In the case of Bolton Pharmaceutical Co 100 Limited -v- Swinghope Limited and Others [2005], the claimant was the new owner of a trade mark registered in respect of a pharmaceutical product which was commonly used to treat hypertension. It acquired the product from AZ, another pharmaceutical company, in September 2004, who had previously sold its trade mark rights to a Spanish company.
The claimant acquired the trade mark in the United Kingdom, and later realised that the product was being imported into the UK by certain third parties, including the defendant, and bearing its trade mark. They had not sought the claimant's consent and the claimant therefore commenced proceedings alleging that the defendants were illegally impinging on its market and as a result, they were causing the claimant 'harm'. The claimant applied for summary judgment.
The defendants argued that:
The doctrine of exhaustion of rights applied, which provided that where a product had been put on the market in a member state by the trade mark owner or with his consent, there could be no question of infringement of that mark; and
Estoppel applied, on the basis that the claimant had failed to assert his rights under the trade mark in the preceding five months. The court held that the claimant's application for summary judgment would be allowed on the grounds that:
"For the doctrine of exhaustion of rights to apply, the owner of the rights in an importing state had to be able to determine the products to which the mark might be applied in the exporting state and to be able to control the quality of the product. That power would be lost if, as the result of an assignment, control over the trade mark was surrendered to a third party which was not economically linked to the assignor. In this case, there was no evidence to support the claim that AZ was linked to either the claimant, or that the claimant and T were linked".
It followed therefore that any defence based on the doctrine of the exhaustion of rights had no real prospect of succeeding1.
The defendant's argument that estoppel should bar the claimant from obtaining the relief sought, was inconsistent with section 10(4) Trade Marks Act 1994, which imposes strict liability for trade mark infringement. The court went on to find that the defendant's argument was inconsistent with the law of acquiescence, which provides that in order for estoppel to apply the claimant must have carried out some act or omission, beyond mere delay in commencing proceedings, which would have led the defendant to reasonably believe that the claimant would not enforce its rights under the trade mark. On this reasoning, the defence had no real prospect of success. The claimant was granted the relief sought.
This is the test that must be satisfied in order for an applicant to obtain a summary judgment.
If you require further information contact us.
Email: enquiries@rtcoopers.com
© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
Rosanna Cooper is a partner in RT Coopers Solicitors a full service law firm in London. The firm specialises in patents, trade marks, copyright, designs, technology transfer, biotechnology and pharmaceutical law. The firm has a flexible approach to fees and provides the highest quality legal advice.
Contact us at enquiries@rtcoopers.com. visit our website at http://www.rtcoopers.com
Private Label Rights Articles: Why Pay For The Same Content Others Have
At first glance, Private Label Rights (PLR) articles seem like a sound investment. If you believe the hype, they allow you to have fresh, exciting content that will drive the search engines ? and the masses ? to your website.
Know Your Rights and Limitations When You Fly
The Transportation Security Administration's ("TSA") mission is to "protect [ ] the Nation's transportation systems to ensure freedom of movement for people and commerce." The TSA, not the airlines, determines what can pass through the secured area of an airport.
Biological Model for Human Intelligence Revealed: Researchers at the Mind Research Network (MRN) in Albuquerque, New
Mexico and the University of C
Researchers Rex Jung at the Mind Research Network (MRN) in Albuquerque, New Mexico and Richard Haier of the University of California at Irvine have devised a testable model of human intelligence comprised of specific gray-matter processing centers and white-matter connections.
What Are Your Rights In A DUI?
It is an unfortunate occurrence, however, in some cases, DUI rights are overlooked when you are arrested and charged for driving under the influence. Overlooking a person?s DUI rights is far too common and we are at a place in society where DUI rights are considered to be generally non-existent.
Knowledge Infusion Leaders to Participate in Expert Human Capital Management (HCM) Panels at Oracle OpenWorld 2007
HCM technology consulting firm brings thought leadership and industry expertise to strategic panel discussions
Peter Cappelli to Give Talent Keynote Address at Human Capital Institute's 2007 Summit
The Human Capital Institute (HCI), a professional association and educator in talent management strategies, announced today that Dr. Peter Cappelli, Wharton professor, acclaimed author, and human capital thought leader, will be a keynote speaker at HCI's second annual National Human Capital Summit, to be held in Phoenix March 19-21.
Private Label Rights Content - Do Disadvantages Come With The Package?
When a fresh batch of PLR content comes to me, either through a membership site or an Internet Marketing offer, I have one immediate constraint: time. The sooner I can produce quality modified (new rather than original), the better chance I have to reach the market quickly.
Domestic Violence Against Fathers, Children Ignored With Rights Violated and Denied All Too Often
Children's rights, father's rights and domestic violence against fathers is all too often ignored by the Judicial Branch of our constitutional Democracy and the need for judicial accountability is now greater than ever. Bill Stoneking's efforts in releasing his first book, "The Diary of a Patient Man, A Father's Struggle" is one man's efforts to address and bring solutions to this problem father's face every day.
The RightThing to Sponsor Human Capital Institute's Recruitment Process Management Track
The Human Capital Institute (HCI), a global professional association and educator in talent management strategies, and The RightThing, an end-to-end provider of recruitment process outsourcing (RPO), announced today that The RightThing will sponsor HCI's Recruitment Process Management education and research track, one of several topics addressed in HCI's Talent Strategy community of interest, a community HCI considers critical to organizations working to leverage human capital.
Motion Filed Naming New Jersey Governor Jon Corzine as Defendant in Action to Correct State Civil Rights Violations that Prevented Minority Ownership
Founder of Renaissance Broadcasting Corporation (RBC), the first African-American owned company in the U.S. to be awarded a license from the FCC to "build" a television station, files a motion in New Jersey State Appellate Court to nullify prior state court orders entered against it, in 27-year old case.