England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice Strand, London, WC2A 2LL Claimants Defendants
		31 July 2003

I. INTRODUCTION.

1. The Claimants apply for summary judgement against the Defendants for infringement of their registered trade marks.

The Parties.

2. The corporate parties are well known in this court. The Claimants are part of a world-famous pharmaceutical group. They and their predecessors in business have invented medical drugs which have saved many lives and have relieved an immense amount of human suffering.
3. The First Defendants are parallel importers of pharmaceuticals: they buy genuine products in a country where the price is lower and sell in a country where it is higher. Frequently, the lower priced products come from Spain, because the authorities in that country administer a low-price policy for medicines. Despite their seeming "off the shelf" company name the First Defendants are a well established concern with 350 employees. The Second Defendant is their managing director and is a majority shareholder in its holding company.
4. There are frequent legal battles between companies such as the Claimants (pharmaceutical originators) and the Defendants (parallel importers). Both sides seek to outdo the other. Each side accuses the other of sharp practice, or worse.

The Complaint in Bare Outline.

5. The Claimants say that they sold certain pharmaceuticals, bearing their registered trade marks, to various parties at low prices on the understanding that they were for use in Africa. Instead of being utilised for this humanitarian purpose the goods were fraudulently diverted to a Swiss company called Horn & Cie. Horn & Cie sold them on to the First Defendants. The First Defendants imported them into the U.K. and sold them to hospitals. Hence the First Defendants infringed the registered trade marks. Furthermore the Second Defendant was the person who saw to it that the goods were sourced from Horn & Cie and put on the market here. Thus he is jointly liable with his company: not in mere virtue of being a director, as such, but because he personally directed the acts complained of.
6. Amongst other relief the Claimants seek an injunction in absolute terms: in other words, the Defendants would breach the injunction and would be in contempt of court if they were to infringe the trade marks again, even inadvertently. The Claimants say it is up to the Defendants to satisfy themselves that any given consignment of goods is legitimate; and if it is not, they act at their peril.

The Defence in Bare Outline.

7. The Defendants point out that these were the genuine goods of the Claimants and were supplied by the Claimants in packaging which was appropriate for the European market. They even bore a European product licence number. There was nothing to advise traders that they were meant for Africa or must not be sold on the European market – not even a sticker. On the facts, the goods were first put on the market within the European Economic Area by the Claimants, and not the Defendants. This is because the Claimants sold and delivered the goods to initial purchasers in France, not Africa. It follows that their trade mark rights were exhausted and they cannot complain, see Trade Marks Act 1994 s.12. Even if that is not so, the court should not exercise its discretion by granting an injunction in absolute terms. It is never possible to be sure about the past trading history of a given consignment of goods emanating from the Claimants, hence an absolute injunction would be a deterrent to legitimate trade.
8. The Defendants also say that there is more to this case than meets the eye, because if these goods really were intended for consumption in Africa it is strange that not even elementary precautions were taken to prevent them being diverted to the lucrative European market, a consequence that was easily foreseeable. And not just foreseeable, but foreseen. That these were medicines intended for humanitarian purposes is, say the Defendants, a sham, intended to deceive AIDS campaigners.

II. THE LEGAL STANDARD.

9. Because this is an application for summary judgement I must direct myself as to the correct legal standard to apply.

The Rule.

10. CPR rule 24.2 provides:

The court may give summary judgment against a … defendant on the whole of a claim or a particular issue if –

(a) it considers that –

…

(ii) that defendant has no real prospect of successfully defending the claim or issue; and

(b) there is no other compelling reason why the case or issue should be disposed of at a trial.

Rationale.

11. A party is entitled to a fair trial. Because a summary judgement deprives a defendant of the opportunity of having a trial, it is not available unless he has 'no real prospect' of succeeding. If he has no real prospect of succeeding, summary judgement deprives him of nothing of substance; and to insist on a full-blown trial would be to inflict inconvenience and delay on his opponent. It would be inconsistent with the overriding objective, which is to deal with cases justly. Dealing with cases justly includes saving expense, avoiding delay and acting in a manner which is proportionate.

Fanciful Defences.

12. However, a fanciful prospect is not enough. For example "it may be possible to say with confidence before trial that the factual basis for the [defence] is fanciful because it is entirely without substance. It may be clear beyond question that the statement of facts is contradicted by all the documents or other material on which it is based": per Lord Hope of Craighead in Three Rivers District Council v. Bank of England [2001] UKHL 16 at §95.
13. This signifies that, whenever there is a conflict between the witness statements of the applicant and the respondent, and the respondent's version, although seemingly weaker, is not fanciful, the latter should be preferred.
14. I apprehend that it also has some significance regarding the doctrine of judicial notice. A court is always entitled to take judicial notice of facts which are so well known that it would be pedantic to require them to be proved in evidence. How does this apply to an application for summary judgement, where it is enough for the respondent to have a case which is plausible, if not necessarily probable? It seems to me that it ought to follow that the Court may, in appropriate circumstances, take judicial notice of propositions which, although not so notorious, meet the lesser standard of what the respondent may conceivably be able to prove at the trial. For example, later in this judgement I shall have occasion to notice the average annual incomes of the countries to which the drugs were supposed to be sent, ascertained by me from apparently reliable sources. Those are not definite findings of fact: they are an indication of what the Defendants may be able to prove at the trial.

If the Evidentiary Materials Are Incomplete.

15. Further, summary judgement is usually applied for before there has been disclosure of documents. An applicant for summary judgement may, within reason, select which of his documents he puts forward for the court's attention; but the procedure known as disclosure of documents compels him to reveal (and indeed to look for) even documents which he would hate to disclose, because they are injurious or fatal to his case. Furthermore summary judgement is almost invariably sought before there has been disclosure of the trial witness statements, let alone any cross-examination of witnesses. Every experienced practitioner has seen cases which looked solid on paper but which came unstuck at or on their way to trial – and rightly so. In the Three Rivers case, what was effectively summary judgement was sought against the claimant; but exactly the same considerations apply, in reverse, where it is sought against a defendant. Lord Hobhouse of Woodborough (dissenting, but not on this point) said at §160:

The difficulty in the application of the criterion used by Part 24 is that it requires an assessment to be made in advance of a full trial as to what the outcome of such a trial would be. The pre-trial procedures give the claimant an opportunity to obtain additional evidence to support his case. The most obvious of these is discovery of documents but there is also the weapon of requesting particulars or interrogatories and the exchange of witness statements may provide a party with additional important material. Therefore the courts have … recognised that they must have regard not only to the evidence presently available to the plaintiffs but also to any realistic prospect that that evidence would have been strengthened between now and the trial.

16. This does not mean that a party can successfully resist summary judgement by suggesting, like Mr Micawber, that something may turn up to save him, though he does not know what: see per Megarry V-C in Lady Anne Tennant v. Associated Newspapers Group Ltd [1979] FSR 298: per Jacob J in World Wide Fund for Nature v. World Wrestling Federation [2002] FSR 504, 515 ("There must be some reasonable basis… It is not enough that something might turn up out of the blue"). The court must be able to see that the prospect is real, not fanciful. For example, "the hope that something may turn up during the cross-examination of a witness at the trial does not suffice. It is of course different if the admissible material available discloses a reasonable prima facie case which the other party will have to answer at the trial" (per Lord Hobhouse, ibid).

If the Law is Uncertain.

17. An application for summary judgement may raise difficult questions of law. This is not the same problem as disputed questions of fact, because the court is supposed to know the law, and if it makes a mistake it can be put right on appeal. Rather, it is a problem concerning proper allocation of judicial resources. As Lord Mackay of Clashfern said in Williams & Humbert v. W & H. Trade Marks [1986] AC 368 at 441:

If on an application to strike out it appears that a prolonged and serious argument will be necessary there must at the least, be a serious risk that the court time, effort and expense devoted to it will be lost since the pleading in question may not be struck out and the whole matter will require to be considered anew at the trial. This consideration … justifies a general rule that the judge should decline to proceed with the argument unless he not only considers it likely that he may reach the conclusion that the pleading should be struck out, but also is satisfied that striking out will obviate the necessity for a trial or will so substantially cut down or simplify the trial as to make the risk of proceeding with the hearing sufficiently worth while.

18. It happens not infrequently that the court cannot dispose of the case without making a reference to the European Court of Justice. Where this is so it is usually better to make the reference after all the facts have been found, unless the court is sure that it is already in possession of all the relevant facts and is sure of those facts to the standard required by CPR rule 24.

III. THE BACKGROUND TO THE PRESENT DISPUTE.

Anti-Retrovirals.

19. Mainly, this case concerns anti-retrovirals: medicaments used for treating patients who are infected with HIV and may have developed AIDS. 'HIV' stands for a range of viruses which are especially dangerous for two reasons. First, the virus mutates very rapidly, so that it is unlikely that a person's immune system will be able to keep up with all of the emerging variants, and so that it is extremely difficult to develop an effective vaccine. Secondly, HIV has a particular propensity for infecting human cells called T4-lymphocites, cells which are an important aspect of a person's immune system. Thus most persons who are infected with HIV, if they are not appropriately treated, eventually succumb to one of many opportunistic infections – diseases which in the ordinary way would be fairly harmless. An untreated person who has developed this stage of the disease – full blown AIDS – becomes weak and at some point loses his or her ability to earn a living or to support or look after a family.
20. However, full blown AIDS may take years to develop and in the meantime the HIV-infected person may in his or her turn infect other persons, for example by sexual intercourse or by sharing hypodermic needles.
21. In order to infect human cells the HIV virus uses a clever trick. Human cells, in order to reproduce, make use of the information contained in human DNA, which is present in the cell. The virus does not contain DNA, but it contains special enzymes that cause the messages in its own genes to produce a kind of Trojan horse DNA, and integrate it into the human DNA. Thus the human cell is led to treat the spurious DNA as if it were part of human DNA, and is fooled into making copies of the virus.
22. The Claimants and their predecessors in business have come up with a cleverer trick. They have devised drugs which supply faulty versions of the building blocks which the virus needs in order to make the spurious DNA. The Trojan horse cannot be built successfully because the planks are subtly defective. Such drugs are known as nucleoside/nucleotide reverse transcription inhibitors (NRTIs). The Claimants are not the only company that makes NRTIs, but one of their predecessors, Wellcome, was the first to do so.
23. It is usual to treat HIV-infected patients with a cocktail of several different NRTIs, usually three, known as combination therapy. If monotherapy were to be employed there would be a risk that drug-resistant mutations of the virus could develop, which would be bad news not only for the patient but for humanity at large.
24. Drugs of this sort cannot properly be used for self-treatment as if they were aspirin. Their proper administration requires skilled medical supervision and so in advanced countries they are never available except on prescription. It has been suggested recently (Brugha, R. Antiretroviral treatment in developing countries: the peril of neglecting private providers. BMJ 2003; 326: 1382-4) that uncontrolled administration of anti-retrovirals, such as may be available in the informal private sector in less advanced countries, may result in the development of drug-resistant HIV. If so, this is an alarming prospect.

Africa: the Claimants Are Accused of Profiteering.

25. At present many parts of Africa are tortured by war, endemic corruption and disease. A serious disease is AIDS, caused by infections of HIV. It is spreading at an alarming rate.
26. Nowadays there are good drugs for treating HIV infections. Not least the Claimants' NRTI drugs Trizivir®, Combivir®, and Epivir®. Such drugs did not arrive just by themselves. Somebody had to invent them.
27. For centuries the manufacturer of medicines has been accused of profiteering because, as Adam Smith pointed out long ago, the public has not always understood that he is charging not for the cost of his materials but for his skill, labour and knowledge^[1]. Nowadays the getting of the 'knowledge' requires the doing of original scientific research. Without it there would be no innovative drugs to sell, and no high prices for critics to complain about. Research of this kind requires a lot of expensive brainpower and costly equipment. Research-based organisations of the calibre of the Claimants must employ large staffs of highly qualified scientists. It is not unknown for some of these to be Nobel Prize laureates. For every new drug that turns out to be effective yet reasonably safe, when tested in the laboratory, very many more are found which turn out to be unsuitable, and cannot be used: the expense is a dead loss. Further, a successful result in the laboratory is but the first hurdle. The next stage is to obtain regulatory approval. This too is enormously expensive. All this makes the business exceedingly risky.
28. Thus innovative, life-saving drugs are sold at high prices, in order to recoup the innovator's investment. There is a relatively limited time in which to do so. When patent protection expires anyone can imitate the drug and sell it far more cheaply. The actual cost of manufacture is relatively low.
29. The high prices at which life-saving drugs are sold expose pharmaceutical companies to much criticism. I suspect that at lot of it is ill-informed, or worse. I have not noticed that many useful drugs have emerged from not-for-profit laboratories. If it were easy they would be doing it all the time.
30. Perhaps nowhere is there more criticism than in relation to the supply of anti-HIV drugs for consumption in Africa. The papers filed by the Claimants in this case suggest that while there are 28 million people in sub-Saharan Africa who have AIDS/HIV, only 30 thousand receive treatment available in the West. The critics protest that this is because the drugs are outrageously expensive – a case of heartless profiteering by rich western drug companies. They say that such drugs should be manufactured for developing countries patent-free, Brazil and India frequently being cited as suitable countries for such manufacture. I suspect that the Claimants are entitled to riposte that there are no drugs patents at all in India, yet that has not prevented the emergence of a very serious HIV problem there (Potts and Walsh. Tackling India's HIV epidemic: lessons from Africa. BMJ 2003;326:1389-92).
31. Criticism is not just vocal. It can take the form of commercial pressure on the Claimants, and lawsuits. For example this year the California Public Employees Retirement System – the largest pension fund in the U.S. – has written to the Claimants asking them what they propose to do about the price of anti-HIV drugs in developing countries and to report back within 3 months. CalPERS owns 20.2 million shares in the Claimants' stock, valued at about $760 million. It did not actually threaten stock divestment in so many words, but is known to have engaged in it in the past. The AIDS Healthcare Foundation has brought three lawsuits against the Claimants.

The Claimants' Humanitarian Programmes – or Otherwise.

32. Perhaps in order to meet or forestall such criticisms, the Claimants have introduced certain programmes. They make certain medicines (particularly anti-HIV medicines) available for use in developing countries at much less than the usual cost. They say, at cost price or slightly higher.
33. A. Before the remainder of this section of my judgement is read, I wish to draw attention to the following circumstances. After my draft judgement was made available to counsel, and indeed as the typographically corrected version was about to be handed down in open court, Mr Leaver QC said that I had made a mistake, and he invited me to suppress the whole of paragraphs 32 to 53 of the judgement. He said that they gave the impression that his clients had misled the court on a previous occasion, and were commercially damaging.
34. B. I accept that my uncorrected judgement did give the impression that on that previous occasion the Claimants had omitted a material qualification which ought to have been before the court, and this I regret. I therefore take the opportunity to correct it where appropriate; and, because I have given the parties permission to appeal, it will be convenient to indicate the corrections to this section by setting them out in italic type, so that the versions can be compared. That said, I do not accede to Mr Leaver's application to suppress this section of my judgement. I believe Mr Leaver has mistaken its purpose. I did not write eight and a half pages of text in order to ventilate an issue that was not before me – whether the court had been misled on a previous occasion – for the Defendants were not making an application in relation to that. What was before me was whether his clients ought to have summary judgement, and whether I was in possession of the whole story at this stage. I shall therefore let it speak for itself.
35. At an earlier stage of this case the Claimants applied for a search order against the First Defendants. The application was supported by an affidavit of Alan Sinclair Cox. It forms part of the evidence before me, and I shall quote paragraphs 17-20 in full:

GlaxoSmithKline appreciates that some of its products and particularly products such as the anti-retroviral products the subject of this action are most needed by the countries least able to afford them. GlaxoSmithKline is one of the companies at the forefront of various schemes to ensure that those drugs are made available in those countries at an affordable and sustainable price. Details of some of those schemes are now produced and shown to me marked "ASC8". It will be noted that they are largely not-for-profit schemes and that in arriving at the appropriate not-for-profit price any contribution to research and development and advertising and promotional expenditure is ignored. Drugs supplied under these schemes are supplied at the basic cost of production. Thus the profit margin for those who can divert them is significantly greater than would otherwise be the case.

In October last year it was reported that a large proportion of drugs (including consignments of EPIVIR, COMBIVIR and TRIZIVIR) intended for French West Africa under these not-for-profit humanitarian schemes were not reaching their target patients. Some may never have left the European Union and much of them went to French West Africa, but were diverted back by unscrupulous profiteers. Now produced and shown to me marked "ASC9" are copies of various press cuttings and press announcements relating to the scandal.

The diversion was first discovered by the authorities in Belgium in or around July 2002 and has been followed up by civil and criminal investigations and proceedings by the law enforcement authorities and/or the Claimant in amongst other places France, Senegal, Holland, Germany and Switzerland.

The criminal investigation in Switzerland has been into a trader in pharmaceuticals named Claude Horn and his company, Horn & Cie. The authorities in Switzerland have within the past few weeks supplied to the Claimant a number of documents which they have unearthed in the course of that investigation. Those documents (some of which are exhibited below) indicate to me that product intended for French West Africa and supplied by GlaxoSmithKline has been diverted, by various intermediaries, and brought into the UK by the Defendants.

Later in his affidavit Mr Cox identifies three of the parties to whom the Claimants had supplied the goods in the first place: L'Afrique aide L'Afrique; Intermed Exportation; and Keren.

36. A. Mr Leaver points out that I ought to have referred to paragraph 23 of the affidavit, and so I shall now do so. It reads as follows::

From the documents available, the Claimant has so far traced three particular consignments of drugs which were supplied by the Claimant for sale outside the EEA, but which have been diverted and ultimately have been supplied to the Defendants. I set out below the paper trails which show the distribution chain in relation to each of these consignments as follows:

A. at paragraphs 24 to 43, I set out the story of the distribution of 100 units of TRIZIVIR, which I believe the Claimant supplied under its not-for-profit scheme, and which Horn & Cie obtained and supplied to the Defendants.

B. At paragraphs 44 to 58, I set out the story of the distribution of 400 units of COMBIVIR, which I believe was not supplied under the not-for-profit humanitarian scheme but was supplied at our normal African wholesale tariff which is slightly higher than the not-for-profit price but significantly lower than our price to wholesalers within the EU.

C. At paragraphs 59 to 74, I set out the story of supplied of EPIVIR, and further COMBIVIR (as well as another drug called SEREVENT), which Horn & Cie supplied to the Defendants, having previously obtained consignments of these drugs which were destined for Congo from a company called Keren.

37. The above-quoted passages suggest that the anti-retrovirals which are the subject of this case, or most of them, were being supplied at cost or slightly higher – at prices appropriate to the African continent. But the proposition needs to be qualified rather heavily. But the Claimants appear to have qualified the proposition rather heavily in their evidence in reply. This was after the Defendants had pointed out that, for example, Keren was a leather goods trader, a surprising choice of customer for sophisticated anti-retrovirals.
38. Thus in the witness statement of Mustapha Karim El-Aloui, who is the General Manager, Pharmaceuticals International zone of West and Central Africa of the GlaxoSmithKline group, it is stated that:

5. In June 2001, GlaxoSmithKline announced a new initiative ("the GlaxoSmithKline Initiative") to supply HIV/AIDS medicines on a not-for-profit basis to HIV/AIDS sufferers in some of the world's poorest and least developed countries ("the Access Countries"). All of the countries under my responsibility at the time were Access Countries. Under the GlaxoSmithKline Initiative, GlaxoSmithKline would supply its HIV/AIDS medicines (including EPIVIR, RETROVIR, COMBIVIR and TRIZIVIR) on a not-for-profit basis to eligible customers in the Access Countries. These customers included Ministries of Health in the Access Countries as well as Non-Governmental Organisations and companies who wished to treat their employees.

6. As General Manager, I would be contacted by those eligible organisations within my region who wished to receive preferentially priced products under the GlaxoSmithKline Initiative ("the Access Customers"). A Memorandum of Understanding would be sent to the Access Customers setting out the intention of the parties to collaborate in order to make HIV/AIDS product available to patients within the relevant territory. Shortly afterwards, a supply agreement ("the Contract") would be sent to the Access Customer for signature. Both the Memorandum of Understanding and the Contract were standard documents provided to me by GlaxoSmithKline's Corporate Headquarters. The Contract was only used for the supply of product under the GlaxoSmithKline Initiative; it was not used for regular supplies to customers for sale and distribution in Africa, such as those to, for example, Keren, Intermed and Uniworld Uganda (see below), even though such products were supplied at prices that were significantly lower than the prices normally found for the same products in the EEA.

39. As will be seen later, of the goods complained of the present case whose initial purchaser provenance can be identified, nearly 99% by volume were supplied by the Claimants to Keren, Intermed and Uniworld Uganda: that is, not as part of the humanitarian scheme. The other 1% or so were supplied to the organisation L'Afrique aide L'Afrique as part of the GlaxoSmithKline Initiative.
40. It is difficult to say much about relative prices, for I have the normal EEA wholesale prices for two drugs only, Trizivir® and Combivir®. However I note that the Claimants supplied Trizivir® to L'Afrique aide L'Afrique at a price of €208.55 per unit (pack of 60 tablets), which is very much less than the normal French wholesale price of €800.10. About a quarter of the regular price.
41. In contrast, they sold Combivir® to Intermed at a unit price of FF 1600 (i.e. €243.92 at the then prevailing rate of exchange) whereas the regular French wholesale price was €343.06. That was about 70% of the regular price, and comparable or higher prices were charged to Keren. While this is still a substantial reduction, it is not in the same league. It seems to me that the Defendants may be able to show that sales to Keren, Intermed and Uniworld Uganda were normal commercial sales.
42. In that regard I also note as follows. First, in the case of the non-Governmental Organisation called L'Afrique aide L'Afrique there was indeed a Memorandum of Understanding and a Contract, which prescribed that the goods were not to be used outside Africa, nor sold to anyone without the Claimants' consent. No such documents are produced in respect of the other three consignees namely Keren, Intermed or Uniworld Uganda and for all that appears they never existed. Those three consignees were free to re-sell at any price they could get.
43. Secondly, what are we to say about the sort of prices that were charged to those other three? I take examples at random. Epivir was sold to Keren at FF 964 ($137.68) per unit, Combivir for as much as FF 1954 ($281.59). The documents show that the standard dosage for each of the anti-retrovirals in question is 2 tablets a day. Since each container holds 60 tablets, there is enough for about a month's treatment. So we can work out the approximate cost for a year's treatment at the above prices, expressed in U.S. dollars, namely $1650 (for Epivir) and $3380 (for Combivir).
44. While not making a definite finding of fact, it seems to me that the Defendants are likely to be able to show that sums of that sort were well beyond the means of the average citizen of the supposed country of destination, in this case Congo (Brazzaville). According to the BBC's website (country profiles) that country had an average annual income of $640 (World Bank, 2001). But that, of course, would be to presuppose that Keren would somehow get the medicine into the patient's mouth at no extra charge. In fact, there was no contractual or other restriction which would prevent Keren, a commercial concern, from adding as much mark-up as it liked. Note also that the papers in this case show that Epivir contains a single active ingredient i.e. it cannot be used by itself for combination therapy.
45. Other examples serve to make the same point. Epivir was sold to Uniworld Uganda at, for instance, FF1600 a unit. That is equivalent to a cost of $2820 for a year's supply of the drug for a patient. The country of supposed destination was Congo (Kinshasa), a country which had an average annual income of $80 according to the same source. Even if the average citizen spent his annual income on Epivir, and nothing else, it would take him 35 years to come up with the cost of just a year's treatment. Likewise, Combivir was sold by the Claimants to Intermed at a price equivalent to $2660 for a year's treatment. The supposed country of destination was Chad, which had an average annual income of $200 according to the same source. In each case the customer of the Claimants could be expected to add a substantial mark-up to cover his own profit.
46. It therefore seems possible to me that the Defendants may be able to show that the sort of prices the Claimants were charging Keren, Uniworld Uganda and Intermed bore no relation whatever to the sort of sums the average citizen of the supposed country of destination could afford to pay. Of course, I am aware that income is not distributed evenly in West Africa, any more than elsewhere. So it is well possible that a small but wealthy minority could afford it. Also, it is not inconceivable that the cost would be borne by a charity or similar organisation in the supposed country of destination – though there is nothing in the evidence which suggests that the Claimants made any arrangements with the above-named customers which would cause the medicines to be targeted in such direction.
47. How did the Claimants come to choose such customers? Mr El-Alaoui in his witness statement gives the flavour. He says:

Keren was a customer first introduced to me in December 2000 via the Glaxo Wellcome Export department in the UK. GlaxoSmithKline supplied medicines, including HIV/AIDS products to Keren from the end of 2001 to some time in mid 2002 when supplies to this customer were terminated… The orders placed by Keren always clearly stated the final destination of the product in Africa: namely Congo Brazzaville.

I did not know the identity of Keren's customers in Congo Brazzaville, simply that they had customers there. I would not have expected them to identify them to me. They would have been concerned that we would cut them out of the chain and deal with their customers direct. The only time I met anyone from Keren was in May 2002 when I met Katherine Koubi, Managing Director of Keren, in Paris…

Intermed was a customer of GlaxoSmithKline, and had been for a number of years. From 2001 GlaxoSmithKline supplied medicines, including HIV/AIDS products, to Intermed for sale in Chad… The orders placed by Intermed always clearly stated the final destination of the product in Africa: namely Chad…

I cannot now remember how contact was first established with [Uniworld Uganda Limited]. It would have been in or around February 2000… However, I do know that Uniworld Uganda Limited ("Uniworld") at all times represented to me that they wanted to buy products from Glaxo Wellcome for sale and distribution in the Democratic Republic of Congo ("DRC").

48. Thus it seems possible, indeed likely, that the Defendants will be able to show that sales by the Claimants to Keren, Uniworld Uganda and Intermed Export were normal, commercial sales to parties at arm's length who, in their turn, would be expected to re-sell at a profit, again to parties at arm's length .
49. I feel bound to remark that when I first read the papers in this case, I was surprised. I wondered why the Claimants had been supplying these medicines to commercial organisations (some of them scarcely known to Claimants) in standard, European packaging, without taking any precautions to see that the medicines really did arrive in, and stay in, West Africa. In my experience it is by no means unknown for medicines, supposedly destined for Africa, to be diverted to Europe. I wondered how the possibility could have escaped the attention of the Claimants, and why they did practically nothing to prevent it happening.
50. Here were large quantities of goods, extremely valuable in Europe, being sold at low prices ostensibly for Africa. There was a fortune to be made by somebody if he sold the goods on to Europe, and not to Africa. Therefore, as with any consignment of valuables, say bullion or diamonds, you would expect stringent precautions to be taken to prevent their diversion. None were. The goods were delivered to the initial purchasers in precisely the same packaging as would be usual for French-speaking Europe, complete with trade marks and European product licence number. Not just that, but hardly any enquiries worthy of the name were made before consigning the goods to some of the initial purchasers. Take Keren, one of the principal consignees. They had no secure track record as pharmaceutical wholesalers, and were, in fact, a leather goods concern. In most cases there was not even an express contractual prohibition – to stop the initial purchasers from selling the goods in Europe. So far as I can see no or few meaningful steps were taken to check that these anti-retrovirals were, in fact, being used to treat patients in Africa.
51. According to the Claimants, costs had to be kept low and red tape minimised, which is why the goods were supplied in their normal European packaging in the French language (French and an EMEA licence being readily acceptable to the authorities in Francophone Africa). Also, because the Claimants did not have a proper distributive structure in French West Africa, they chose to sell to parties whom they believed to have practical expertise in trading or dealing in that part of the world.
52. I am not satisfied, to the standard required for summary judgement, that the above explanation is necessarily the whole story. When a product is sold at (say) 1600 FF for a pack of 60 tablets, it would seem probable that the cost of packaging is small in comparison. But in any case it is the Claimants' evidence that they have been supplying anti-retrovirals, not just for the countries I have mentioned so far, but for a much larger number of undeveloped countries. The total volume was substantial, and it seems to me that the simplest way of preventing such products from being diverted to the lucrative western markets would be to dye the tablets with a different colour. Medicinal tablets are normally manufactured on high-speed tabletting machines, and normally comprise the active ingredient, the excipients (chalk or other inert substances), and an optional dye. The fact that the tablets did not possess the normal colour, usual in western countries, would serve to alert potential buyers in those countries. I find it hard to believe that it was out of the question, or uneconomical, to take this elementary precaution. At any rate, I am not satisfied to the contrary, to the standard required for summary judgement.
53. If that is wrong, an alternative precaution, which the evidence shows to have been adopted by another pharmaceutical manufacturer, would have been to have defined and published batch numbers exclusively allocated to goods intended for countries of destination which are underdeveloped. The batch numbers could be audited on a confidential basis, and so parallel importers would have an easy and reliable method of checking – and scant excuse if they got it wrong.
54. Mr Burkill QC, who appeared for the Defendants, urged that the Claimants' disclosure of documents was incomplete at this stage. He invited me to hold that the whole thing could have been a sham, the real object of the Claimants being to be able to claim, for essentially political reasons, that they, the Claimants, were supplying large quantities of anti-retrovirals to poor West African countries. He submitted that it might well be found at the trial that the Claimants knew perfectly well that their customers were probably going sell these medicines for European use. From this premise he invited me to hold that it was arguable that the Claimants had consented to what, in the event, did happen: the sale and consumption of the medicines in Europe.
55. That last notion was ridiculed by the Claimants, who asked rhetorically why they should wish to undermine their own market in Europe. This may be a telling point, but I am not satisfied that it is necessarily conclusive. For example, the Claimants are not controlled by a single human brain – not even as a legal fiction. Different departments or functions may be controlled by different people. It is conceivable that the persons in charge of exports to West Africa had their own quotas to fulfil: provided those were achieved, they might care little for the after-consequences in Europe. It seems to me that those are matters properly to be explored at the trial.
56. At this stage I do not know what to make of the Claimants' motives. However, insofar as any question of consent is concerned, I am satisfied that none was unequivocally demonstrated by the Claimants' actions in this case. See the reference to the Zino Davidoff case, below.

IV. FURTHER DETAILS PERTINENT TO ALLEGED TRADE MARK INFRINGEMENT.

The Registered Trade Marks.

57. The goods with which I am concerned were drugs called Trizivir®, Combivir®, Epivir® and Serevent®. The first three are anti-retroviral drugs, used for treating HIV infections; the last is a respiratory drug. Each of those words is registered as a trade mark in respect of such drugs. The validity of the trade mark registrations is not in dispute.

The Defendants' Importations.

58. It is not disputed that the Defendant company purchased from Horn & Cie, a Swiss company, large quantities of anti-retroviral drugs and a more modest quantity of the respiratory drug. The Defendants imported them into the UK. The goods bore, respectively, the registered trade marks I have mentioned.

The Ultimate Source of the Goods.

59. Nor is it disputed that the self-same goods were manufactured by the Claimants in Ware, Hertfordshire. They were sold to various purchasers and I shall examine the circumstances in more detail later. In order for the goods to be delivered to those purchasers, they were first sent to a GlaxoSmithKline distribution centre at Evreux in France. From there they were sent to various destinations, as will further be described.

An Important Issue of Fact.

60. When the Claimants sold and delivered the goods to the initial purchasers, were they at that moment put on the market inside or outside the European Economic Area? The Claimants say the latter: the Defendants say the former. It is accepted that if the Defendants are right on this point they must win, such being the effect of European trade mark law (see below).

The Presentation of the Goods.

61. The First Defendants bought the goods in the same containers as they were in when they left the Claimants' warehouse: packs or bottles each containing 60 tablets. Thus they not only bore the trade marks, as applied by the Claimants, but were presented in the same way as the corresponding drugs which the Claimants regularly sold for consumption in Europe. The wording on the packages or bottles and on the accompanying leaflets was in the French language. They bore an EMEA licence number. Medicines cannot be sold in Europe unless they are authorised by the appropriate regulatory authorities and in this case the authority was EMEA: the European Medicines Evaluation Agency.
62. The First Defendants wanted to sell these goods to hospitals in this country. This required the packaging and leaflets to be in English. Hence, when the First Defendants won a hospital contract, they re-packaged the goods accordingly, but using the same trade marks. In general, this procedure is allowed by European trade mark law. (If it were not, pharmaceutical goods could not be marketed across language frontiers in the European Economic Area). The Defendants kept records of the batch numbers of the repackaged products, as is required by law.
63. In some instances the First Defendants failed to win hospital contracts. In those cases they sold the product on to other parties, without re-packaging. The law did not require them to keep records of the batch numbers, and the Defendants say they did not do so.

Side Issues.

64. The Claimants suggest that the Defendants knew or suspected that they were dealing with improperly diverted goods. The Defendants deny this. They say that, irrespective of the prices charged by the Claimants to the initial purchasers in this case, the prices at which the goods were offered to the Defendants by Horn & Cie were not unduly out of line. I believe that the parties eventually accepted that I cannot decide this issue on an application for summary judgement: anyway, I so hold.
65. In Europe the trade in medicines is subject to regulation in the interests of the protection of public health. The Claimants contend that the Defendants bought and sold the goods in question contrary to the regulatory provisions in force. Had they complied they would not have bought from Horn & Cie because it was their duty to purchase from none but those who were holders of a distribution authorisation or who were exempt. Horn & Cie were neither authorised nor exempt. The Defendants contend that, because the products in issue are subject to a centralised authorisation issued by the European Medicines Evaluation Agency, they (the Defendants) were not required to obtain a licence of their own or to submit to the authorities a list of approved suppliers. They now do not dispute, for the purposes of the present application, that Horn & Cie had no distribution authorisation for supplying the goods to wholesalers in the UK such as themselves. They say that they had done business with Horn & Cie for many years: they were on their list of approved suppliers. They suggest that any breach was somewhat technical, because Horn's associated French company Ouest Repartition was fully licensed and could lawfully have supplied them.
66. It seems to me that questions about product authorisation have no direct relevance to trade mark infringement. (They may be relevant to the scope of injunctive relief.) That there was or was not a breach of the regulatory provisions concerning the distribution of medicines does not, of itself, establish trade mark infringement or a defence thereto. Depending on what is the correct view of the law of trade marks, it may be a relevant part of a wider factual matrix which underlies the question: were the goods first placed on the market in the EEA by the Claimants, or by the Defendants? But, if that is indeed the law, the investigation of that factual matrix is not suitable for an application for summary judgement.

Links in the Chain.

67. Altogether there were 16 consignments of the trade marked goods which were sold by Horn & Cie to the First Defendants. As regards 11 of these the Claimants have built up a formidable paper trail. It satisfies me that these consignments were shipped by the Claimants to purchasers I shall call Keren; Uniworld Uganda; Intermed; and L'Afrique aide L'Afrique. Those purchasers sold them on to Horn & Cie, directly or indirectly. In at least some instances Horn & Cie placed orders in the market before the Claimants had actually delivered the goods to the initial purchasers. It is by no means certain that some of the goods ever got to Africa at all.
68. As regards the remaining 5 consignments the Claimants are, at present, unable to complete the paper trail. This is because the Defendants have not provided the corresponding batch numbers because, as already explained, they have no records of these. (As already noted, the Defendants were the subject of a search order at an earlier stage of the case, so what they say is not implausible.) The Claimants do not accept the Defendants' account. I cannot resolve that particular dispute on an application for summary judgement. I do not know where the Claimants first put them onto the market or precisely in what circumstances. The Claimants have submitted that from the proven circumstances of the 11 transactions I can infer the circumstances of the other 5. I do not think I can properly do so on an application for summary judgement: even in the case of the 11, the circumstances were not uniform (see below).

Countries of Supposed Destination.

69. According to the Claimants, the initial purchasers told them that the medicines were intended for delivery to certain West African countries. Those countries were, variously: Chad; Congo (Kinshasa); Congo (Brazzaville); and Senegal. I shall now tabulate the consignments by initial purchaser.

(a) Keren.

CONSIGNMENT #6 #7 #11 #12

PRODUCT Epivir Combivir Serevent Combivir Combivir

QUANTITY 500 400 500 500 500

SUPPOSED DESTINATION Congo (Brazzaville) Congo (Brazzaville) Congo (Brazzaville) Congo (Brazzaville) Congo (Brazzaville)

70. The Claimants' invoices show that the purchasers were "Keren, 35 Rue Pastorelli, 06000 Nice, Congo". Despite the reference to Congo, it is accepted that this is an address in France and I do not believe it to be disputed that Keren are a French company. The consignee was "Egetra, Zone de Fret No. 5, CTR Logistique Aerien Sogaris, BP 10444, 14 Rue Belle Borne, 95 705 Roissy CDG, France". This was Keren's forwarding agent. The port of loading was Paris CDG and that of discharge was Brazzaville. The terms of business were: payment in advance, FCA Roissy Charles de Gaulle.
71. Mr Leaver QC, who appeared for the Claimants, helpfully produced a document headed "Extracts from Preambles to Incoterms 2000 from ICC website", explaining the terms FCA, CIF and so forth. "FCA" (Free Carrier At) means that the seller delivers the goods, cleared for export, to the carrier nominated by the buyer at the named place. "Carrier" means any person who, in a contract of carriage, undertakes to perform or to procure the performance of transport by rail, road, air, sea, inland waterway or by a combination of such modes. If the buyer nominates a person other than a carrier to receive the goods, the seller is deemed to have fulfilled his obligation to deliver the goods when they are delivered to that person. In Zenziper Grains and Feed Stuffs v. Bulk Trading Corporation Ltd [2000] EWCA Civ 307, 6 December 2000, Potter LJ summarised the matter thus:

The FCA i.e. "Free Carrier At" terms are designed to be used when (a) the place of delivery is in the country from which the goods are to be exported and not the country of destination, (b) it is the seller's responsibility to arrange and pay for export of the goods and (c) it is the buyer's responsibility to arrange carriage to the country of destination and to import the goods.

72. It therefore appears that the Claimants would fulfil their obligations to Keren by delivering the goods to Keren's agent Egetra at Charles de Gaulle airport, Paris, and by clearing them for export; but that it was the responsibility of Keren to arrange carriage to Brazzaville and to import the goods into Congo Brazzaville.
73. Mr Leaver QC contended that it was a consequence of an FCA contract that not only was it Keren's burden to import the goods into Congo Brazzaville, it was also a binding contractual duty owed to the Claimants. I am not sure about that. No authority to that effect was cited to me, and it seems possible that, for present purposes, the function of an FCA contract is merely to allocate the different roles which the parties are to play if the goods are to get from their point of origin to the desired destination. In other words, it may be that if the buyer should be content to accept a more onerous role than he is required to play under the contract, there would be nothing to stop him from instructing his carrier or forwarding agent to re-direct the goods to another destination, meeting any extra cost out of his own pocket.
74. A more telling point, which does not arise from this being an FCA contract, is that it was to be implied from the surrounding circumstances that the goods should be taken to Congo (Brazzaville), and not to Europe. This is because the price was substantially less than the regular, European price, from which (say the Claimants) it would have been obvious to the parties that no European destination could have been contemplated, or permitted. To which the Defendants riposte that, if so, it is surprising that no such prohibition was set forth in writing or even, so far as appears, orally. They add that any alleged mutual understanding between the Claimants and Keren is open to some scepticism.
75. For reasons that will appear later, I do not find it necessary to resolve this particular controversy.

(b) Uniworld Uganda.

CONSIGNMENT #1 #2 #3 #4

PRODUCT Epivir Epivir Epivir Epivir

QUANTITY 2000 1000 1000 1000

SUPPOSED DESTINATION Congo (Kinshasa) Congo (Kinshasa) Congo (Kinshasa) Congo (Kinshasa)

76. The Claimants' invoices show that the purchasers were "Uniworld Uganda Limited, African Mall, Plot 3, 7808 Snay Bin Amir Street, Kampala, Uganda". The delivery point was "Barbiero", with an address at Le Blanc Mesnil, France. The contract was "FCA Le Blanc Mesnil". The place of loading appears to be Evreux in France, the port of discharge was Kinshasa, and the country of final destination was stated to be "Rep Dem Congo".
77. Hence the facts appear to be of the same order as in the case of Keren, see above.

(c) Intermed.

CONSIGNMENT #8 #10

PRODUCT Combivir Combivir

QUANTITY 400 200

SUPPOSED DESTINATION Chad Chad

78. The Claimants' invoices show that the buyer was named as "Intermed Exportation, Za les Plantades, 375 Avenue Saint Just, 83130 La Garde, France". The consignee was "AFSA Aeroport Marseille, Zone de Fret, 13728 Marignane Aeroport, France". That is, of course, Marseilles international airport. The contract was "FCA Marignane Aeroport", the post of loading was Marseille, the port of discharge was Ndjamena (which is, of course, the capital of Chad) and the stated country of final destination was Chad.
79. Again the facts appear to be of the same order as in the case of Keren, see above.

(d) L'Afrique aide L'Afrique.

CONSIGNMENT #16

PRODUCT Trizivir

QUANTITY 100

SUPPOSED DESTINATION Senegal

80. In this instance the facts are markedly different. This time the contract was "CIP Dakar", and the consignee was "Saga Air, Valle de Seine, Aeroport de Rouen, 76520 Boos, France". A letter was produced from the director of Saga Air, the truth of which I accept, as follows:

I confirm that Saga Air acts as forwarding agent for GlaxoSmithKline Export in Evreux, forwarding pharmaceutical products to various African countries, including Senegal. Saga Air has never acted as a forwarding agent for L'Afrique aide L'Afrique. [Emphasis supplied.]

81. Thus, in my judgement, the facts are of the same order as if the Claimants themselves had sent these particular goods from France straight to Senegal. The purchasers were named as "L'Afrique aide L'Afrique, Cabinet de l'Ambassadeur Itinerant, Face Presidence de la Republique", of Dakar, Senegal. As already mentioned in this judgement, there was a Memorandum of Understanding and a Contract. (In fact, it was the Second Defendant Mr Taylor who managed to get hold of a copy of this contract for the purposes of the case.) According to Clause 6, the Purchaser undertakes not to sell the Products to any other party without the written consent of the Claimants. It also undertakes "under all circumstances, not to sell, place on sale or market the Products outside the Territories", meaning Senegal, Guinea and Mali. According to Clause 7 the Purchaser undertakes not only to maintain detailed and accurate records of the movements of all Products "up to the moment when the Products are given to a person living with HIV within these Territories", but to grant access to the Claimants to those records on request. The Purchaser agrees not to re-package (Clause 11), and the Claimants are entitled to terminate the Contract immediately "in the event that GSK, at its sole discretion, believes that a fraudulent conversion, private sale or sale for profit has taken place" (Clause 13).
82. The Defendants relied on Clause 14, according to which, "notwithstanding any indication to the contrary contained in these presents, no term of this agreement shall prevent the Purchaser from selling any product … in any form and for any price, to the United States of America [or to the EEA], except in the event that patents or trademarks owned or controlled by GSK, in respect of the United States of America or any other country, do not permit such sale", as to which no licence was to be implied. However, as explained in the evidence of Mr Roberts, an American lawyer, the purpose of this Clause was to take care not to offend national competition laws – in particular, I gather, American anti-trust law. This was to be achieved by emphasising that it was not contract law which would prohibit importations into places like the U.S.A. and Europe, but intellectual property law. I am familiar with this approach – it is favoured by American lawyers for anti-trust reasons – and I accept that on its true construction such was indeed the effect of the Contract.
83. All this is in striking contrast to the cases of Keren, Intermed Export and Uniworld Uganda Limited.

(e) Initial Purchaser Unknown.

84. I have already explained how this arose.

CONSIGNMENT #5 #9 #13 #15

PRODUCT Epivir Combivir Combivir Trizivir

QUANTITY 2000 2000 494 1

SUPPOSED DESTINATION ? ? ? ?

85. I am not prepared to infer anything more about the above consignments. How do I know that they did not fall within the Keren class, as opposed to the L'Afrique aide L'Afrique class?

V. LAW OF REGISTERED TRADE MARKS.

86. The primary issue between the parties is whether the trade marked goods were first put on the market in the European Economic Area by the Claimants. If they were, the Defendants are entitled to succeed.

Principles not in Dispute.

87. A validly registered trade mark confers certain exclusive rights on its proprietor. One of these is that he is entitled to prevent all persons not having his consent from using in the course of trade any sign which is identical with the trade mark in relation to goods which are identical with those for which the trade mark is registered. This includes importing the goods under the sign. The foregoing are stipulated in Article 5 of the Trade Marks Directive (89/104/EEC).
88. If the Directive had stopped there it would have paralysed a great deal of trade between member states of the Community, because not even the genuine goods of the proprietor could have crossed national frontiers. It would have been contrary to the Treaty provisions about the free circulation of goods. Accordingly Article 7, as amended, provides that the trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been 'put on the market' in the European Economic Area under that trade mark by the proprietor or with his consent^[2]. The proprietor's right in that parcel of goods is said to be 'exhausted'. Those goods are now in free circulation and he cannot use registered trade mark law to oppose further dealings in same. Because of local price differences within the EEA it may suit somebody – a parallel importer – to engage in this trade.
89. If the proprietor puts the goods on the market outside the EEA, or consents to that being done, and that is all, the case is not within Article 7. So if a parallel importer purchases the goods, then sells them here, he infringes the registered trade mark. He is invading the exclusive right stipulated by Article 5 and is not exempt by Article 7. This is so even though the trade mark tells no lie: even though these are the genuine goods of the proprietor.
90. But what if the proprietor should put his goods on the market outside the EEA in packaging that carries no warning – that they are not supposed to be sold within the EEA? It is possible, indeed sometimes easily foreseeable, that they may circulate through trade channels and eventually arrive back in Europe. The goods carry no mark of disqualification on their face. As goods, they are exactly the same as the regular sort. Nothing but their past trading history distinguishes them, but the ordinary trader may not be able to ascertain it. Even if he can, he may be put to delay and expense.
91. In principle, the trade mark proprietor could have taken steps to distinguish the two classes of his goods. For example, he could have put a notice on the packaging of his export variety – like "Not for sale in the EEA". Or he might have used a different barcode, and so forth^[3]. At one time there was a school of thought that held that if the proprietor chooses to sell his goods outside the EEA without taking any steps to differentiate them, even though resale within the EEA is a foreseeable consequence, he should be deemed to have 'consented' to their resale here. Thus bringing the case within the exemption of Article 7. A sort of estoppel. But the European Court of Justice has held: not so. Consent, to be effective, must be unequivocally demonstrated: Joined Cases C-414/99 to C-416/99 Zino Davidoff and Levi Strauss [2001] ECR I-8691.
92. It follows that there may be circulating in trade channels within the EEA, at one and the same time, two sorts of trade marked goods, apparently identical, both genuine. But one is legitimate under trade mark law and the other is not. The ordinary trader who buys and sells such goods acts at his peril. If he should sell the wrong sort he is strictly liable for trade mark infringement. There seems to be no doubt that such is the present state of the law.

Further Developments in the Law.

93. It will be fairly obvious that the law, as I have stated it so far, could lend itself to abuse. The abuse would turn on the burden of proof. Suppose an importer was sued for trade mark infringement and he had to prove the goods were first placed on the market in the EEA by or with the consent of the trade mark owner. He might lose the case merely because he was unable to do so, or was unwilling to disclose his source of supply. If he disclosed his source of supply the trade mark owner would soon take steps to cause it to dry up. See the observations of the Advocate-General in Case C-244/00 Van Doren + Q at paragraphs 77 and 78.
94. Accordingly, the ECJ in that case held (8 April 2003) that

where a third party succeeds in establishing that there is a real risk of partitioning of national markets if he himself bears that burden of proof, particularly where the trade mark proprietor markets his products in the European Economic Area using an exclusive distribution system, it is for the proprietor of the trade mark to establish that the products were initially placed on the market outside the European Economic Area by him or with his consent. If such evidence is adduced, it is for the third party to prove the consent of the trade mark proprietor to subsequent marketing of the products in the European Economic Area.

I believe nothing turns on this for present purposes: an application for summary judgement.

'First Placed on the Market'.

95. What does it mean to say that trade marked goods were first placed on the market in the EEA? According to the Defendants the point arises in this way. Instead of sending the goods straight to Africa, the Claimant sold and delivered them to a party in France and did so under and by reference to the trade marks. It follows (continue the Defendants) that the goods were first placed on the market in the EEA; whereupon the Claimants' rights were exhausted. There may or may not have been an understanding, even a binding agreement, that the purchaser was to re-sell them in Africa – which the Defendants deny. But, even if there was, it can make no difference. This is because goods are 'first placed on the market' as soon as they are sold and delivered, and whether the transaction is wholesale or retail is irrelevant.
96. The Claimants dispute that proposition. According to their position, the sale to the first purchaser in France was subject to a condition that he could not re-sell them within the EEA at all. So the goods were not first placed on the market within the EEA.
97. Who is right? The answer depends on the correct interpretation of Articles 5 and 7 of the Directive. Mr Leaver QC for the Claimants cited Case C-23/99 Commission v. French Republic [2000] ECR I-7653. According to §§34-38 of his skeleton argument:-

The French Government contended that goods which were in transit in France (they had come from Spain and were being sent through France to a destination in Italy) had been put into circulation within French territory, and accordingly, they claimed that it was legitimate for them to detain them under customs controls if there was reason to believe they infringed a protected design. Although the case concerned protected rights in designs, the French Government relied upon a trade mark case (IHT v. Ideal Standard [1994] ECR I-2789, which in turn quotes the part of Centrafarm referred to in paragraph 15 above) for the proposition that the goods had been put into circulation for the first time in French territory by means of the transit (paragraph 41).

The ECJ rejected the French Government's argument, saying (at paragraph 44):

'The putting into circulation referred to in the case-law relied on by the French Government and referred to in paragraph 41 above was not therefore the mere physical transportation of the goods but consisted in placing them on the market, that is to say the marketing of those goods.'

It is submitted that it is, therefore, clear that goods have not been put on the market within the EEA, merely by reason of their having been transported through the EEA or delivered to transit points within the EEA.

This is consistent with the EC Treaty itself, which states (Art 24) that "products coming from a third country shall be considered to be in free circulation in a Member State if the import formalities have been complied with and any customs duties or charges having equivalent effect which are payable have been levied in that Member State, and if they have not benefited from a total or partial drawback of such duties or charges". The delivery to a forwarding agent within the EEA, for onward transportation outside the EEA, clearly would not therefore constitute the goods being in free circulation within the EEA.

98. In my judgement the case law cited by Mr Leaver QC does indeed establish the proposition that the mere physical transportation of goods through the territory of a Member State does not constitute the placing of them on the market in the territory of that State. Suppose goods bear a trade mark or are made according to a protected design, and are sent from Spain to Italy inside a container. They transit through France. Designs law is supposed to protect the appearance of goods. But when goods are merely in transit their appearance is a matter of no relevance. During their journey the goods attract no purchasers on account of their appearance. Hence to use designs law to block the transit through France offends against the principle of the free movement of goods and cannot be justified on the ground of protecting intellectual property. See paragraphs 40-43 of the ECJ's judgement.
99. Likewise if it is a case of goods bearing a trade mark. According to the first paragraph of the head note in IHT Internationale Heiztechnik v. Ideal-Standard [1994] ECR I-2789:

The object of the right of prohibition stemming from a trade mark is to protect the owner against contrivances of third parties seeking to take advantage of the reputation accruing to a trade mark by creating a risk of confusion amongst consumers.

And according to paragraph 33, citing the Centrafarm case:

In relation to trade marks, the specific subject-matter of the industrial property is the guarantee that the owner of the trade mark has the exclusive right to use that trade mark, for the purpose of putting products protected by the trade mark into circulation for the first time, and is therefore intended to protect him against competitors wishing to take advantage of the status and reputation of the trade mark by selling products illegally bearing that trade mark.

If goods are merely travelling inside a container on a lorry, there can be no question of the trade mark influencing purchasers, nor of those purchasers being confused, nor of competitors taking advantage of its reputation. Potential purchasers cannot see the trade mark at all. During its transit it performs no relevant function.

100. In passing, and despite what I have said, it is competent for Community law to provide for more stringent protection. For example, Article 5.3 of the Trade Marks Directive contemplates that certain acts may infringe a registered trade mark even though those acts, in and of themselves, could not influence potential purchasers. Thus it is possible for a registered trade mark to be infringed by, amongst other things, the mere affixing of the sign to the goods or their packaging; or the mere stocking of goods bearing the sign. Even though the goods never leave the factory or warehouse. But this is because the purpose of this provision is precautionary: it intends to prevent the mischief – the deception of consumers – by destroying it in the egg.
101. So, if all that had happened in the present case was that the Claimants delivered the trade marked goods to a carrier in France, with the object and with the result that those goods were then transported to Africa, I agree that those facts by themselves would not have constituted putting them into circulation within the EEA. For all practical purposes it would be the same as if the purchasers had said: "Instead of transiting the goods through France, fly them direct to Africa", and that was done.
102. However, that is not what happened to most of the consignments pertinent to this case. Mr Burkill QC relied on paragraph 12 of the witness statement of Mr El-Alaoui, emphasised as follows:

In the case of supplies for ultimate destinations in African Francophone countries we regularly deliver to the addresses in France of our customers' freight forwarders. This is so that the customers can collect all products for all their suppliers in one place, thereby enabling them to ship consignments out in a more cost effective manner.

103. Thus in most instances the Claimants did not merely send the goods to their own carrier in France, destination Africa. They sold the goods to Keren, Intermed Export and Uniworld Uganda Limited, two of whom had business addresses in France, and all of whom had agents who took physical delivery in France. Although wholesale transactions, they were themselves accomplished under and by reference to the trade marks. As I understand it, the property in the goods would have passed on delivery, or at least it is arguable that it did. While it would have been the Claimants' responsibility to clear the goods for export, I do not understand that this would have stopped the buyers from redirecting the goods to another destination afterwards. Hence the initial purchasers had the ability, in virtue of being owners and by issuing commands to their agents, to divert the goods to non-African destinations. Indeed it is doubtful whether most of these goods ever got to Africa at all.
104. In contrast, in the case of Consignment #12 the goods were delivered to L'Afrique aide L'Afrique in Africa by the vendor's agent and, as I have said, it is as if the Claimants had carried the goods to Dakar in Senegal themselves.
105. Mr Burkill QC for the Defendants relied a decision of a German appellate court (the Hanseatic Higher Regional Court), in Glaxo Group Ltd v. Kohlpharma GmbH, 20 March 2003, an English translation of which was provided to me. The facts were somewhat similar to those of the present case. It was not a summary judgement case and the Court found on the balance of probabilities the defendants had infringed the trade marks in question, and granted an injunction. However, as regards certain consignments the position was different. The following passages occur on page 31 of the translation:-

However, the claim for destruction does not [sc. should not] include the drugs from batches B030659 (Epivir) and B036920 (Combivir) … which … originate in supplies by Intermed and Cogezaf. On the basis of [the Plaintiffs' own evidence] exhaustion also applies in respect of these products in terms of trademark law, as these were marketed even within the EU as a result of being handed over to Intermed and Cogezaf by the First Plaintiffs.

The trademark owner has marketed a product if it has transferred the actual right of disposal over the product to a third party [learned writings cited]. If a trademark owner within the EEA transfers the actual right of disposal to a purchaser or independent third company. e.g. a middleman, this constitutes marketing … It is arguable whether this also applies if a domestic manufacturer of the products gives the products to a domestic transporter with the purpose of delivering them abroad … or whether supply to a transport company tasked by the trademark owner, like the supplying of members of the [same] corporate group, cannot at this stage be considered as marketing…

However, this dispute can be dealt with on its own merits. The companies Cogezaf and Intermed … obtained the actual right of disposal over the medications from GSK France as independent middlemen and not simply as transporters. This can be derived from the submission by the Plaintiffs itself. The statutory declaration by Greg Baines, GSK's South African sales manager … shows that Cogezaf, a company based in Belgium, was quite deliberately selected and supplied by GSK as a service provider with superior expertise in exports to Congo. Moreover, the disputed drugs were first exported to [Cogezaf] in Belgium … which also speaks of on-selling under its own responsibility and with its own right of disposal and against a [mere] transport service on the part of [Cogezaf]. The same applies to the supplies made to Intermed. The batches were sold to Intermed, as they were to [Cogezaf], rather than being simply handed over for transportation purposes… Intermed's full title is Intermed Exportation … which also indicates that this is an export company rather than a simple transport operator, which operated as an independent middleman. The Plaintiffs have submitted no evidence that Intermed and Cogezaf did not receive the actual right of disposal over the goods within the EU but were simply non-autonomous transporters in GSK's warehouse. The question at issue between the parties, as to whether the middlemen violated contractual agreements with GSK by supplying AD Pharm and PharmaJet within the EU, is not relevant to the question of marketing within the EU. [Emphasis supplied.]

106. It might be asked, how can one speak of transferring the "right" of disposal to another, if that other is forbidden by his contract from disposing of the goods within the EU? But I believe that where the judgement speaks of transferring the actual right of disposal to another, it intends to refer to what we would call the passing of the property in the goods (or, perhaps, the right to possession). I say this because the concluding passage states that whether the middleman violated contractual agreements with the trade mark owner by supplying buyers within the EU is not relevant to the question of marketing in the EU.
107. In short, the above case appears to support the proposition that a trade mark owner is considered to put goods on the market within the EEA if he sells them to a buyer and the right of disposal passes to the buyer while the goods are still present in the EEA; and that this is so even if the buyer has contracted not to re-sell the goods within any part of the EEA.
108. It does not follow that the Hanseatic court was right; that is for the ECJ to decide one day. But the contention must be arguable.

VI. CONCLUSION ON TRADE MARK INFRINGEMENT.

109. The Claimants have satisfied me that there is no arguable defence to their claim for trade mark infringement insofar as it relates to consignment #12 (Trizivir). In my judgement it has been demonstrated that L'Afrique aide L'Afrique did not acquire the right of disposal over these goods while they were in the EEA. And it is impossible to say that the Claimants unequivocally signified their consent to these goods being re-exported to Europe. So the goods were not put on the market in the EEA by the Claimants or with their consent.
110. But I hold that the Defendants have an arguable defence in respect of the other consignments. In my judgement it seems possible – and it is not a fanciful possibility – that it will be shown that the goods were placed on the market in the EEA by the Claimants or with their consent.

VII. THE POSITION OF THE SECOND DEFENDANT.

111. I have held that the First Defendants have infringed the registered trade mark TRIZIVIR by importing 100 units of the product into the United Kingdom. The Second Defendant Mr Taylor is their managing director and was at all material times the person in their organisation who took the actual decisions with regard to the sourcing and importation of this product.
112. The mere fact that the Second Defendant was managing director does not, of course, make him personally liable for infringements committed by his company. But the Claimants say he is liable as a joint tortfeasor citing, in particular, Unilever v. Gillette [1989] RPC 583.
113. Suppose there had been a man called Mr Dowelhurst who, at the direction of Mr Taylor, obtained the Trizivir from Horn & Cie and imported it into this country. Both Mr Dowelhurst and Mr Taylor would be jointly liable for infringing the trade mark. Now, there was no Mr Dowelhurst, but there was a legal person called Dowelhurst Limited. Liability must arise in the same way. I therefore hold that the Second Defendant is jointly liable in respect of consignment #12 for infringing the registered trade mark TRIZIVIR.
114. I am bound to say, however, that I cannot understand why Mr Taylor was sued at all. There is no doubt that the First Defendants are a well established concern and have ample resources to meet any monetary claim, even if the Claimants should succeed in establishing liability in respect of the other 15 consignments.

VIII. INJUCTIVE RELIEF.

115. The last point is: what injunctive relief ought to be granted arising out of the one transaction which I have held to have been an infringement of the Claimants' registered trade mark? The transaction consisted of the importation, and no doubt sale, of 100 units of Trizivir. I understand that the First Defendants no longer have stocks of these particular goods and, if they do, will have to deliver them up anyway or obliterate the trade mark. So I am concerned with consignments of Trizivir which the First Defendants may acquire in future.
116. Mr Burkill QC submitted that in the light of the Claimants' behaviour there should be no injunction or, at least, that it should not be an injunction in unqualified form. He relies on the following facts and matters.
117. The Trizivir was supplied to L'Afrique aide L'Afrique in packaging which was identical to that which the Claimants used for the French market, and indeed bore an EMEA marketing authorisation number. Contrary to their usual practice the Claimants did not use export packs or any different packaging or even stickering for the cartons.
118. Further, on 27 March 2002 the First Defendants' commercial director wrote to the Claimants notifying them that the First Defendants would commence marketing Trizivir on 26 April 2002. The product was to be repackaged, and he enclosed a sample Trizivir carton. This is standard procedure under European trade mark law, and is used in order to enable a trade mark owner to object. The carton was from the same batch now shown to have emanated from AAA and bore a batch number accordingly. No objection was made. Mr Burkill's point is that not even the Claimants appreciated that the product was illegitimate.
119. Proceedings in this case were commenced on 4 February 2003. There had been no prior letter of complaint. On 6 February the Defendants' solicitors wrote a letter referring to the above matters and mentioning that the invoices from Horn & Cie had stated that the product was "in free circulation within the EU". On the third page of that letter an undertaking was offered "not knowingly" to infringe the trade mark by importing into the UK product which had not been put onto the market within the EEA by or with the consent of the Claimants. It continued:

However, given that there is nothing on your client's packaging to put our clients on notice that a product has not been placed on the market within the EEA by it or with its consent, our clients will need your client's assistance to enable them to comply with this undertaking. We would therefore ask that your client provide our clients with the means to identify such infringing product.

The request was repeated in a letter of 11 February. No response was received.

120. It is true that in many cases, probably the great majority, an injunction is granted as of course, once it shown that the defendant has infringed the claimant's right and there is a risk that he might do it again in future; and the injunction is in a standardised form. But that is not because an injunction is a coin-in-the-slot remedy. It is because in most cases the facts fall within a familiar pattern which experience has shown to justify that form of relief.
121. An injunction is an equitable remedy, granted in the discretion of the court. In Spry, The Principles of Equitable Remedies, 6th edition, 2001, the author has this to say on page 4 of his book:

All equitable remedies are, in an appropriate sense, discretionary. In the auxiliary jurisdiction^[4] of the court, for example, equitable discretions are exercised by taking into account all relevant matters that tend towards the justice or injustice of granting the remedy that is sought, such as hardship, laches, unfairness, the lack of clean hands, and so on, and by weighing them against each other in order to decide whether the particular relief that is in question should be granted in an absolute, partial or conditional form or else refused. Any particular discretionary matter may be subject to countervailing matters of equal or greater weight. Indeed, as to any particular set of circumstances that would induce the court to exercise its discretion in a particular way it is possible to postulate additional circumstances that would lead to the exercise of that discretion in a different way. It is therefore incorrect to say, for example, that an equitable remedy will be refused if to grant it would give rise to a hardship to the defendant. A more correct statement would be, that in the auxiliary jurisdiction of the court an equitable remedy will be refused by reference to hardship if it appears that the hardship that would be caused to the defendant through granting it would be so great that, when there are taken into account the degree of injury and inconvenience that would be caused to the plaintiff by its refusal and by confining him to such remedies as damages and all the other material circumstances before the court, the case is one in which the grant of relief would be unjust.

Dr Spry reviews these considerations in greater detail in his chapter on injunctions, pages 392-405.

122. I start from the point that this is an application for summary judgement. It is not the trial of the action. Hence insofar as the facts relevant to the exercise of my discretion are in dispute or are obscure I should proceed on a view of those facts which accords with the Defendants' version, provided it be not fanciful.
123. In exercising my discretion I take into account, first, that "the plaintiff whose rights are threatened to be breached has prima facie an equitable right to have the breach restrained and that he will be denied specific relief only in exceptional cases" (ibid, page 400).
124. Secondly, however, it is not accurate to say that the First Defendants are threatening and intending to infringe the Claimants' trade mark TRIZIVIR. Rather, the First Defendants are intending to deal in parallel-imported pharmaceuticals which may include, no doubt, Trizivir manufactured and sold by the Claimants. I have no reason to suppose that any of that Trizivir will be other than genuine; but some of it may be placed on the market outside the EEA by the Claimants in circumstances where they have not consented to its re-importation. It would be genuine, but illegitimate.
125. Thirdly, and in the present state of proof, I have no reason to apprehend that the Defendants have any intention of knowingly dealing in illegitimate Trizivir. At this stage I proceed on the basis that, if the Defendants believed it to be illegitimate, they would refuse it. Their problem is the difficulty of distinguishing between legitimate and illegitimate parcels of goods, since both appear identical. In this connection I take into account the factors which Mr Burkill prayed in aid, and which I have summarised above.
126. The Claimants' fear is that if there were no injunction the Defendants might not take much trouble to ascertain the legitimacy of goods offered to them for sale. That would be a justifiable concern.
127. I take into account the manner in which the Claimants chose to market their products with reference to Africa. In the case of L'Afrique aide L'Afrique it may have been somewhat naïve to suppose that mere paperwork would serve to protect the goods from improper diversion. In many parts of the world whatever paperwork is required will always be forthcoming. But it cannot be said that the Claimants were negligent. The Claimants have not sold Trizivir to Keren, Intermed or Uniworld Uganda.
128. Finally, I note that the Defendants sourced their goods from Horn & Cie when, as they now accept, Horn & Cie had no distribution authorisation, as was required by the medicines regulations, for supplying the goods to wholesalers in the UK. I have dealt with this point in Section IV of this judgement under the heading 'Side Issues'. It may be a side issue on trade mark infringement, but it is not so on the question of the scope of the equitable relief which is to be granted.
129. Mr Burkill suggested that if an injunction were to be granted it should contain the following proviso, which I shall paraphrase slightly:

Provided that it shall not be a breach of this injunction for the Defendant to use any of the said trade marks in relation to goods put on the market in any country by the Claimant or with its consent, if the Defendant believed and had reasonable grounds for believing that the same had been put on the market in the European Economic Area under the trade mark by the proprietor or with his consent.

In my judgement the above form of relief is appropriate having regard to the circumstances of the present case in the present state of proof, except that there should be added words which remove that qualification in the event that the First Defendants should acquire the goods from anyone who does not hold an appropriate distribution authorisation where this is required by the medicines legislation. I believe the Defendants can readily discover whether a trader from whom they wish to source their goods does possess such an authorisation. If not, I shall hear the parties.

130. I see no need for an injunction against the Second Defendant. See Section VII of this judgement.
131. In exercising my discretion I have sought to pay attention to the hardship that would be caused to the First Defendants through granting it when there are taken into account the degree of injury and inconvenience that would be caused to the Claimants by its refusal. In my judgement (and I say this in the present state of proof, although it may appear otherwise at the trial), the relief I have tailored will not cause any material injury or inconvenience to the Claimants, if they choose to adopt sensible measures which will enable honest parallel traders to avoid product intended for Africa. I have alluded to these earlier in this judgement, and there may be others. Nor will it cause them any material injury or inconvenience if, as is to be hoped, there are not going to be any more parcels of "African" Trizivir diverted to the European market.
132. The limitation I have placed on the injunction may, however, make a difference if the Claimants continue to sell Trizivir outside the EEA but do not take sufficient steps to prevent it from being confused with legitimate Trizivir for sale within the EEA. I have weighed the possible inconvenience to the Claimants and have not found it to outweigh the potential hardship to the Defendants. If parties in the position of the Defendants are to be put at risk of being held in contempt of court – a serious matter in this country – because trade mark owners will not adopt sensible precautions, the result may be said to constitute an unacceptable barrier to trade. If that were the law, it would be open to obvious abuse.
133. European trade mark law does not require that an unqualified injunction be granted. Remedies are a matter for national law, provided those remedies be efficacious and proportionate.
134. Trizivir, as well as being a UK registered trade mark, is registered as a Community Trade Mark. Community Trade Marks exist pursuant to Council Regulation 40/94 of December 20, 1993. So, to that extent, I apprehend that this court is sitting as a Community trade mark court as defined. Article 98 of the Regulation is headed 'Sanctions', and reads as follows:

1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.

2. In all other respects the Community trade mark court shall apply the law of the Member State to which the acts of infringement or threatened infringement were committed, including the private international law.

That Article does not require me to grant an unqualified injunction. In the first place it speaks of an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. In this case the infringing acts consisted of importing Trizivir sourced from Horn & Cie, which is not the relief that is sought. But in any case, and even if that it too narrow an interpretation, there are in my judgement "special reasons" for granting an injunction in qualified not absolute form.

IX. CONCLUSION.

135. The application for summary judgement succeeds in respect of the consignment of Trizivir emanating from L'Afrique aide L'Afrique, but not otherwise. An injunction to restrain the First Defendants from infringing the trade mark should be granted in the qualified form I have discussed in Section VIII above. I shall hear the parties on costs and any other remaining ancillary matters.