The High Court has refused to stay Glaxo Group Limited and GlaxoSmithKline (Ireland) Limited’s proceedings against Rowex Limited over the marketing of AirFluSal, finding special grounds to continue the Irish case while challenges to the relevant Community trade mark remain pending elsewhere.
Mr Justice Max Barrett delivered the judgment on 15 June 2015. It addressed whether the proceedings should be paused under Article 104(1) of the Community Trade Mark Regulation. The court said the provision generally requires a stay when the mark’s validity is already in issue before another trade mark court or through an application to the trade mark office, unless special grounds justify continuing.
The judgment said invalidity and revocation applications concerning the mark were pending before OHIM, following applications by EBEWE Pharma Nfg KG GmbH on 14 August 2014, and before the Hamburg District Court, following a counterclaim by Sandoz on 1 December 2014. The court identified several reasons against a stay: neither party sought one; proceedings in the other forums could take years; the Irish case was expected to reach trial and appeal more quickly; and the Hamburg court had not stayed its case. The judge said the policy of avoiding inconsistent decisions was already engaged in practice because challenges were proceeding in separate forums.
The Irish proceedings also included a passing-off claim alongside the Community trade mark claim. The judge acknowledged that the claims could overlap on questions such as whether purple shades were distinctive of Glaxo and whether Glaxo had built a reputation in them. But he said the presence of a national-law claim should be considered within the strong presumption favouring a stay, rather than automatically treated as a special ground.
The court also considered the potential delay, including evidence submitted by Glaxo trademark counsel about earlier OHIM cases that took roughly six or seven years to reach final decisions. It did not rule on whether a stay would breach fair-hearing rights under the EU Charter or the European Convention on Human Rights, but regarded the risk of prolonged delay and commercial uncertainty as relevant.
The judgment followed the court’s 19 May 2015 refusal of Glaxo’s application for an interlocutory injunction. That earlier decision found damages adequate for Glaxo but not for Rowex, and that the status quo favoured Rowex. The June judgment did not reconsider those findings or decide the underlying trade mark and passing-off claims. It held that the cumulative special grounds meant the court was not required to stay the proceedings under Article 104(1). It did not decide whether provisional or protective measures under Article 104(3) should be made.