What the Appeal was about
The pharmaceutical company Eli Lilly and Co ("Lilly") has developed a drug called pemetrexed which it markets under the brand name Alimta for the treatment of various types of cancer. Used on its own, pemetrexed has unpleasant side effects that can sometimes be fatal but these can be avoided when it is administered as a compound called pemetrexed disodium in combination with vitamin B12.
The use of pemetrexed disodium in the manufacture of a medicament for use in combination with vitamin B12 (and, optionally, folic acid) for the treatment of cancer is monopolized in the United Kingdom, France, Italy, Spain and a number of other European countries by European patent number No 1 313 508. There are also corresponding patents for the same invention in many other countries around the world.
Until the Civil Procedure Rules ("CPR") came into force in 1999 solicitors specializing in intellectual property law heralded litigation with an ultimatum called a letter before action. Written in haughty if not insulting terms and accompanied by a humiliating form of undertakings, they were intended to shock the recipient into submission. They rarely achieved the desired result. As often as not they were simply ignored. Occasionally, they were answered by a defiant response. As a result, a lot of actions were launched that could easily have been settled without recourse to litigation.
"The objective of the Practice Direction and the Pre-Action Protocols is to enable the parties to identify the issues in dispute and, wherever possible, to resolve them through negotiation or some other fo…
An exception to the rule that a trade mark registration cannot be challenged for non-use in the first 5 years after registration is where the application to register the trade mark was made in "bad faith". The legislative mechanism is provided by s.47 (1) of the Trade Marks Act 1994:
"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."
Subsection (6) of s.3 provides:
"A trade mark shall not be registered if or to the extent that the application is made in bad faith."