Flynn Pharma Ltd v Drugsrus Ltd & Anor

Flynn Pharma Ltd v Drugsrus Ltd & Anor

The Defendants' use of the 'Flynn' mark constitutes trade mark use and is not merely descriptive. The BMS criteria for allowing rebranding of parallel imports do not apply because the goods were not placed on the market in the exporting state by or with the consent of Flynn Pharma, and there is no sufficient corporate or contractual link to establish unitary control over the quality of both products. Therefore, Flynn Pharma's trade mark rights are not exhausted, and it is entitled to prevent the Defendants from rebranding imported Epanutin as Phenytoin Sodium Flynn.

Parties
Claimant: Flynn Pharma Limited; First Defendant: Drugsrus Limited; Second Defendant: Tenolol Limited
Jurisdiction
England and Wales
Judgment Date
06 October 2015
Procedural Posture
Intellectual Property (trade Mark Infringement) / Judgment After Full Trial
Outcome
Claim for trade mark infringement succeeds.
Legal Topics
Trade Mark Infringement, Parallel Importation, Exhaustion of Rights, Pharmaceutical Regulation, Free Movement of Goods
Intellectual Property Law European Union Law Trade Mark Infringement Parallel Importation Exhaustion of Rights Pharmaceutical Regulation Free Movement of Goods

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Parties

Flynn Pharma Limited

Claimant

Drugsrus Limited

First Defendant

Tenolol Limited

Second Defendant

Procedural Posture

Intellectual Property (trade Mark Infringement) / Judgment After Full Trial

Legal Issues

  1. 1 Whether the Defendants' proposed use of the 'Flynn' mark constitutes trade mark infringement under section 10(1) of the Trade Marks Act 1994
  2. 2 Whether such use is protected by section 11(2)(b) of the 1994 Act as descriptive use
  3. 3 Whether Flynn Pharma's reliance on its trade mark rights to prevent parallel imports is contrary to the free movement provisions of the TFEU (Articles 34 and 36)

Ratio Decidendi

The Defendants' use of the 'Flynn' mark constitutes trade mark use and is not merely descriptive. The BMS criteria for allowing rebranding of parallel imports do not apply because the goods were not placed on the market in the exporting state by or with the consent of Flynn Pharma, and there is no sufficient corporate or contractual link to establish unitary control over the quality of both products. Therefore, Flynn Pharma's trade mark rights are not exhausted, and it is entitled to prevent the Defendants from rebranding imported Epanutin as Phenytoin Sodium Flynn.

Court Disposition

Claim for trade mark infringement succeeds.

Orders

  • Injunction restraining the Defendants from infringing the Flynn trade mark by importing and rebranding Epanutin as Phenytoin Sodium Flynn.
  • Order for delivery up or destruction on oath of all infringing articles.