Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Anor

Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Anor

The Court of Appeal held that enforcement of the REGURIN trade mark against Doncaster's parallel imports did create an artificial partition of the market, as Doncaster was hindered from accessing a significant portion of the market and adopting its own brand was not a realistic alternative due to supply chain uncertainties inherent to parallel importers. Therefore, it was objectively necessary for Doncaster to re-brand in order to gain effective access to the market, and the trade mark could not be enforced to prevent this.

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
Civil Appeal / Court of Appeal Judgment
Outcome
Appeal allowed
Legal Topics
Trade Marks, Parallel Imports, Free Movement of Goods, Re Branding, Pharmaceuticals
Intellectual Property Law European Union Law Trade Marks Parallel Imports Free Movement of Goods Re Branding Pharmaceuticals

Case Brief

Summary, issues, holding and outcome

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Parties

Speciality European Pharma Ltd

Claimant/respondent

Doncaster Pharmaceuticals Group Ltd

Defendant/appellant

Madaus GmbH

Defendant/respondent

Procedural Posture

Civil Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether a parallel importer can lawfully re-brand imported pharmaceuticals with the trade mark used in the importing Member State when the same product is marketed under a different mark in the exporting Member State.
  2. 2 Whether enforcement of the trade mark constitutes an artificial partitioning of the market contrary to Article 36 TFEU.

Ratio Decidendi

The Court of Appeal held that enforcement of the REGURIN trade mark against Doncaster's parallel imports did create an artificial partition of the market, as Doncaster was hindered from accessing a significant portion of the market and adopting its own brand was not a realistic alternative due to supply chain uncertainties inherent to parallel importers. Therefore, it was objectively necessary for Doncaster to re-brand in order to gain effective access to the market, and the trade mark could not be enforced to prevent this.

Court Disposition

Appeal allowed

Orders

  • The appeal is allowed; enforcement of the REGURIN trade mark to prevent re-branding by Doncaster is not permitted under Article 36 TFEU.