Martin Howe QC and Iona Berkeley represented the Respondents, “Sandoz”, in Glaxo’s Appeal against the decision of HHJ Hacon refusing permission to join two additional defendants to its claim for passing off.
Glaxo alleged passing off on the basis that Sandoz had marketed asthma inhalers similar to Glaxo’s ‘Seratide’ inhalers in the UK. Glaxo had sought to join two companies in the Sandoz group to the action on the basis that they had assisted in the preparations for launching Sandoz’ product and were therefore joint tortfeasors. At first instance the judge had refused the application to join these two additional defendants on the basis that there was no sufficient evidence that the parties had acted in common design and that, even if there had been, the acts of the additional parties had occurred more than 6 years prior to issuing proceedings, so were statute-barred.
The Appeal was allowed. There was at least an arguable case that the additional defendants had acted in common design with Sandoz in marketing its inhalers in the UK. Glaxo’s pleaded case sufficiently made out a case that the additional defendants had combined together to do acts (as regards the design of the inhaler, and its get-up and packaging) intending that acts should be done in the UK which, on Glaxo’s case, amounted to passing off. The relevant date for the purposes of limitation was when the cause of action had first accrued, not when specific preparatory acts had been done by the alleged joint tortfeasors. Sandoz’s products had first been promoted and sold in the UK in 2015, so there could be no question of the claims against any of the defendants being subject to limitation.
The judgment raises interesting issues regarding what is necessary to demonstrate an arguable case that parties have acted in common design – in particular the Court of Appeal considered the Supreme Court case Fish & Fish Ltd v Sea Shepherd [2015] UKSC 10 and considered the distinction between mere facilitation, and active assistance, and the position where relevant acts are divided among different corporate entities.