Eli Lilly and Company and Another v 8PM Chemist Ltd: CA 5 Feb 2008

The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the defendant’s premises in Slough. The claimant said that there was a pretence that the goods were sourced in the UK.
Held: The appeal succeeded. The Class International case established that a trade mark owner’s goods which are ‘non-Community’ goods, are to be regarded as not having entered the EU for trade mark infringement purposes. Though there may be a physical presence there is no ‘import’ within the meaning of the Directive which is explicit that: ”using [the mark] in the course of trade’ therefore requires introduction of those goods into the Community for the purposes of putting them on the market therein.’ None of the goods became ‘community goods’.


Rix LJ, Jacob LJ, Sir William Aldous


[2008] EWCA Civ 24, [2008] FSR 12




Trade Marks Directive (89/104/EEC 5 7


England and Wales


CitedZino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
CitedArsenal Football Club plc v Reed ECJ 12-Nov-2002
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance.
Held: The function of a trade . .
CitedClass International v Colgate Palmolive ECJ 18-Oct-2005
ECJ Trade marks – Directive 89/104/EEC – Regulation (EC) No 40/94 – Rights conferred by the trade mark – Use of the mark in the course of trade – Importation of original goods into the Community – Goods placed . .
CitedRioglass and Transremar (Judgment) ECJ 23-Oct-2003
Motor car windows bearing the trade marks of a number of French motor car makers were lawfully made in Spain. Under a customs suspensive procedure they were being exported outside the EU to Poland. French Customs seized them whilst in transit in . .
CitedMontex Holdings v Diesel (Free Movement Of Goods) ECJ 9-Nov-2006
Montex sold jeans in Ireland where the mark Diesel was not protected. The jeans were made by the manufacture of pieces in Ireland (including pieces with the mark on), exporting them under a customs seal procedure to Poland where they were made up . .

Cited by:

CitedNokia Corporation v Revenue and Customs ChD 27-Jul-2009
Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 13 July 2022; Ref: scu.264098