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Fasken Martineau Stringer Saul in the Court of Appeal

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April 1, 2008

Eli Lilly & Company v 8PM Chemist Ltd [2008] FSR 11 & [2008] FSR 12

Fasken Martineau Stringer Saul's intellectual property litigation team, led by Ralph Cox, successfully represented its client, 8PM Chemist Ltd, before the UK's Court of Appeal in an action that involved the first fully considered application in the UK of European Court of Justice case law on what constitutes "importation" for the purposes of trade mark infringement.

The action was brought by Eli Lilly and Lilly ICOS against 8PM alleging trade mark infringement by the receipt in the UK of branded pharmaceuticals for onward postage to patients in the US that had ordered through Canadian internet pharmacies. The High Court had refused 8PM's application for summary judgment against Lilly but the Court of Appeal overturned its decision considering the ECJ authorities were clear that the transit of goods through the European Union under a customs supervisory procedure did not amount to import for trade mark purposes. The pharmaceuticals were not put on the market in the UK so as to interfere in any way with Lilly's UK trade mark rights and so it could not object.

Ralph Cox comments that, while the line of ECJ authorities goes back for a number of years, it had received little attention in the UK. The decision will therefore be of interest to intellectual property lawyers and their brand-owning clients as it adds to the growing body of case law on when rights-owners can and cannot take action against parallel importers under trade mark law.

8PM was co-represented by intellectual property consultant, Anna McKay.