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ES – MSD & Intervet v. Bayer / Ex Parte Interim Injunction

03 Nov 2014

Merck Sharp & Dohme Animal Health, S.L & Intervet International, B.V. v. Bayer Hispania, S.L., Commercial Court No. 1 of Barcelona, Spain, 29 July 2014, Docket No. 727/2014.

MSD companies Merck Sharp & Dohme Animal Health, S.L. (“MSD AH”) and Intervet International, B.V. (“Intervet”) have been awarded in Spain urgent and ex parte preliminary relief against the Spanish branch of the group Bayer, Bayer Hispania, S.L. (“Bayer”), in a patent infringement and unfair competition litigation which brings cause of Bayer’s off label promotion in the Spanish market of its dog collar ‘Seresto’ as suitable for controlling canine leishmaniasis. Commercial Court No. 1 of Barcelona granted such urgent relief in hardly 24 hours, by means of a Decision rendered on 29 July 2014, in light of serious indications that Intervet’s patent rights were indeed being infringed, which justified injunctive measures being urgently ordered on Bayer.


MSD affiliate Intervet owns patent EP 1022944 (ES 2198736), which protects the use of an active ingredient of the pyrethroids family in the manufacture of a medicament in the form of a collar for the control of leishmaniasis in dogs (claim 2), and which is exploited in Spain through the commercialization by MSD AH of a dog collar called ‘Scalibor’.

MSD’s ‘Scalibor’ and Bayer’s ‘Seresto’ are the only antiparasitic dog collars authorized and marketed in Spain. However, whereas ‘Scalibor’ is authorized and indicated, among others, for the prevention of dogs against leishmaniasis (given its repellent effect against vector sand flies) ‘Seresto’ is not. In spite of the above, on the occasion of a change introduced in the Summary of Product Characteristics (SmPC) of ‘Seresto’, which point out to some studies which would allegedly sustain ‘Seresto’’s efficacy in reducing the risk of leishmaniasis -but not being the prevention of leishmaniasis or against vector sand flies bites authorized indications in the SmPC-, Bayer launched, on 23 July 2014, a campaign aimed at promoting the efficacy of ‘Seresto’ against leishmaniasis among clinics, veterinarians, pet shops, distributors, clients and the general public.

Once aware thereof, Intervet and MSD AH reacted swiftly and filed against Bayer a request for urgent and ex parte interim relief which ordered the latter to cease on its promotional activities and remove any effects which these could already have produced, for such promotion violating Intervet’s patent rights and constituting unfair competition.

Commercial Court no. 1 of Barcelona, which dealt with the case, immediately awarded the requested relief. It found that the promotional activities carried out by Bayer in the above sense (consisting of the sending of a marketing circular to Bayer’s distributors and clients and several advertisings actions) could indeed infringe Intervet’s patent rights, given that ‘Seresto’ is a veterinarian medicament in the form of a collar, which contains an active ingredient of the pyrethroids family (flumethrin), which was being offered in trade for the control of leishmaniasis in dogs. This, in this preliminary assessment, was seen as a clear indication of the infringement by Bayer of claim 2 of Intervet’s patent. 

The Court further recognized the necessary urgency with which injunctive relief should be granted and without hearing Bayer, in view of the risk that ‘Seresto’ consolidated in the market for an infringing use. In this sense, the Court also emphasized in its Decision the plaintiffs’ utmost diligent reaction, which could not have been swifter considering that Bayer’s promotional activities started in the evening of 23 July, and the writ for urgent relief was filed by MSD AH and Intervet within less than two days, on 25 July.

Thus, within an extremely short term, the abovementioned Court rendered on 29 July 2014 its Decision upholding MSD and Intervet claims, and ordered Bayer to immediately cease on promoting its canine collar ‘Seresto’ as being capable of reducing the risk of leishmaniasis in dogs, to publish the Court’s Decision in its website, and to forward said Decision to all those recipients which received the marketing circular promoting such alleged new property of ‘Seresto’ (anyway, not authorized as indication).

Bayer has filed an opposition against this ex parte preliminary injunction Decision.

Read the decision (in Spanish) here.

Head note: Luis Fernández-Novoa, Hoyng Monegier