Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Anor [2015] EWCA Civ 54 (06 February 2015)

Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Anor [2015] EWCA Civ 54 (06 February 2015)

Enforcement of the REGURIN trade mark against Doncaster's parallel imports created an artificial partitioning of the UK market for trospium chloride, as Doncaster was excluded from a substantial part of the market and adoption of an own brand was not a realistic alternative; rebranding was objectively necessary for effective access.

Citation
[2015] EWCA Civ 54
Parties
Claimant/respondent: Speciality European Pharma Ltd; Defendant/appellant: Doncaster Pharmaceuticals Group Ltd; Defendant/respondent: Madaus GmbH
Jurisdiction
England and Wales
Judgment Date
06 February 2015
Procedural Posture
Appeal From High Court (chancery Division) / Court of Appeal Judgment
Outcome
Appeal allowed
Legal Topics
Trade Mark Infringement, Parallel Importation, Free Movement of Goods, Rebranding of Pharmaceuticals
Intellectual Property European Union Law Pharmaceutical Law Trade Mark Infringement Parallel Importation Free Movement of Goods Rebranding of Pharmaceuticals

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Parties

Speciality European Pharma Ltd

Claimant/respondent

Doncaster Pharmaceuticals Group Ltd

Defendant/appellant

Madaus GmbH

Defendant/respondent

Procedural Posture

Appeal From High Court (chancery Division) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether parallel importers can rebrand pharmaceuticals with the trade mark used in the importing Member State
  2. 2 Whether enforcement of the trade mark creates an artificial partitioning of the market contrary to Article 36 TFEU

Ratio Decidendi

Enforcement of the REGURIN trade mark against Doncaster's parallel imports created an artificial partitioning of the UK market for trospium chloride, as Doncaster was excluded from a substantial part of the market and adoption of an own brand was not a realistic alternative; rebranding was objectively necessary for effective access.

Court Disposition

Appeal allowed

Orders

  • Doncaster permitted to rebrand parallel imported trospium chloride with REGURIN mark in UK
  • SEP and Madaus cannot enforce REGURIN trade mark to prevent such rebranding