On 23 November 2007, the English High Court continued an interim injunction in Eli Lilly & Company and Lilly ICOS LLC v 8PM Chemists Ltd, [2007] EWHC 2829 (Ch) holding that Eli Lilly had a good, arguable case that certain trans-shipments of products through the United Kingdom amounted to importation. Eli Lilly, which is a well-known manufacturer of pharmaceutical products, complained that 8PM had imported relevant goods under Eli Lilly registered trade marks, contrary to section 10(4)(c) of the UK Trade Marks Act. 

8PM operated a website on which US customers could place orders for pharmaceutical products. The (genuine) goods were sourced in Turkey where each order was individually boxed and labelled in anonymous packaging. Orders were then sent in batches to the United Kingdom where they were separated into individual orders and sent on by mail to the United States. Whilst in the United Kingdom, the goods were held under the European “inward processing relief” system for customs purposes, where goods do not attract duty provided they are ultimately exported.

Eli Lilly initially obtained an ex-parte interim injunction preventing the release of a consignment which was, at first, thought to be counterfeit. 8PM sought a discharge from the interim injunction on the grounds that no act of importation had occurred such that the goods were “Community Goods” or otherwise put into free circulation in the European Union (relying on Class International BV v Colgate-Palmolive Co and Others [2006] 1 CMLR 14). They also argued that the goods were not imported “under the sign” as at no point were Eli Lilly’s trade marks visible in the United Kingdom. Kitchin J dismissed 8PM’s application. Their activities taken as a whole were capable of giving the impression to the end consumer that the goods emanated from the United Kingdom. Notwithstanding the guidance in Class International, those acts were arguably capable of amounting to importation for the purposes of 10(4)(c).

The judge also rejected the second argument, since the qualifier of being “under the sign” for the purposes of infringement referred to the goods, rather than the act of importation. In the present case, the goods were almost certainly under the sign as they were associated with the mark, notwithstanding that the mark was not visible. An alternative interpretation would mean that virtually all acts of bulk importation would be incapable of infringement, which was surely not what was intended by the legislature.

Similar cases involving questions of importation and/or transshipment for trade mark purposes are likely to be decided on the particular facts. However, this case demonstrates that the English High Court is prepared to grant interim injunctions in respect of branded goods from outside the European Union even if those goods do not enter free circulation.