Repackaging Pharmaceuticals - Scant Guidance From the ECJ

Author:Ms Lucy Harrold
Profession:Herbert Smith
 
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The long awaited ECJ Decisions in Merck, Sharp

& Dohme GmbH v. Paranova Pharmazeutika Handels GmbH and

Boehringer Ingelheim (and others) v. Swingward Limited (and

another) provide scant guidance on the circumstances in which a

pharmaceutical company may object to the repackaging of its branded

goods

BackgroundThe cases of Merck v.Paranova (referred by the

Oberlandesgericht Wien) and Boehringer v. Swingward (referred by the High

Court in London) consider the question of when a trade mark proprietor is

entitled to rely on its trade mark rights to prevent repackaging of its

goods by parallel importers. Both cases involve parallel importation of

branded pharmaceutical products within the EEA that have been repackaged

and the trade marks reaffixed to the outer packaging. The Advocate General

gave his Opinion on the two cases in July of last year and that has

largely been followed by the ECJ in two short judgments.

DecisionThe ECJ held in the Boehringer v. Swingward case:

Article 7(2) of the Trade Mark Directive (89/104/EEC) means a trade

mark proprietor may rely on its rights to prevent a parallel importer

from repackaging pharmaceutical products unless the exercise of those

rights contributes to artificial partitioning of the markets between

Member States;

Replacement packaging of pharmaceutical products is objectively

necessary if, without such repackaging, effective access to the market

concerned, or to a substantial part of the market, must be considered to

be hindered as the result of strong resistance from a significant

proportion of consumers to relabelled pharmaceutical products (this

point was repeated as the answer to the Austrian reference);

Parallel importers must give reasonable prior notice to the trade

mark proprietor (the ECJ suggests 15 working days will be reasonable but

in the event of a dispute, it is a matter for the national court to

assess). A failure to give prior notice will entitle the trade mark

proprietor to oppose the marketing of the repackaged product.

CommentThe ECJ Decisions reaffirm the Court's jurisprudence

that a trade mark proprietor may rely on its rights to prevent a parallel

importer from repackaging pharmaceutical products unless the exercise of

those rights contributes to artificial partitioning of the markets whether

or not there is substantial harm to the specific subject matter of the

trade mark. The...

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