Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Anor

Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Anor

There is no objective necessity for Doncaster to rebrand parallel imported pharmaceuticals as Regurin or Regurin XL to gain effective access to the UK market; Doncaster can access the majority of the market by selling under the generic name or another brand, and the use of the Regurin mark is sought only for commercial advantage, not due to market structure or regulatory barriers.

Parties
Claimant: Speciality European Pharma Ltd; First Defendant: Doncaster Pharmaceuticals Group Ltd; Second Defendant: Madaus GmbH
Jurisdiction
England and Wales
Judgment Date
20 November 2013
Procedural Posture
Intellectual Property / Judgment After Trial
Outcome
Claim allowed; trade mark infringement found against Doncaster.
Legal Topics
Trade Mark Infringement, Parallel Imports, Rebranding of Pharmaceuticals, Market Access Under TFEU
Intellectual Property European Union Law Trade Mark Infringement Parallel Imports Rebranding of Pharmaceuticals Market Access Under TFEU

Case Brief

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Parties

Speciality European Pharma Ltd

Claimant

Doncaster Pharmaceuticals Group Ltd

First Defendant

Madaus GmbH

Second Defendant

Procedural Posture

Intellectual Property / Judgment After Trial

Legal Issues

  1. 1 Whether Doncaster is entitled under Articles 34 and 36 TFEU to affix the Regurin mark to parallel imported pharmaceuticals from other EU Member States
  2. 2 Whether it is objectively necessary for Doncaster to re-brand imported products as Regurin to gain effective market access in the UK

Ratio Decidendi

There is no objective necessity for Doncaster to rebrand parallel imported pharmaceuticals as Regurin or Regurin XL to gain effective access to the UK market; Doncaster can access the majority of the market by selling under the generic name or another brand, and the use of the Regurin mark is sought only for commercial advantage, not due to market structure or regulatory barriers.

Court Disposition

Claim allowed; trade mark infringement found against Doncaster.

Orders

  • Declaration that Doncaster infringed the Regurin trade mark by rebranding parallel imports as Regurin and Regurin XL.
  • Injunction to restrain Doncaster from further infringement by use of the Regurin mark.