Roche Products Ltd and Another v Kent Pharmaceuticals Ltd: CA 20 Dec 2006

The defendant appealed summary judgment in a trade mark infringement case based on parallel imports of ACCU-CHEK blood testing strips for diabetics. The defendant said that the products were ‘CE’ marked and therefore intended for sale within the EU.
Held: The function of a CE mark is not directed in any way to the question of whether the proprietor of any trademark associated with the goods or packaging on which the CE mark is attached has consented to the placing of the goods anywhere on the market in the EEA or indeed anywhere else. It is there to record the consent of the EU regulatory authorities, not that of a trademark proprietor, to the products being placed on the market in the EU. The presence of the mark could not be used in normal parlance to argue that the company had consented to the import, but the defendant argued that there was a custom and practice to treat it as such. That argument was not supported by by sufficient evidence to carry it. It was not proper to accept a Micawberish type hope that some further evidence might turn up.
Lord Justice Neuberger, Lord Justice Moore-Bick, Lord Justice Moore-Bick
[2006] EWCA Civ 1775
Bailii
Trademarks Act 1994, EU Directive 89/104/EEC of 21 December 1988
England and Wales
Citing:
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 . .
CitedYangtze Insurance Association v Indemnity Mutual Marine Assurance Co CA 1908
The court considered the significance of a trade custom in interpreting a contract: ‘The general rule of construction is that words used in documents must receive their primary signification, unless the context of the instrument read as a whole, or . .
CitedGlaxo Group Limited v Dowelhurst Limited, Richard Taylor CA 15-Mar-2004
It was arguable that an EMEA licence number on the packaging of the products in question operated as a sufficient consent under Article 7 to the placing of those products on the market in the EU. The ‘heart’ of the defences he was there considering . .
CitedSmith Hogg Co v Louis Bamberger and Sons 1929
Where it has been demonstrated by satisfactory evidence that an expression is understood to have a special meaning by virtue of a ‘custom of the trade’, then effect will be given to the custom of the trade, unless it is inconsistent with the express . .

Cited by:
CitedMastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .

These lists may be incomplete.
Updated: 05 April 2021; Ref: scu.247487