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Speciality European Pharma Ltd v (1) Doncaster Pharmaceuticals Group Ltd & (2) Madaus GmbH [2013] EWHC 3624

Case Summary  |  Judgment  |  20 November 2013

 

Martin Howe QC and Iona Berkeley, instructed by Maitland Walker LLP, appeared for the Defendant, Doncaster Pharmaceutical Group, in this High Court trade mark infringement case before Mrs Justice Asplin concerning the parallel importation of pharmaceutical products in the fields of urology.

The case concerned the importation by the Defendant, Doncaster Pharmaceuticals Group, of the Manufacturer’s (Madaus GmbH) anti-diuretic drug with the active ingredient trospium chloride, originally put on the market in France and Germany by Madaus bearing the marks Urivesc and Ceris and the sale of these repackaged goods by the Defendant under the Manufacturer’s UK trade mark, REGURIN. The Claimant was Speciality European Pharma Ltd, the Manufacturers’ UK trade mark licensee and distributor.

The main issue in the case was whether the use of the REGURIN trade mark in the UK by the Defendant was necessary for the Defendant to have effective market access in the UK. The Defendant argued that the attempted enforcement by the Claimant of its trade mark rights in the REGURIN mark in the United Kingdom in order to prevent the re-branding by Doncaster of the Madaus products which Madaus had consented to be placed on the market elsewhere in Europe under other marks constituted a quantitative restriction on imports or a measure having equivalent effect within the meaning of Article 34 of the Treaty on the Functioning of the European Union which was not permitted by Article 36 TFEU because it amounted to a means of arbitrary discrimination or a disguised restriction on trade between Member States (see ECJ Case 379/97 Pharmacia & Upjohn SA v. Paranova A/S [2000] 1 CMLR 51). The week long High Court trial was heard in October 2013 before Mrs Justice Asplin. The Judge found for the Claimant, finding that there had been trade mark infringement by the Defendant as the Judge found it was not objectively necessary for the Defendant to use the REGURIN trade mark to have effective access to the market in the UK. The case is now reported at Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd [2013] EWHC 3624 (Ch) [2014] ETMR 11