Limitations to freedom to import

March 26, 2024

Was an importer free to use the trademark owner’s mark where the trademark owner had no control over the product imported?

Our Intellectual Property team acted for a parallel importer who wished to utilise the trademark of a UK distributor in order to achieve market penetration for a product imported from a European Union state. The Court of Appeal held that the UK distributor had no control over the imported product. Consequently, the UK distributor had a legitimate interest in enforcing its mark against a product that it had itself not placed on the market, and even though the imported product was therapeutically identical to the UK distributor’s product, and produced by the same manufacturer.

Judgements and media

For academic and practice commentary on the case, see: › news › 62-f…Flynn Pharma Ltd v Drugsrus Ltd and Tenolol Ltd – Palmer Biggs IP Solicitors › 2015/11Parallel Imports – Flynn Pharma Ltd v Drugsrus Ltd – NIPC Law › jpv237Trade marks, parallel importation of re- branded pharma products and use of a trade mark in the generic drug name › …Court of Appeal upholds enforcement of pharmaceutical trademark against parallel importers | World Trademark Review