This Application forms part of an ongoing and large scale action for Trade Mark infringement and passing off brought by Glaxo against Sandoz in relation to asthma inhalers. Glaxo allege trade mark infringement of its EUTM colour per se mark and passing off in relation to its Seretide Acuhaler asthma inhalers as against Sandoz and its recently launched competing Airflusal Forspiro asthma inhaler. Sandoz successfully applied for summary judgment on its counterclaim for invalidity of the Glaxo EUTM colour per se mark on the ground that the EUTM registration related not to a single sign but to a multiplicity or class of different signs and its registration was therefore in contravention of Arts 4 and 7(1)(a) of the EU Trade Mark Regulation (see Glaxo Wellcome UK Ltd (t/a Allen and Hanburys) v Sandoz Ltd [2016] EWHC 21537 (Ch)). In this Application, brought by Glaxo, Glaxo attempted to join two new parties as potential defendants to the passing off proceedings. These new parties formed part of the Sandoz group of companies. One party was joined without objection. However, Sandoz Ltd objected to the joinder of the other two parties, Aeropharm GmbH and Hexal AG. In a reserved judgment which considered interesting questions concerning joint tortfeasance in passing off, issues concerning the Limitation Act 1980 and the recast Brussels I Regulation (EU) 1215/2012, HHJ Hacon sitting as a judge of the High Court found for Sandoz and refused permission to join Aeropharm GmbH and Hexal AG.
Martin Howe QC and Iona Berkeley appeared for Sandoz, the Defendants/Counterclaimants.