Regular readers of our blog will already be familiar with the ongoing trade mark infringement and counterclaim battle between Glaxo and Sandoz, see our posts here, here and here. In the latest development on 6 April 2017, the Court of Appeal (‘CoA’) has allowed Glaxo’s appeal and ordered that two additional companies within the Sandoz group be joined as defendants to the proceedings.
By way of background to the spat, the infringement and passing-off proceedings brought by Glaxo back in December 2015 were originally issued against just one defendant company, namely Sandoz Limited. However, in May 2016, Glaxo applied to join three other Sandoz companies as additional defendants to the claim. In November 2016, the High Court (‘HC’) allowed only one of the three additional companies to be joined as a defendant, letting the two remaining companies (‘Companies A & H’) off the hook. Glaxo appealed.
The CoA reviewed the two reasons relied upon by HC Judge Hacon for refusing to join Companies A & H as defendants, namely:
1. Liability as joint tortfeasors
Glaxo alleged that Companies A & H were jointly and severally liable as joint tortfeasors for the acts committed by Sandoz Limited, by virtue of their contribution to the design process of the infringing product. In the HC decision, Hacon rejected the notion that Glaxo had established a sufficiently arguable case against Companies A & H. Whilst he accepted their involvement in the design and development of the product and its packaging, he ruled that this did not amount to active co-operation in the sale or promotion of the goods in the UK.
The CoA disagreed. Noting that the principle of liability on the basis of joint tortfeasorship applies where the second party can be shown to have shared the principal tortfeasor’s intention and acted in a way to further the acts that constitute commission of the tort, the CoA found in favour of Glaxo. The CoA found that the commission of the tort by Sandoz Limited, namely the promotion, marketing and sale of the product in the UK, had clearly been assisted by Companies A & H. Furthermore, from their involvement in the design process, which included market research to collect data for the purposes of obtaining marketing authorisation in the EU, the CoA found that Companies A & H had in fact demonstrated a shared common intention for the product ultimately to be sold in the EU, including the UK.
2. Statute of limitation
In his HC decision, Hacon had also found that the alleged acts of Companies A & H that Glaxo relied upon were done more than six years before the commencement of Glaxo’s proceedings. As such, the HC held that the claim against Companies A & H should be barred by the statute of limitation (Section 2 of the Limitation Act 1980).
The CoA disagreed. Noting the case Fish & Fish v Sea Shepherd 2015, the CoA found that an accessory is liable not for his acts of assistance, but for the primary actor’s tortious act. The CoA therefore accepted Glaxo’s argument that Companies A & H should be made jointly liable for the same cause of action that was asserted against Sandoz Limited, namely the promotion and sale of the product in the UK, which had not occurred until 2015. It follows that the limitation period had therefore not expired.
In allowing the appeal, the CoA ordered that the case be remitted to the HC for consequential case management directions. We will therefore continue to follow this matter with interest.