Martin Howe QC and Henry Ward, instructed by RR Sanghvi & Co., appeared on behalf of the Defendants in this UK and community trade mark infringement claim arising out of parallel importation of pharmaceutical products Epanutin/Phenytoin Sodium Flynn.
For many years Pfizer had sold its phenytoin sodium product under the name Epanutin in the UK as well as elsewhere in the EU. In 2012, it sold the MA for the product in the UK only to the Claimant Flynn, which sought to genericise the product in order to escape price capping. However, the MHRA insisted that Flynn add the word Flynn to the designation Phenytoin Sodium, since the product had a narrow therapeutic index and patients were recommended to be maintained on exactly that product. Flynn then applied for a trademark for the word Flynn, and thereby seek to prevent any sale of parallel imports of the (identical) Epanutin product under that name. The result was that Pfizer and Flynn were able to increase the price of the Epanutin/Phenytoin Sodium Flynn product by around 23 times. The Defendant sought freedom to market Phenytoin Sodium Flynn products by reference to that designation, on the basis that it was objectively necessary to do so in order to access the market.
Finding for the Claimant, Mrs Justice Rose held that the Defendants’ rebranding was trade mark use and did not fall within section 11(2)(b) of the Trade Marks Act 1994. Further, although it would have been objectively necessary to brand the product Flynn in order to access the market, the Defendants could not rely on the criteria for permissible relabelling given in Bristol Myers Squibb v Paranova [1997] FSR 102 since neither the corporate nor the contractual links between the Claimant and Pfizer established that the entity which was seeking to enforce the trade mark in the UK (Flynn) had control over both the production of Epanutin capsules in the exporting state and Phenytoin Sodium Flynn capsules in the UK.