marks; plaintiff distributes and markets analgesic "Solpadeine"; defendant applied to register an analgesic under the name "Solfen"; registration opposed by plaintiffs; defendant's product on the market for five months; whether serious issue to be tried as to likelihood of association of the defendant's sign with the plaintiff's registered trademark; whether serious issue to be tried as to passing off; whether damages would be an adequate remedy for plaintiff or defendant; whether balance of convenience favoured granting of interlocutory injunction; s. 14(2), Trade Marks Act, 1996 Held: Relief refused Smithkline Beecham PlC v. Antigen Pharmaceuticals Ltd. - High Court: McCracken J. - 25/03/1999 - [1999] 2 ILRM 190

In the present case there is a serious question to be tried as to whether the defendant's product is got up in such a way as to cause confusion in the market place. However, the balance of convenience did not favour the granting of an injunction as forcing the defendant to take its product off the market, in the absence of evidence of actual confusion, would cause enormous loss to the defendant. The High Court so held in refusing the relief claimed.

1 JUDGMENT of Mr Justice McCrackendelivered the 25th day of March 1999

2 This is an application for interlocutory injunctions restraining the Defendant from passing off its goods as goods of the Plaintiffs and also from infringing the Plaintiffs trade marks.

3 The Plaintiffs distribute and market an analgesic which contains, inter alia, paracetamol, codeine, and caffeine, under the name "Solpadeine". They claim it is the leading analgesic sold in Ireland, and has been a market leader for many years. It is sold in three forms, namely capsules, tablets and soluble tablets, and since at least 1990 has been marketed in a red box with the word "Solpadeine" appearing in white type with two yellow lines underneath the word, or part of the word. On the front of the box is a zigzag device in yellow with two white pills appearing on it. Since 1997 the device has been altered so that the zigzag device only appears half way across the box, and then blends into a feature of two capsules, two tablets or two tablets with bubbles coming out of them, depending upon whether the product is being sold in the capsule, tablet or soluble tablet form.

4 In October 1998 the Defendant commenced to market a soluble analgesic in which the active ingredient is ibuprofen, and I am told that it is the first time that ibuprofenhas become available in a soluble form. It is marketed under the name "Solfen" in a box of approximately the same size as that used for the Plaintiffs" efflervescent product, although the design on the front of the box runs horizontally rather than vertically as in the case of the Plaintiff's product. Over half of the front of the Defendant's box has a background of brick red with the word "Solfen" in white. The remainder of the box is an impression of a head which is largely dark blue, and contains a zigzag device across it in yellow which, where it leaves the head, becomes a yellow straight line above the word "Solfen".

5 The Plaintiff's are registered owners of a number of trade marks in class 5 for pharmaceutical preparations and substances, three of which appear to me to be relevant. These are:

6 (1) The word "Solpadeine", registered on 10th March1970.

7 (2) The word "Solpafen" registered on 27th April1993.

8 (3) The zigzag device with two tablets as used on thePlaintiffs" product up to 1997, which was registered on 10th June1996.

9 The trade mark "Solpafen", although registered since 1993, has not in fact been used by the Plaintiffs, but it does still remain on the register.

10 The Defendant has applied to register the word "Solfen" which word has been accepted by the Comptroller for registration, but the registration is being opposed by the Plaintiffs. It should be noted, however, that the word "Solfen" was registered as a trade mark in class 5 by a different owner on 8th October 1986, but that mark was removed from the register on 5th December 1997 because of non-use. Therefore the words "Solpadeine", "Solpafen" and "Solfen" did in fact co-exist on the register for some years. Prior to the Trade Marks Act 1996, this would certainly have militated strongly against an argument that what I might call the re-registration of "Solfen" would amount to an infringement of the other marks.However. section 14(2) of the Trade Marks Act, 1996has introduced a totally new concept into the definition of infringement. The relevant portion of that sub-section reads:-

"A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because:"

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

11 there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trademark."

12 As far as I am aware, this idea of "association" has not been considered by our Courts, but would certainly seem to envisage an extension of the meaning of "confusion" as used in the Trade Marks Act 1963. At this interlocutory stage of these proceedings it is not for me to say there is in fact a likelihood of association of the Defendant's sign with the Plaintiffs registered trade mark, but I do have to determine whether there is a serious issue to...