Judgment of the Court (Second Chamber) of 26 April 2007 (reference for a preliminary ruling from the Court of Appeal - United Kingdom) - Boehringer Ingelheim KG, Boehringer Ingelheim Pharma GmbH & Co. KG v Swingward Ltd, and Boehringer Ingelheim KG, Boehringer Ingelheim Pharma GmbH & Co. KG v Dowelhurst Ltd, and Glaxo Group Ltd v Swingward Ltd, and Glaxo Group Ltd, The Wellcome Foundation Ltd v Dowelhurst Ltd, and SmithKline Beecham plc, Beecham Group plc, SmithKline & French Laboratories Ltd v Dowelhurst Ltd, and Eli Lilly and Co. v Dowelhurst Ltd
(Industrial and commercial property - Trade mark rights - Pharmaceutical products - Parallel imports - Repackaging of the product bearing the trade mark)
Language of the case: English
Referring court
Court of Appeal
Parties to the main proceedings
Applicants: Boehringer Ingelheim KG, Boehringer Ingelheim Pharma GmbH & Co. KG, Glaxo Group Ltd, The Wellcome Foundation Ltd, SmithKline Beecham plc, Beecham Group plc, SmithKline & French Laboratories Ltd, and Eli Lilly and Co.
Defendants: Swingward Ltd and Dowelhurst Ltd
Re:
Reference for a preliminary ruling - Court of Appeal - Free movement of goods - Use of a trade mark by the parallel importer of a pharmaceutical product - Change in packaging - Requirements for placing on the market laid down by the Court of Justice in Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb v Paranova - Interpretation
Operative part of the judgment
Article 7(2) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, is to be interpreted as meaning that the trade mark owner may legitimately oppose further commercialisation of a pharmaceutical product imported from another Member State in its original internal and external packaging with an additional external label applied by the importer, unless
it is established that reliance on trade mark rights by the proprietor in order to oppose the marketing of the overstickered product under that trade mark would contribute to the artificial partitioning of the markets between Member States;
it is shown that the new label cannot affect the original condition of the product inside the packaging;
the packaging clearly states who overstickered the product and the name of the manufacturer;
the presentation of the overstickered product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the label must not be defective, of poor quality, or untidy; and
the importer gives notice to the trade mark proprietor before the overstickered product is put on sale, and, on demand, supplies him with a specimen of that product.
The condition that the repackaging of the pharmaceutical product, either by reboxing the product and re-applying the trade mark or by applying a label to the packaging containing the product, be necessary for its further commercialisation in the importing Member State, as one of the conditions which, if fulfilled, prevent the proprietor under Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, from opposing such commercialisation, is directed solely at the fact of repackaging and not at the manner and style of the repackaging.
The condition that the presentation of the pharmaceutical product must not be such as to be liable to damage the reputation of the trade mark and of its proprietor - as a necessary condition for preventing the proprietor, pursuant to Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, from legitimately opposing further commercialisation of a pharmaceutical product where the parallel importer has either reboxed the product and re-applied the trade mark or applied a label to the packaging containing the product - is not limited to cases where the repackaging is defective, of poor quality, or untidy.
The question whether the fact that a parallel importer:
fails to affix the trade mark to the new exterior carton ('de-branding'), or
applies either his own logo or house-style or get-up or a get-up used for a number of different products ('co-branding'), or
positions the additional label so as wholly or partially to obscure the proprietor's trade mark, or
fails to state on the additional label that the trade mark in question belongs to the proprietor, or
prints the name of the parallel importer in capital letters,
is liable to damage the trade mark's reputation is a question of fact for the national court to decide in the light of the circumstances of each case.
In situations such as those in the main proceedings, it is for the parallel importers to prove the existence of the conditions that
reliance on trade mark rights by the proprietor in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States;
the repackaging cannot affect the original condition of the product inside the packaging;
the new packaging clearly states who repackaged the product and the name of the manufacturer;
the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the repackaging must not be defective, of poor quality, or untidy; and
the importer must give notice to the trade mark proprietor before the repackaged product is put on sale and, on demand, supply him with a specimen of the repackaged product,
and which, if fulfilled, would prevent the proprietor from lawfully opposing the further commercialisation of a repackaged pharmaceutical product.
As regards the condition that it must be shown that the repackaging cannot affect the original condition of the product inside the packaging, it is sufficient, however, that the parallel importer furnishes evidence that leads to the reasonable presumption that that condition has been fulfilled. This applies a fortiori also to the condition that the presentation of the repackaged product must not be such as to be liable to damage the reputation of the trade mark and of its proprietor. Where the importer furnishes such initial evidence that the latter condition has been fulfilled, it will then be for the proprietor of the trade mark, who is best placed to assess whether the repackaging is liable to damage his reputation and that of the trade mark, to prove that they have been damaged.
Where a parallel importer has failed to give prior notice to the trade mark proprietor concerning a repackaged pharmaceutical product, he infringes that proprietor's rights on the occasion of any subsequent importation of that product, so long as he has not given the proprietor such notice. The sanction for that infringement must be not only proportionate, but also sufficiently effective and a sufficient deterrent to ensure that Directive 89/104, as amended by the Agreement on the European Economic Area, is fully effective. A national measure under which, in the case of such an infringement, the trade mark proprietor is entitled to claim financial remedies on the same basis as if the goods had been spurious, is not in itself contrary to the principle of proportionality. It is for the national court, however, to determine the amount of the financial remedies according to the circumstances of each case, in the light in particular of the extent of damage to the trade mark proprietor caused by the parallel importer's infringement and in accordance with the principle of proportionality.
____________1 - OJ C 273, 06.11.2004.