Boehringer Ingelheim Ltd & Others v Vetplus Ltd (CA)
Reference:  EWCA Civ 583;  FSR 29; (2007) HRLR 33; (2007) BusLR 1456; (2007) 97 BMLR 1; (2007) 30(8) IPD 30052; The Times, 27 June 2007
Court: Court of Appeal
Judge: Pill, Longmore & Jacob LJJ
Date of judgment: 20 Jun 2007
Summary: Prior restraint – Interim Injunctions – Human Rights Act section 12(3) – European Convention on Human Rights Article 10 – Comparative Advertising – Libel – Malicious Falsehood – Trade Marks
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Desmond Browne CBE QC - Leading Counsel (Defendant)
Jonathan Barnes QC (Defendant)
Instructing Solicitors: Clarkslegal for the Claimant; DWF for the Defendant
The Claimants and Defendant compete in the market for nutritional supplements for animals. The Defendant intended to make certain public statements, including adverts in the veterinary press, to the effect that one of the Claimants’ products contained significantly less of its principal active ingredient than claimed on its label. In making such claims the Defendant intended to use the Claimants’ trading name, and that of their product, both of which are registered UK and EC trade marks. Pumfrey J refused an interim injunction, because he found that the “sting” or “take home message” of the proposed advert was capable of being justified and, therefore, the rule in Bonnard v Perryman applied. The Judge found also that in relation to the claim for trade mark infringement the Claimants were not “more likely than not” to succeed at trial, so were the test in section 12(3) of the Human Rights Act 1998 applied the application would have failed on this basis too.
The appropriate threshold test for the grant of an injunction and whether an injunction should be granted.
A trade mark infringement action is more than merely a claim to protect the claimant’s reputation. It is a claim to protect the property rights attached to a trade mark. Bonnard v Perryman is too simply an invoked rule to be appropriate for trade mark infringement, even in a case of comparative advertising. Unless the defendant puts in credible material going to justification then an injunction should be granted. Therefore, the rule in Bonnard v Perryman does not apply to trade mark infringement. Instead, the general threshold which must be crossed by the claimant is that he will probably succeed at trial: section 12(3) of the Human Rights Act 1998 and Cream applies. However, on a review of the evidence the Judge was correct to find that the Claimants had not shown that they are more likely to succeed than not. Therefore, the appeal was dismissed.
This reverses the decision at first instance to the extent the Judge below had been prepared to accept that the rule in Bonnard v Perryman applies to a claim which, although brought in relation to trade marks, was in substance of libel or malicious falsehood. It therefore places an action to protect reputation by suing in relation to trade mark infringement in the same bracket as a claim in confidence for the purposes of what the claimant has to establish in order to obtain an interim injunction. The court’s reasoning for this approach is based upon the notion that a trade mark is a property right. However, the court did not elaborate why a property right should give rise to an exception to the rule in Bonnard v Perryman, where prior restraint of the right to freedom of expression is contemplated and the threatened damage would be to the claimant’s trading reputation.