Boehringer Ingelheim/Glaxo v Swingward & Dowelhurst

Profession:Jones Day Gouldens

High Court & European Court of Justice Judgment European Court of Justice: 23 April 2002

The European Court of Justice has now given its Judgment in this case referred by Mr Justice Laddie of the High Court in the UK. The case concerned the repackaging of pharmaceutical parallel imports obtained from within the EU and in particular the circumstances in which the parallel importer is entitled to rebox rather than relabel pharmaceutical imports.

The ECJ clearly rejected Mr Justice Laddie's primary proposition that a trade mark owner could only object to the repackaging of its products if it could prove that there was substantial harm to specific subject matter of the trade mark. Mr Justice Laddie had stated that it was only after such substantial harm had been proved that the Court needed to consider the guidelines set out in Bristol Myers Squib -v- Paranova.

It was stated by the ECJ that in any case of repackaging (both relabelling and reboxing) there was a real risk of damage to the specific subject matter of the trade mark which meant that the trade mark owner was allowed to object to such repackaging, provided that such objection did not lead to the artificial partitioning of the market place within the EU. There was no requirement to prove substantial harm to the specific subject matter of the trade mark, the risk is assumed. In its previous case of Bristol Myers Squib -v- Paranova, the ECJ clearly stated that there would only be artificial partitioning of the market if the trade mark owner continued to object even when the following conditions had been met: that the repackaging was necessary for effective access to the market place; the names of the manufacturer and repackager had been placed on the repackaging; and, advance notice had been given to the trade mark owner of the proposed repackaging before the newly repackaged products were put on the market place. These conditions are usually called the "Paranova Guidelines".

The Court then went on to consider the Paranova Guidelines. With the advance notification requirements, the ECJ again rejected Mr Justice Laddie's propositions. It held that it was not enough that the trade mark owner be notified by any third party sources, the notification must come from the parallel importer itself. The notification must be given in advance of the proposed marketing and a sample of the proposed form of repackaging must be provided by the parallel importer if requested by the trade mark owner. A...

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