Re-branding and parallel imports - free trade trumps trade mark rights?

Re-branding and parallel imports - free trade trumps trade mark rights?
Has the Court of Appeal offered fresh hope to pharma importers seeking to improve their access to markets by using third party’s trade marks?
Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd and another [2015] EWCA Civ 54,[2015] All ER (D) 87 (Feb)

 concerns parallel imports of pharmaceutical products and considers the balance between ensuring free trade in the EU while protecting trade mark rights. The issue on appeal was summarised by the court as:

‘[…] when a pharmaceutical manufacturer markets the identical product in EU Member State A under trade mark X and in EU Member State B under trade mark Y, in what circumstances can a parallel importer take the goods (marked X) from state A to state B and re-brand them with mark Y?’

What is the background to this case?

SEP sold and distributed pharmaceutical drugs in Europe including a drug called tropsium chloride which SEC sold as ‘Regurin’ in the UK (its right to do so arising from an exclusive trade mark licence agreement with the manufacturer). SEP sold the same drug as ‘Céris’ in France and ‘uriVesc’ in Germany.

Doncaster originally imported SEP’s tropsium chloride from France (Céris) to the UK where it over-stickered the box with the drug’s generic name, tropsium chloride. Over-stickering is common practice in parallel imports along with repackaging and de-branding. Doncaster sold its imported product at a significant discount to SEP’s Regurin.

In 2009, around the time when SEP’s patent for tropsium chloride expired, Doncaster continued to import the drug from France but instead of over-stickering boxes with the drugs generic name, it began to re-brand it as ‘Regurin’ (the trade mark exclusively licensed to SEP). Doncaster did the same when it imported the drug (uriVesc) from Germany. In an effort to enforce its rights in the mark REGURIN, SEP brought a claim against Doncaster for trade mark infringement.

(c) opensourceway / flickr

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