Intellectual Property Enterprise Court

IP-2024-000024 - [2024] EWHC 951 (IPEC)

Fecha: 26-Abr-2024

Stage 4: If damages are not an adequate remedy for either side, where does the balance of convenience lie?

Stage 4: If damages are not an adequate remedy for either side, where does the balance of convenience lie?

116.

If I am wrong that damages are an adequate remedy to the Claimant and the Defendant, then damages would have been equally unquantifiable for both sides. In that situation, the balance of convenience would have come into play.

117.

Both parties concentrated their submissions on this issue by reference to the status quo. It was common ground that the status quo should be assessed as of 16 February 2024, the date of the application for interim relief (and the day after the Claim Form had been issued).

118.

The evidence from the Defendant about its activities in relation to the Seplou Sheath can be summarised as follows (in chronological order):

In July 2023, the Defendant made its first enquiries about becoming a distributor for the Seplou range of products.

ii)

On 23 October 2023, the Defendant secured registration at the MHRA for a range of products supplied to it by Seplou, including the Seplou Sheath.

iii)

On 14 November 2023, the Defendant received samples of the Seplou Sheath.

iv)

On 17 November 2023, the Defendant attended the annual meeting of the Eastern Urology Group where it presented the Seplou Sheath.

On 28 November 2023, the Defendant applied to add the Seplou Sheath to its list of endourological products available for supply to the NHS via the NHS Framework.

vi)

On 29 November 2023, the Defendant responded to an enquiry from a hospital in the UK to supply the Seplou Sheath and provided a quotation. The original quotation was at a unit price of £160, but this was reduced to £125 by the time the order was received and the product despatched, in line with the NHS pricing.

vii)

On 9 February 2024, the Defendant attended a meeting of the Royal Society of Medicine in London where it had discussion with surgeons about the Seplou Sheath.

viii)

As of 20 February 2024, the Defendant had received four orders from 3 NHS hospitals and one private hospital as summarised in the table at paragraph 40 above. Two of these orders for 45 Seplou Sheaths were before 16 February, being the relevant date for assessing the status quo in this case. The Defendant inherited the UCLH order from a previous distributor of the Seplou Sheath after that distributor received a cease and desist letter from the Claimant. The higher price for that order had been set by the previous distributor.

ix)

On 22 February 2024, the Seplou Sheath went live on the NHS Supply Chain website. The Defendant could only supply Seplou Sheaths to NHS hospitals once this approval had been granted.

However, the NHS Supply Chain team listed the Seplou Sheath at the wrong price (with £125 being listed as the price per box of 10 sheaths, rather than the unit price per sheath). The Defendant is liaising with the NHS Supply Chain management to have this error corrected, but it has caused delay in the Defendant's ability to despatch products to meet customer orders.

xi)

On or between 8-12 March 2024, the Defendant despatched the first units of the Seplou Sheath to customers (Mr George Reynolds and Mr Charles Reynolds give different dates, but nothing turns on this as they are both after 16 February).

xii)

On 12 March 2024, the Defendant started actively marketing the Seplou Sheath product.

xiii)

An order for a further batch of Seplou Sheaths has been placed with the manufacturer in China and these are expected to arrive in the UK by the end of March.

119.

The Claimant argued that the Defendant was not yet on the market and maintenance of the status quo weighed in favour of granting an injunction. In support of that argument, it relied on the following:

the evidence from Mr George Reynolds that the Defendant did not start “actively marketing” the Seplou Sheath until mid-March;

ii)

the fact that, by 16 February 2024, the Defendant had only received two orders for what it described as “small numbers”;

iii)

the fact that the Defendant had only presented or discussed the Seplou Sheath at two meetings;

iv)

the fact that the Seplou Sheath does not appear on the Defendant’s website. I was not shown a copy of the website so I do not know what it looks like or if or how other products are marketed on it;

the fact that there was no evidence of any outstanding orders.

120.

I do not think that this represents a fair characterisation of the evidence. The evidence shows that the Defendant had started dealing in the Seplou Sheath in the UK in November 2023. The Claimant was aware of that at the time. The Defendant immediately started promoting the product at clinical meetings and offering the product for sale. By 16 February 2024 it had accepted orders for sale and supply from two hospitals. Those orders were for 45 units. This amounts to a reasonable proportion of the predicted sales that the Defendant expects to make over the next 12 months (approximately 10%); it is certainly not de minimis in that context. In my view, the Defendant was clearly on the market by the relevant date. I would have rejected the Claimant’s submission to the contrary.

121.

Counsel for the Defendant submitted that the injunction which the Claimant sought would enjoin the Defendant from conduct it had already commenced. He argued that, as a result, if the injunction was granted it would not preserve the status quo.

122.

I would have accepted that submission. If it had been necessary for me to reach a view in respect of Stage 4, I would have held that the Defendant had already commenced sufficient trading at the relevant date to mean that the status quo weighed in favour of refusing the injunction. Moreover, the balance of the risk of injustice would, in my view, have come down in favour of the Defendant because, as indicated above, calculating damages to the Defendant in Period 2 would have been more difficult than calculating damages to the Claimant.