Court of Appeal

Published June 27, 2007

Boehringer Ingelheim Ltd and Others v Vetplus Ltd

Before Lord Justice Pill, Lord Justice Langmore and Lord Justice Jacob

Judgment June 20, 2007

No interim injunction would issue to inhibit comparative advertising, whereby one trader promoted his goods over those of a rival, unless the claimant could show the advertising was misleading and he would probably win a permanent injunction at trial.

The Court of Appeal so stated dismissing the appeal of the claimants, Boehringer Ingelheim Ltd, Boehringer Ingelheim Pharma GmbH and Co KG and Boehringer Ingelheim Vetmedcia GmbH, from the refusal by Mr Justice Pumphrey (unreported [2007] EWHC 972 (Ch)) to grant an interim injunction against the defendant, Vetplus Ltd, from publishing its finding of a test of the claimants’ products in comparative advertisements, relating to nutritional supplements for dogs made and marketed by both parties.

Mr Justin Turner and Mr Miles Copeland for Boehringer; Mr Desmond Browne, QC and Mr Jonathan Barnes for Vetplus.

LORD JUSTICE JACOB said that a man who made a damaging statement involving the use of another’s trademark 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 honest practice if he was 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 honest practice and would be adjudged to infringe.

Indeed the Comparative Advertising Directive (97/55/EC) (OJ October 23, 1997 L290) 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 article 3a of the Misleading Advertising Directive (84/450/EC) (OJ September 19, 1984 L250).

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: the exclusive rights conferred on the proprietor by the registration of the trademark and that in the goodwill attached to the trademark.

The common law had long recognised that 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 trademark 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 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 trademark infringement in a comparative advertising case. Indeed there was every reason why it should.

A man who found his trademark 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.

Lord Justice Longmore and Lord Justice Pill gave concurring judgments.

Solicitors: Clarkslegal LLP, Reading; DWF, Manchester.

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