Merck Canada Inc & Anor v Sigma Pharmaceuticals Plc [2013] EWCA Civ 326 (18 April 2013)

Merck Canada Inc & Anor v Sigma Pharmaceuticals Plc [2013] EWCA Civ 326 (18 April 2013)

The Court of Appeal found that the interpretation of the Specific Mechanism, including whether the patent holder must demonstrate intention to enforce rights and the adequacy of notification, was not clear and required a reference to the Court of Justice. The court rejected Sigma's estoppel argument, holding that Merck was under no legal duty to respond to notification letters and that Sigma's reliance was not reasonable. The order for delivery up and destruction of infringing goods was upheld as a proportionate remedy, judged as at the date of the order.

Citation
[2013] EWCA Civ 326
Parties
Claimant/respondent: Merck Canada Inc; Claimant/respondent: Merck Sharp & Dohme Ltd; Defendant/appellant: Sigma Pharmaceuticals plc
Jurisdiction
England and Wales
Judgment Date
18 April 2013
Procedural Posture
Appeal / Court of Appeal Judgment With Reference to the Court of Justice
Outcome
Reference to the Court of Justice for preliminary ruling; appeal not finally determined pending CJEU decision
Legal Topics
Patent Infringement, Parallel Importation, Supplementary Protection Certificates, Free Movement of Goods, EU Accession Derogations, Estoppel, Remedies for Infringement
Intellectual Property Law European Union Law Patent Infringement Parallel Importation Supplementary Protection Certificates Free Movement of Goods EU Accession Derogations Estoppel +1 more

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Parties

Merck Canada Inc

Claimant/respondent

Merck Sharp & Dohme Ltd

Claimant/respondent

Sigma Pharmaceuticals plc

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment With Reference to the Court of Justice

Legal Issues

  1. 1 Interpretation of the Specific Mechanism derogation for pharmaceutical patents under EU accession arrangements
  2. 2 Whether patent holder must demonstrate intention to enforce rights before relying on derogation
  3. 3 Adequacy and recipient of notification under the Specific Mechanism

Ratio Decidendi

The Court of Appeal found that the interpretation of the Specific Mechanism, including whether the patent holder must demonstrate intention to enforce rights and the adequacy of notification, was not clear and required a reference to the Court of Justice. The court rejected Sigma's estoppel argument, holding that Merck was under no legal duty to respond to notification letters and that Sigma's reliance was not reasonable. The order for delivery up and destruction of infringing goods was upheld as a proportionate remedy, judged as at the date of the order.

Court Disposition

Reference to the Court of Justice for preliminary ruling; appeal not finally determined pending CJEU decision

Orders

  • Reference to the Court of Justice on interpretation of the Specific Mechanism
  • Order for delivery up and destruction of infringing goods upheld, subject to outcome of reference