Infringement claims fail to stop comparative advertising campaign

In Boehringer Ingelheim Ltd v VetPlus ([2007] EWCA Civ 661), the Court of Appeal of England and Wales has refused to grant an interim injunction to prevent a comparative advertising campaign on the basis of trademark infringement. The court found that the applicant did not satisfy the court that it will more likely than not succeed at trial.

The claimant, Boehringer Ingelheim Ltd, sought to restrain the publication by the defendant, VetPlus Ltd, of information relating to the parties' respective products. Both products contain chondroitin and are supposed to have a beneficial effect on dogs' joints. VetPlus intended to publish the results of tests conducted on Boehringer's product in a comparative advertisement specifying that Boehringer's product did not contain the amount of chondroitin claimed.

Boehringer accepted that it could not obtain an interim injunction to restrain alleged malicious falsehood and libel on account of the rule against prior restraint in Bonnard v Perryman ([1891] 2 CH 269), which is expressed in Bestobell v Bigg ([1975] FSR 421) as follows:

" the courts will not restrain the publication of a defamatory statement…where the defendant says he is going to justify it at the trial of the action, except where the statement is obviously untruthful and libellous."

The court accepted that VetPlus's proposed statements were not "obviously untruthful". Boehringer therefore turned to the law of registered trademarks. Boehringer's argument was that the rule in Bonnard did not apply to trademark infringement and instead the court should apply the normal rule in American Cyanamid v Ethicon ([1975] AC 396).

VetPlus submitted that the Bonnard rule did extend to trademark infringement and, alternatively, that the court should apply the approach called for by Section 12(3) of the Human Rights Act 1998 such that the normal rule in American Cyanamid did not apply.

Lord Justice Jacob accepted that the rule in Bonnard did not apply to trademark infringement. He said that a trademark was not merely a claim to protect the claimant's reputation, it was a claim to protect a property right and in any event such a simple rule was inappropriate for trademark infringement.

Jacob, however, agreed that there was an alternative basis for departing from the American Cyanamid rule, namely Section 12(3) of the Human Rights Act. The effect of Section 12(3) was that the court was not to make an interim restraint order unless satisfied that the applicant's prospects of success at trial were "sufficiently favourable to justify such an order being made in the particular circumstances of the case". As to what is "sufficiently favourable", Lord Nicholls had stated in Cream Holdings v Banerjee ([2005] 1 AC 253) that:

"the general approach should be that courts will be exceedingly slow to make interim restraint orders where the applicant has not satisfied the court he will probably ('more likely than not') succeed at the trial."

In Jacob's view, the general threshold that the claimant would probably succeed at trial should be the general rule for trademark infringement in a comparative advertising case. He acknowledged that there would be cases where it would be necessary for a court to depart from the general approach and a lesser degree of likelihood would suffice - that is, where the potential adverse consequences of disclosure were "particularly grave". A case relating to damage to reputation, however, was not in his view a case that fell within the category of "particularly grave".

Jacob therefore concluded that no interim injunction should be granted as Boehringer had not shown it was more likely to succeed than not.

Lianne Bulger, Hammonds, London