Beecham Group Ltd v B-M Group (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Botha J, Franklin J and Van Reenen J
• Judgment Date: 30 September 1976
• Court: Transvaal Provincial Division

Franklin, J.:

This is an appeal against the judgment by the Commissioner of Patents (NICHOLAS, J.) refusing an application for a temporary interdict restraining the infringement by the G respondent of South African patent No. 63/4795, pending the determination of an action for a final interdict and other relief. I shall, for the sake of convenience, refer to the appellant as "Beecham" and to the respondent" as "Bristol" and to Beecham's patent, No. 63/4795 as "the 63 patent". On 27 August 1975 the Commissioner granted leave to appeal against H his judgment, but reserved the question of costs incurred in the application for leave to appeal for the decision of this Court.

The facts which gave rise to the application for a temporary interdict were conveniently summarised by the Commissioner as follows:

"Patent No. 63/4795 relates to 'new penicillins'. The specification refers to Beecham's earlier South African patent No. 59/3827 in which were described and claimed penicillin derivatives of a certain general formula, which were stated to be

'... of value as antibacterial agents, as nutritional supplements in animal feeds, as agents for the treatment of mastitis in cattle and as therapeutic agents in

Franklin J

poultry and animals, including man, in the treatment especially of infectious diseases caused by Gram-positive and Gram-negative bacteria.'

The specification goes on to say that it has now been found

'... that certain compounds falling within the general formula (1) above have particularly desirable properties A especially in respect of their activity against Gram-negative bacteria. Accordingly, the present invention provides new penicillins of the general formula':

which is then set out. This formula covers the penicillin known as amoxycillin. In September of this year, Beecham learned that Bristol had made a tender to supply to the Transvaal Provincial Administration for a twelve-month period amoxycillin capsules and amoxycillin syrup in suspension, under Bristol's brand name B of 'Hiconcil', the generic name of which is amoxycillin trihydrate. This substance admittedly falls within the scope of claim 2 of Beecham's 63 patent. The present proceedings were accordingly begun."

At the commencement of the hearing of this appeal, Mr. Schreiner, who appeared for Beecham, made an application for the filing of fresh evidence on appeal. This evidence related C to the fact that since the decision on the application by the Commissioner it had come to Beecham's knowledge that Bristol had supplied Hiconcil amoxycillin capsules to the Transvaal Provincial Administration, and that Bristol's Hiconcil brand of amoxycillin was being distributed to the general trade through wholesalers and was being promoted to the medical profession. D Mr. Osborn, who appeared for Bristol, did not oppose the application, but reserved his rights in regard to the weight, if any, to be attached to this evidence. Since the application complied with all the legal requirements for the admission of new evidence on appeal, we admitted the evidence subject to the reservation of Bristol's rights.

E The first question which I consider should be dealt with is the test to be applied in cases in which a temporary interdict is sought to restrain the infringement of a patent pending action. The Commissioner stated the requirements which must be shown by all applicant in such cases as follows:

"The legal principles to be applied in a case such as this are F reasonably clear. In order to obtain a temporary interdict the applicant must show (i) a strong prima facie case for the validity of its patent; (ii) an infringement or threatened infringement of the patent by the respondents; and (iii) the absence of any other adequate remedy, e.g. by way of damages."

He then added the following qualification:

"Even if those three requirements be established it does not, G of course, follow that a temporary interdict will necessarily be granted. That is a discretionary remedy and in the exercise of its discretion the Court will have regard to such matters as the balance of convenience."

In stating the three requirements for a temporary interdict referred to above, the Commissioner felt himself bound by the decision of the Full Bench of this Division in the case of H Griessel v Phoenix Foundry, 1929 T.P.D. 806 at p. 810, despite the recent decision of the House of Lords in American Cyanamid Co, v Ethicon L.W., (1975) 1 All E.R. 504. In that case the House of Lords held that there was no rule in England whereby an applicant for an interlocutory injunction against infringement of a patent must establish a "probability" as to validity, or a "prima facie case", or a "strong prima facie case "; and that all that is required is that the Court

"should be satisfied that the claim is not frivolous or vexatious; in other words, that there is a serious question to be tried"

Franklin J

(per Lord DIPLOCK at p. 510d ). The Commissioner considered that, although there was in his view no apparent reason why the grant of temporary interdicts for infringement of patents should not be governed by the same principles as in other actions, the authority of Griessel's case which he was bound A was not derogated from by single Judge decisions in non-patent cases such as Webster v Mitchell, 1948 (1) SA 1186 (W), and Ndauti v Kgami and Others, 1948 (3) SA 27 (W)

The decision in Griessel's case was based upon a rule of English practice relating to the grant or refusal of interlocutory relief as it existed in 1929. That rule of practice has now been reviewed and expressly disapproved by B the House of Lords in the American Cyanamid case, supra. That being so, I do not think that this Court should consider itself bound by the decision of a Court of equal jurisdiction which is out of line with the general current of authority in our Courts relating to the principles governing grant or refusal of temporary interdicts. I am fortified in this view by C the consideration that since 1929 Griessel's case has only once been followed by a single Judge in the Witwatersrand Local Division (in Tesla Radio Corporation of SA (Pty.) Ltd. v Mullard South Africa (Pty.) Ltd., 1957 (4) SA 140 (W)); and that, although it was referred to by HOLMES, J.A., in Letraset Ltd. v Helios Ltd., 1972 (3) SA 245 (AD) at p. 249G, that reference was made merely in relation to the trite proposition D (stated at p. 811 of the judgment) that the function of the body of the specification is to instruct the public how to carry out the invention when the field is eventually open.

On the other hand, I consider that the rule of practice which has now been laid down by the House of Lords in the American E Cyanamid case is not in accordance with our law in South Africa and should not be followed. I should perhaps add at this stage that the decision in that case has been subjected to trenchant criticism by the Court of Appeal in England, most notably by Lord DENNING, M.R., in Fellowes and Another v Fisher, (1975) 2 All E.R. 829 (C.A.) at p. 836a - b, on the ground that it is impossible to reconcile it with the earlier F decision of the House of Lords in Stratford v Lindley, (1964) 1 All E.R. 102. In my view the principles stated by the Court of Appeal in England in the two earlier cases of Hubbard and Another v Vosper and Another, (1972) 1 All E.R. 1023 (C.A.), and Evans Marshall & Co. Ltd. v Bertola S.A., (1973) 1 All E.R. 992 (C.A.), accord more closely with the current of G authority in South Africa on this subject than does the American Cyanamid case, supra. In Hubbard's case, supra at p. 1029g - h, Lord DENNING, M.R., said this:

"In considering whether to grant an interlocutory injunction, the right course for a Judge is to look at the whole case. He must have regard not only to the strength of the claim but also to the strength of the defence, and then decide what is best to be done. Sometimes it is best to grant an injunction so as to H maintain the status quo until the trial. At other times it is best not to impose a restraint on the defendant but leave him free to go ahead. For instance, in Fraser v Evans, (1969) 1 All E.R. 8, although the plaintiff owned the copyright, we did not grant an injunction, because the defendant might have a defence of fair dealing. The remedy by interlocutory injunction is so useful that it should be kept flexible and discretionary. It must not be made the subject of strict rules."

So, too, MEGAW, L.J., said (at pp. 1030h - 1031a ):

"It must be looked at on the whole of the case; the existence of the right and of any defences that are asserted in relation to the admitted existence of that right.

Franklin J

In addition, one has to take into account the evidence of the alleged breach, the facts relating to the alleged breach, and even then there is no firm and invariable criterion which can be laid down on the basis of the prospects of success in the action because frequently one has to consider also the balance A of convenience, as well as the status quo. One can readily imagine a case in which the plaintiff appears to have a 75 per cent chance of establishing his claim, but in which the damage to the defendant from the granting of the interlocutory injunction, if the 25 per cent defence proved to be right, would be so great compared with the triviality of the damage to the plaintiff if he is refused the injunction, that an interlocutory injunction should be refused. To my mind it is impossible and unworkable to lay down certain standards in relation to different issues which fall to be considered in an B application for an interlocutory injunction. Each case must be decided on a basis of fairness, justice and common sense in relation to the whole of the...