In the recent decision1 of The Wellcome Foundation Ltd v Paranova Pharmazeutika Hendels GmbHthe European Court of Justice has left room for only limited objections by brand owners to aparallel importer’s new presentation of repackaged pharmaceuticals.
commercialisation of the goods. Various ECJ decisions deal with
As we reported in February 2008, following the second ECJ
how Article 7(2) should be interpreted. The key post-Directive ECJ
reference in the long-running case of Boehringer Ingelheim KG v
jurisprudence is contained in the case of Bristol-Myers Squibb v
Swingward Ltd (“Boehringer 2”), the Court of Appeal indicated
Paranova  which sets out five conditions (“the BMS
that it was minded to allow parallel importers of
Conditions”), breach of which will trigger the proprietor’s right to
pharmaceuticals to repackage freely (i.e. without a prohibition
object to the further commercialisation of its products.
on debranding or cobranding) but reserved its final judgment
In the Austrian case, the ECJ was asked two questions: (1)
pending the outcome of a related Austrian reference. That
whether proof from the parallel importer that reliance on the
reference queried whether trade mark proprietors could exert
trade mark would contribute to an artificial partitioning of the
any control over the manner of the new packaging for example
market must be furnished not only as regards the repackaging
by way of a principle of only ‘minimum intervention’ being
itself but also as regards the presentation of the new packaging
allowed by importers and also what information the importers
and whether the said presentation was to be measured against
were required to furnish to manufacturers. The ECJ has now
the principle of minimum intervention or (only) against whether
it is such as to damage the reputation of the trade mark and its
Wellcome is the proprietor of, inter alia, two Austrian word
proprietor; and (2) whether the importer fulfils his duty of
marks ZOVIRAX and the figurative word mark ZOVIRAX in the
notification under the BMS conditions only if he informs the
pharmaceutical products class. The marks are regularly used in
proprietor of the trade mark also of the state of export and the
Austria by GlaxoSmithKline Pharma GmbH with Wellcome’s
precise reasoning for the repackaging.
consent. Paranova is a pharmaceutical product wholesaler. InAustria it markets pharmaceutical products bearing the mark
ZOVIRAX which Wellcome (or third parties with Wellcome’s
In answer to the first question, the ECJ confirmed that the BMS
consent), have put on the market in the EEA. Paranova markets
Condition that the repackaging be ‘necessary’ for its further
those products in new packaging, using a blue band design
marketing in the importing state is directed only at the fact of
(common to all its products) and the words ‘Repackaged and
repackaging and not the manner or style of it, as was confirmed by
imported by Paranova’, written in bold type and block capitals.
the ECJ in Boehringer 2. The presentation of any new packaging,
Before the Austrian Courts Glaxo objected to (1) the references
therefore, did not need to be assessed against the criterion of the
to Paranova being in bigger and clearer type and/or placed in a
minimum possible adverse affect on the trade mark rights. The
more prominent position to the references to the manufacturer;
presentation of the packaging should be assessed only against the
(2) the coloured bands on the edge of the repackaging; and (3)
condition that it should not be such as to be liable to damage the
the fact Paranova had not informed Wellcome of the impending
reputation of the trade mark or its proprietor.
marketing, the state of export nor the precise reasons whyrepackaging was necessary. The Vienna Higher Regional Court
Dealing with the second question, the ECJ held that in exceptional
granted Wellcome’s application in relation to the first and third
cases, it may be necessary for an importer to disclose the Member
State of export where the absence of that information wouldprevent the trade mark proprietor from evaluating the need torepackage. It should, however, be borne in mind that “where it isestablished that the details furnished are used by the proprietor to
Article 7(1) of Directive 89/104 provides for the exhaustion of a
enable him to detect weaknesses in his sales organisation and thus
proprietor’s trade mark rights once goods have been put on the
combat parallel trade in his products, the importer may seek
market in the EEA by the proprietor (or with his consent). protection under EU competition provisions”.
However, under Article 7(2), exhaustion will not apply wherethere exist legitimate reasons for the proprietor to oppose further
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It is clear that the reconvened English Court of Appeal in
Boehringer will now finalise its judgment in favour of theimporters- permitting cobranding and debranding of repackaged
parallel imports. In future, pharmaceutical manufacturers will have
to confine their objections to repackaging which harms the
reputation of the trade mark or its proprietor and will have totread carefully when asking for details of countries of export orthe precise manner of repackaging in order to avoid an attack byimporters on the grounds of competition law. As to whenrepackaging causes harm to the reputation of the trade mark orits proprietor, the English Courts have ruled out the possibility of
harm from cobranding or debranding despite the ECJ’s indicationthat these practices are inherently prejudicial. Other European
Courts may take a different view. This means there is no
guarantee of a consistent approach to repackaging across Europe.
Historically, the UK has been a net importer of parallel imports. However, with the current weakness in the pound as comparedto the Euro, it is likely that the UK will be a net exporter ofparallel imports, which means that future cases in relation tore-packaging and in particular to de-branding and co-branding,are more likely to be heard in continental courts, which maytake a less favourable line in relation to those issues than theUK Court of Appeal.
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Law Watch – February 2009 Stephenson Harwood
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