THE HIGH COURT
			Record No. 1998 13639P
BETWEEN
SMITHKLINE BEECHAM PLC AND SMITHKLINE BEECHAM (SWG) LIMITED AND SMITHKLINE BEECHAM (IRELAND) LIMITED
			PLAINTIFFS	
AND
ANTIGEN PHARMACEUTICALS LIMITED
			DEFENDANT
JUDGMENT of Mr Justice McCracken delivered the 25th day of March 1999
	This is an application for interlocutory injunctions restraining the Defendant from passing off  its goods as goods of the Plaintiffs and also from infringing the Plaintiffs trade marks.
	The Plaintiffs distribute and market an analgesic which contains, inter alia,
paracetamol, codeine, and caffeine, under the name "Solpadeine".  They claim it is the leading analgesic sold in Ireland, and has been a market leader for many years.  It is sold in three forms, namely capsules, tablets and soluble tablets, and since at least 1990 has been marketed in a red box with the word "Solpadeine" appearing in white type with two yellow lines underneath the word, or part of the word. On the front of the box is a zigzag device in yellow with two white pills appearing on it.  Since 1997 the device has been altered so that the zigzag device only appears half way across the box, and then blends into a feature of two capsules, two tablets or two tablets with bubbles coming out of them, depending upon whether the product is being sold in the capsule, tablet or soluble tablet form.
	In October 1998 the Defendant commenced to market a soluble analgesic in which the active ingredient is ibuprofen, and I am told that it is the first time that ibuprofen has become available in a soluble form.  It is marketed under the name "Solfen" in a box of approximately the same size as that used for the Plaintiffs' efflervescent product, although the design on the front of the box runs horizontally rather than vertically as in the case of the Plaintiff's product.  Over half of the front of the Defendant's box has a background of brick red with the word "Solfen" in white.  The remainder of the box is an impression of a head which is largely dark blue, and contains a zigzag device across it in yellow which, where it leaves the head, becomes a yellow straight line above the word "Solfen".
	The Plaintiff's are registered owners of a number of trade marks in class 5 for pharmaceutical preparations and substances, three of which appear to me to be relevant.  These are:
	(1)	The word 'Solpadeine', registered on 10th March 1970.
	 (2)	 The word 'Solpafen' registered on 27th April 1993.
	 (3)	  The zigzag device with two tablets as used on the Plaintiffs' product up to 1997, which was registered on 10th June 1996.
	
	The trade mark "Solpafen", although registered since 1993, has not in fact been used by the Plaintiffs, but it does still remain on the register.
	The Defendant has applied to register the word "Solfen" which word has been accepted by the Comptroller for registration, but the registration is being opposed by the Plaintiffs.  It should be noted, however, that the word "Solfen" was registered as a trade mark in class 5 by a different owner on 8th October 1986, but that mark was removed from the register on 5th December 1997 because of non-use.  Therefore the words "Solpadeine", "Solpafen" and "Solfen" did in fact co-exist on the register for some years.  Prior to the Trade Marks Act 1996, this would certainly have militated strongly against an argument that what I might call the re-registration of "Solfen" would amount to an infringement of the other marks.  However, section 14(2) of the Trade Marks Act, 1996 has introduced a totally new concept into the definition of infringement.  The relevant portion of that sub-section reads:-
	"A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because:
		(b)     the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
	there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark."
	
	As far as I am aware, this idea of "association" has not been considered by our Courts, but would certainly seem to envisage an extension of the meaning of "confusion" as used in the Trade Marks Act 1963.  At this interlocutory stage of these proceedings it is not for me to say there is in fact a likelihood of association of the Defendant's sign with the Plaintiffs registered trade mark, but I do have to determine whether there is a serious issue to be tried in this regard.  The concept itself comes from article 4(1)(b) of the Council Directive of 21st December 1988, and apparently derived from Benelux Case Law.  In the case of Union v Union Solure (1984) BIE 137, quoted at paragraph 31.25 of Clark and Smyth on Intellectual Property Law in Ireland, it was stated:-
	"There is similarity between a trade mark and a sign when, taking into account the particular circumstances of the case, such as the distinctive power of the trade mark, the trade mark and the sign, each looked at as a whole and in relation to one another, demonstrate such auditive, visual or conceptual resemblance, that associations between sign and trade mark are evoked merely on the basis of this resemblance."
	
	If that is the correct test, then I certainly would hold that there is a serious issue to be tried when all the particular circumstances of this case are looked at at an oral hearing, as to whether there is such a likelihood of association in the present case.
	To turn to the question of passing off, it has to be said that if one enumerates the elements of the Plaintiffs packaging, very many of those elements are also present in the Defendant's packaging.  However, that is not the true test.  What the Court must do is look at the overall get up of the packaging, and the way in which these individual elements are combined.  A number of definitions of passing off have been opened to me, and I personally think that the definition with the most general application is that of Lord Diplock in Warnink v Townsend & Sons (Hull) (1979) AC 731 where he defined the necessary elements:-
	"(1)	 A misrepresentation,
	  (2)	 made by a trader in the course of trade ,
	  (3)	 to perspective customers of his or customers or ultimate consumers of goods or services supplied by him,
	  (4)	 which is calculated to injure the business or good-will of another trader (in the sense that this is a reasonably foreseeable consequence) and
	  (5)	 which causes actual damage to a business or good-will of the trader by whom the action is brought or (in a quia timet action) will probably do so."

	It should be emphasised that the misrepresentation does not have to be a fraudulent or intentional misrepresentation, and while the Plaintiffs in this case have sought to impugn the motives of the Defendant in selecting its get up, I certainly would not be prepared to do so on the evidence as it stands before me.
	This is a somewhat unusual case in that the products themselves are not allowed to be sold on open shelves by pharmacists, or in supermarkets.  They must be sold over the counter, that is only when asked for by name by the purchaser and under the supervision of a qualified pharmacist.  They are somewhat of a half way house between prescription drugs and those which may be freely sold in any supermarket.  This does not mean that the public will not see the packaging on the shelves, but it does mean that the customer will not be able to pick up the package and examine it closely.  It has been suggested in argument on behalf of the Plaintiffs that there is a strong possibility that a customer with an uncertain recollection, and I accept that this is the correct test, might ask  a pharmacist for a pain killer with a phrase such as "sol something" and that confusion would occur.  That confusion would be the confusion of the pharmacist, or the carelessness of the pharmacist in not asking further questions, rather than the confusion of  the customer purchasing the product.  A somewhat similar situation arose in Sterwin AG v Brocades (Great Britain) Limited (1979) RPC 481, where the Plaintiffs drug was in fact a prescription drug.  In that case Whitford J. took the view that there was no likelihood of confusion as doctors and pharmacists were trained to take very great care in their work and, if in doubt, to check before acting.   There is no doubt that in the present case, the Plaintiffs' case is very much weakened by the fact that these are not products on a supermarket shelf but are products which are dispensed by a person trained to take care.   However, while I feel that the Plaintiffs case is a weak one, I think there is enough merit in it for me to hold that there is a serious case to be tried on the issue of passing off but I will return to the weakness in the Plaintiffs case in another context.
	Having determined there is a serious issue to be tried, the next point I have to consider is whether damages are an adequate remedy to the Plaintiffs, should they succeed, or whether damages would be an adequate remedy for the Defendant, should an injunction be granted against it, but should the Defendant ultimately succeed.  In both cases, damages are clearly an adequate remedy in the sense that both parties are very substantial and solvent commercial concerns, and would be well able to pay any award of damages.  The issue remains, however, whether damages could properly compensate in these circumstances.
	As in all these cases, the Plaintiff finds itself in the very difficult position that it does not know, and cannot know, the extent to which it has lost or may lose sales through possible confusion, rather than legitimate business competition.  To this extent, damages can virtually never be an adequate remedy to a Plaintiff, certainly in a situation where there are a number of competing products on the market, the performance of any of which  could affect the Plaintiffs sales.  Similarly, the Defendant can legitimately make the case that, having expended considerable amounts of money in launching a new product, it could not possibly calculate the financial loss if it has to take that product off the market and then possibly re-launch it in a few months time.  This is particularly so when, as in the present case, it is a new type of product, namely a soluble form of ibuprofen, as somebody else may put a soluble  form of the product on the market in the meantime, and effectively get in first.
	I think in the present case damages would not be an adequate remedy for either side, and accordingly in determining whether an interlocutory injunction should be granted I have to look at the balance of convenience.  In doing so, I come back to the strength of the Plaintiffs' case, not in relation to the argument in favour of or against passing off, but in relation to a possible loss should an interlocutory injunction not be granted.  The Plaintiff has sought to support its argument that there is a likelihood of confusion with evidence from two sources. Firstly, there is an affidavit from Joseph Gibbons, who is a sales representative employed by the third named Plaintiff, and secondly there is survey evidence.
	Mr Gibbons purports to give what is of course pure hearsay evidence of three occasions in which he has been told by pharmacists that they were confused.  It should be noted that the Plaintiffs did not produce any evidence from any pharmacist.  However, the Defendant has produced affidavits from two of the three persons named by Mr Gibbons, both of whom say that they were not confused in relation to any similarity between the names on the packet, or indeed the get up.   While hearsay evidence is admissible under certain circumstances in interlocutory applications, I think this shows the dangers of relying upon it.
	With regard to the survey evidence, I can think I can do no more than quote from the judgment of Whitford J. in Imperial Group PLC v Philip Morris Limited (1984) RPC 293 at page 302 where he said:-
	"However satisfactory market research surveys may be in assisting commercial organisations as to how they can best conduct their business, they are by and large,  as experience in other cases has indicated, an unsatisfactory way of trying to establish questions of fact which are likely to be matters of dispute."
	
	In the present case the methodology of the survey has been severely criticised by the Defendant, and a good deal of that criticism seems to me to be valid.  However, in any event my own view is that survey evidence is of little or no value in interlocutory applications, where that evidence is not tested by cross-examination, and indeed all the background facts relating to that evidence, such as the actual questionnaires and answers, are not put in evidence.  In the present case there is also the factor that the survey was taken among members of the public, while it would seem to me to have little relevance unless it were taken among pharmacists.
	The Defendant's product first came on the market about five months ago, and has been aggressively marketed ever since, with a considerable amount of advertising.  I find it somewhat astonishing that in all that time the Plaintiffs have been unable to find anybody who says they were confused.  Of course, this is not a prerequisite for success in the action itself, but it is in my view a highly relevant matter in relation to the balance of convenience.  If there is no evidence that anybody was confused in the last five months, then I think there is only a weak case for saying that anybody will be confused, or the Plaintiffs will suffer any loss, in the next three or four months pending the full hearing of this action.  On the other hand, if the Defendant has to take its product off the shelves and repackage it, and therefore re-market it, this could cause an enormous loss in the short term.  I am prepared to do everything possible to ensure a speedy trial, and the case will certainly be heard before the Long Vacation.  In those circumstances I have no doubt that the balance of convenience is against the granting of an interlocutory injunction and I refuse the relief claimed.