Now that the Kats have your attention, here's another note on a recent case which has, or at any rate should have, a predictable outcome. It's Flynn Pharma Ltd v Drugsrus Ltd and Tenolol Ltd  EWHC 2759 (Ch), a 6 October 2015 decision of Mrs Justice Rose sitting in the Chancery Division of the High Court, England and Wales. It is another pharma parallel importation case. Readers will recall that, while trial courts are quite good at dealing with these matters and providing a respectable level of protection for trade mark owners and potentially confused or deceived consumers, appellate courts are more inclined to take a different view. Merpel would not be at all surprised if this decision, which looks perfectly good to her, goes to the Court of Appeal and comes out looking somewhat different.
Said Flynn, this proposed use of its name would infringe under the Trade Marks Act 1994 s 10(1) [= Trade Mark Directive 2008/95, Art. 5(1)(a)] since it constituted the use of an identical sign for goods identical to those for which the sign was registered. No, said the defendants, we are only using the F-word as a description of the goods within s 11(2)(b) [= Art.6(1)(b) of the Directive]. They relied on a disclaimer on the packaging which stated that their products were not manufactured or sold by Flynn but were equivalent to Flynn's phenytoin sodium products. What's more, they said, Flynn had no right to sue them at all: its reliance on trade mark rights under domestic legislation to stop the imports constituted a disguised restriction on trade contrary to the free movement provisions of the Treaty on the Functioning of the European Union (TFEU).
* The use of the word "Flynn" did not describe the goods that the defendants planned to import. "Flynn" was not a word associated with medicines or ingredients that denoted the medicine's qualities or characteristics. It would be perceived by consumers as a mark of origin, indicating that the product came from Flynn as the entity responsible for the goods' quality. That was clearly a trade mark use of the sign.
* Though Art. 34 of the TFEU prohibited quantitative restrictions on imports, or equivalent measures, between Member States, Art.36 tempered that apparently absolute provision by allowing prohibitions or restrictions on imports that were justified in protecting industrial or commercial property -- so long as they did not constitute a disguised restriction on trade.
|Not everyone is fond of Flynn, a business|
that, it is claimed, has a spot of 'previous'
when it comes to importing Epanutin