One registered mark; different territorial proprietors - importers beware!

Author: Julius Stobbs, Registered and European Trade Mark Attorney

The Bolton Pharmaceutical Company 100 Ltd -v- Swinghope Ltd
[2005] All ER (D) 224 (Jul)

This case is yet another one that relates to the parallel importation of pharmaceutical products between member states of the European Union. However, what distinguishes it from any number of other cases relating to this subject matter is that it does not actually involve any repackaging of the product in question.

The case centered on a trade mark, KALTEN, which had been owned by AstraZeneca in a number of countries in the European Union. In September 2004, the UK registration for this mark covering pharmaceutical preparations and substances was transferred to The Bolton Pharmaceutical Co 100 Ltd (Bolton Pharma). Prior to this AstraZeneca had already sold its trade mark rights in this mark in Spain, to a Spanish company. This meant that two entirely separate companies were exploiting the KALTEN trade mark in the UK and Spain in relation to the same pharmaceutical product used for the treatment of hypertension.

Some time after acquiring the trade mark rights from AstraZeneca Bolton Pharma found out that the hypertension drug in question was being imported into the United Kingdom by a number of third parties without Bolton Pharma's consent. One of these companies was Swinghope Ltd. Once these activities had come to Bolton Pharma attention, they sued Swinghope for trade mark infringement, seeking summary judgment. In their defence, Swinghope used two main lines of argument. The first was the doctrine of exhaustion and the second was that Bolton Pharma should be estopped from bringing the action against Swinghope on the basis that it had taken the company five months to assert its rights under the trade mark.

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