Flynn Pharma Ltd v Drugsrus Ltd & Anor [2017] EWCA Civ 226 (06 April 2017)

Flynn Pharma Ltd v Drugsrus Ltd & Anor [2017] EWCA Civ 226 (06 April 2017)

Flynn Pharma's trade mark rights in the name Phenytoin Sodium Flynn are not exhausted in respect of packages of Epanutin placed on the market in other Member States; Flynn is entitled to prevent the relabelling of the parallel imported product by the appellants. The agreements between Pfizer and Flynn do not establish unitary control over the quality of both products, nor does Flynn have control over Epanutin in other Member States. The use of Flynn is trade mark use, not merely an indication of product characteristics. Enforcement of the mark does not constitute a disguised restriction under Article 36 TFEU.

Citation
[2017] EWCA Civ 226
Parties
Claimant/respondent: Flynn Pharma Limited; Defendant/appellant: DrugsRus Limited; Defendant/appellant: Tenolol Limited
Jurisdiction
England and Wales
Judgment Date
06 April 2017
Procedural Posture
Appeal / Court of Appeal Judgment
Outcome
Appeal dismissed
Legal Topics
Trade Mark Exhaustion, Parallel Imports, Free Movement of Goods, Article 36 TFEU, Trade Mark Use, Rebranding, Pharmaceutical Regulation
Intellectual Property European Union Law Trade Mark Exhaustion Parallel Imports Free Movement of Goods Article 36 TFEU Trade Mark Use Rebranding +1 more

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Parties

Flynn Pharma Limited

Claimant/respondent

DrugsRus Limited

Defendant/appellant

Tenolol Limited

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether enforcement of Flynn's trade mark rights against parallel imports rebranded as Phenytoin Sodium Flynn constitutes a disguised restriction on trade under Article 36 TFEU
  2. 2 Whether the use of the trade mark Flynn by the appellants is trade mark use or protected indication under section 11(2)(b) Trade Marks Act 1994
  3. 3 Whether it is necessary for parallel importers to rebrand to gain effective access to the UK market

Ratio Decidendi

Flynn Pharma's trade mark rights in the name Phenytoin Sodium Flynn are not exhausted in respect of packages of Epanutin placed on the market in other Member States; Flynn is entitled to prevent the relabelling of the parallel imported product by the appellants. The agreements between Pfizer and Flynn do not establish unitary control over the quality of both products, nor does Flynn have control over Epanutin in other Member States. The use of Flynn is trade mark use, not merely an indication of product characteristics. Enforcement of the mark does not constitute a disguised restriction under Article 36 TFEU.

Court Disposition

Appeal dismissed

Orders

  • Flynn Pharma Limited is entitled to prevent the relabelling of parallel imported Epanutin as Phenytoin Sodium Flynn.
  • No relief granted to appellants under Article 36 TFEU or section 11(2)(b) Trade Marks Act 1994.