| In the case of Bolton Pharmaceutical Co 100 Limited | | | | to control the quality of the product. That power |
| -v- Swinghope Limited and Others [2005], the | | | | would be lost if, as the result of an assignment, |
| claimant was the new owner of a trade mark | | | | control over the trade mark was surrendered to a |
| registered in respect of a pharmaceutical product | | | | third party which was not economically linked to the |
| which was commonly used to treat hypertension. It | | | | assignor. In this case, there was no evidence to |
| acquired the product from AZ, another | | | | support the claim that AZ was linked to either the |
| pharmaceutical company, in September 2004, who | | | | claimant, or that the claimant and T were linked". |
| had previously sold its trade mark rights to a Spanish | | | | It followed therefore that any defence based on the |
| company. | | | | doctrine of the exhaustion of rights had no real |
| The claimant acquired the trade mark in the United | | | | prospect of succeeding1. |
| Kingdom, and later realised that the product was | | | | The defendant's argument that estoppel should bar |
| being imported into the UK by certain third parties, | | | | the claimant from obtaining the relief sought, was |
| including the defendant, and bearing its trade mark. | | | | inconsistent with section 10(4) Trade Marks Act |
| They had not sought the claimant's consent and the | | | | 1994, which imposes strict liability for trade mark |
| claimant therefore commenced proceedings alleging | | | | infringement. The court went on to find that the |
| that the defendants were illegally impinging on its | | | | defendant's argument was inconsistent with the law |
| market and as a result, they were causing the | | | | of acquiescence, which provides that in order for |
| claimant 'harm'. The claimant applied for summary | | | | estoppel to apply the claimant must have carried out |
| judgment. | | | | some act or omission, beyond mere delay in |
| The defendants argued that: | | | | commencing proceedings, which would have led the |
| The doctrine of exhaustion of rights applied, which | | | | defendant to reasonably believe that the claimant |
| provided that where a product had been put on the | | | | would not enforce its rights under the trade mark. |
| market in a member state by the trade mark owner | | | | On this reasoning, the defence had no real prospect |
| or with his consent, there could be no question of | | | | of success. |
| infringement of that mark; and | | | | The claimant was granted the relief sought. |
| Estoppel applied, on the basis that the claimant had | | | | This is the test that must be satisfied in order for an |
| failed to assert his rights under the trade mark in the | | | | applicant to obtain a summary judgment. |
| preceding five months. | | | | If you require further information contact us. |
| The court held that the claimant's application for | | | | Email: © RT COOPERS, 2005. This Briefing Note |
| summary judgment would be allowed on the grounds | | | | does not provide a comprehensive or complete |
| that: | | | | statement of the law relating to the issues discussed |
| "For the doctrine of exhaustion of rights to apply, | | | | nor does it constitute legal advice. It is intended only |
| the owner of the rights in an importing state had to | | | | to highlight general issues. Specialist legal advice should |
| be able to determine the products to which the mark | | | | always be sought in relation to particular |
| might be applied in the exporting state and to be able | | | | circumstances. |