| INJUNCTION — Interlocutory — Comparative advertising — Trade mark infringement — Claimant seeking injunction to restrain defendant from publication in advertising of test results of defendant’s product — Whether injunction curtailing freedom of expression — Whether to be granted — Human Rights Act 1998, s 12(3)
Boehringer Ingelheim Ltd and ors v Vetplus Ltd [2007] EWCA Civ 584
CA: Pill, Langmore and Jacob LJJ: 20 June 2007
Where a trader sought to publish in comparative advertising the results of tests of a rival trader’s product, an important issue of freedom of expression was engaged, even though the comparative advertising would be aimed at diverting trade from one trader to another; and therefore the court would not grant an interim injunction to prevent such publication unless the court was satisfied that the applicant would succeed at trial in obtaining a final injunction.
The Court of Appeal so stated when dismissing the appeal of the claimants, Boehringer Ingelheim Ltd, Boehringer Ingelheim Pharma GMBH & Co KG and Boehringer Ingelheim Vetmedcia GMBH, from the decision of Pumprey J [2007] EWHC 972 (Ch), dated 26 April 2007, refusing to grant an interim injunction to prevent the defendant, Vetplus Ltd, from publishing the findings of tests of the claimant’s products in comparative advertisements relating to nutritional supplements for dogs made and marketed by both parties.
JACOB LJ said that a man who made a damaging statement involving the use of another’s trade mark which he reasonably believed to be true at the time but which later turned out to be untrue would not be acting in accordance with an honest practice if he were not prepared to compensate the owner of the damaged mark. He could express his honestly held opinion, but unless that was on the basis that he would compensate his trade rival if it was proved to be wrong, he was not acting in accordance with an honest practice and would be adjudged to infringe. Indeed the Comparative Advertising Directive (97/55/EC) rather confirmed the position. It was not in dispute that a comparative advertiser would be acting in accordance with “honest practices” provided he did so in accordance with the conditions of art 3a of the Misleading Advertising Directive (84/450/EC). One of those conditions was that the advertising would not be misleading. If an advertisement was in fact misleading, however honestly the advertiser believed what he said at the time, he would be outside the Directive. Two property rights were involved, that conferred by registration (“the registered trade mark should confer on the proprietor exclusive rights therein”, art 5.1 of the Directive) and that in the goodwill attached to the trade mark. The common law had long recognised that goodwill was a species of property, and one that was protected by the law of passing off. The court would normally consider who was actually likely to win and would grant or refuse an interim injunction on that basis. For if the plaintiff was likely to win, damage would be irreparable, if not, not. Moreover although there was an important issue of free speech involved in comparative advertising, other more complex factors were involved too. Most particularly the defendant had a commercial interest in diverting trade which would have gone to the trade mark owner to himself. It was not a question of “pure” free speech. Unless the defendant put in credible material going to justification, if he otherwise infringed and there was likely to be damage to goodwill, an injunction should be granted. The defendant should show the basis of his plea of justification. The general “threshold” which should be crossed by the claimant was that he would probably succeed at the trial. His Lordship could not see why that should not be the general rule for trade mark infringement in a comparative advertising case. Indeed there was every reason why it should. A man who found his trade mark disparaged by a rival trader in a comparative advertisement could obtain a prior restraining order only if he could show that it was more likely than not that the disparagement was wrong and misleading. Unless he could do that, then his rival, both for his own commercial interests and in the interests of the public, ought to be free to say that which he honestly believed. Traders would have nothing to fear if they had sure foundations for claims they made about their products. Such traders would be able to obtain prior restraint orders because they would be able to cross the threshold. Traders who made claims for their products which they could not readily and firmly justify would have to live with the risk that their rivals could honestly and reasonably call those claims into question pending a final resolution as to whether the claims were in fact good.
LONGMORE and PILL LJJ gave concurring judgments.
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