The High Court has ordered Glaxo Group Limited, GlaxoSmithKline (Ireland) Limited and Rowex Limited to provide discovery in their dispute over the purple colouring and get-up of the Seretide and AirFluSal inhalers. It refused some categories of documents and narrowed others, and said its order against Rowex was subject to limits set out in the judgment.
The judgment, delivered by Mr Justice Max Barrett on 25 May 2016, concerns discovery applications made under Order 31, rule 12 of the Rules of the Superior Courts. The underlying proceedings include Glaxo’s claims of trade mark infringement, passing off and unlawful interference with its economic interests. Those are claims in the proceedings, not findings made in this discovery judgment.
Glaxo alleges that Rowex’s AirFluSal inhaler, launched in Ireland in March 2015 in a shade of purple, infringes Glaxo Group Limited’s EU trade mark and resembles the Seretide inhaler’s get-up. Rowex sought documents from Glaxo, including materials concerning Seretide’s colour, marketing and alleged instances of confusion or detriment.
A central issue was whether Rowex could be required to obtain documents held by other Sandoz group companies abroad. The judge found no indication that the documents those companies had volunteered to provide were in Rowex’s possession or that Rowex had an enforceable right to require them. He said a company’s membership of a corporate group did not, by itself, make other group companies’ documents discoverable against it. The court could not order discovery against non-party corporate entities incorporated and situated abroad.
The court also considered the proposed search of files belonging to 16 people identified by the Sandoz side. It said assurances that those individuals had been involved in designing and launching AirFluSal did not establish that they were the only people with documents relevant to the requested categories. The judgment records the court’s concern that Rowex had provided little information about its efforts to identify other potential document holders. It did not, however, make an order against the foreign Sandoz companies.
For Glaxo’s requests, the court ordered documents about AirFluSal’s purple design, labelling, branding and marketing, and research into the colour and get-up of the inhalers. It narrowed requests concerning references to other inhalers and excluded documents about regulatory approvals in foreign jurisdictions. It also ordered discovery about challenges to Glaxo’s trade mark, but excluded material about the timing of challenges in other jurisdictions.
For Rowex, the court ordered discovery of specified Seretide advertising and promotional materials, Irish market comments describing it as the “purple inhaler”, and documents concerning confusion or association in relevant EU states. It refused Rowex’s request for documents assessing little or no likelihood of confusion, and narrowed requests concerning alleged detriment and colour use on inhalers. The judgment orders discovery as specified in its category-by-category rulings, with Rowex’s order subject to the limitations in paragraph 54.