Judgment of the Court (Fifth Chamber) of 17 November 2022 (requests for a preliminary ruling from the Hof van beroep te Brussel – Belgium) – Impexeco NV v Novartis AG (C-253/20), PI Pharma NV v Novartis AG, Novartis Pharma NV (C-254/20)
(Joined Cases C-253/20 and C-254/20) 1
(References for a preliminary ruling – Articles 34 and 36 TFEU – Free movement of goods – Intellectual property – Trade marks – Regulation (EC) No 207/2009 – Article 9(2) – Article 13 – Directive 2008/95 – Article 5(1) – Article 7 – Rights conferred by a trade mark – Exhaustion of the rights conferred by a trade mark – Parallel imports of medicinal products – Reference medicinal product and generic medicinal product – Economically linked undertakings – Repackaging of the generic medicinal product – New outer packaging – Affixing the trade mark of the reference medicinal product – Opposition by the proprietor of the trade mark – Artificial partitioning of the markets between the Member States)
Language of the case: Dutch
Referring court
Hof van beroep te Brussel
Parties to the main proceedings
Applicants: Impexeco NV (C-253/20), PI Pharma NV (C-254/20)
Defendants: Novartis AG (C-253/20), Novartis AG, Novartis Pharma NV (C-254/20)
Operative part of the judgment
Article 9(2) and Article 13 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, and Article 5(1) and Article 7 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, read in the light of Articles 34 and 36 TFEU,
must be interpreted as meaning that
the proprietor of the trade mark of a reference medicinal product and the trade mark of a generic medicinal product may oppose the placing on the market of a Member State, by a parallel importer, of that generic medicinal product imported from another Member State, where that medicinal product has been repackaged in new outer packaging to which the trade mark of the corresponding reference medicinal product has been affixed, unless, first, the two medicinal products are identical in all respects and, second, the replacement of the trade mark satisfies the conditions laid down in paragraph 79 of the judgment of 11 July 1996, Bristol-Myers Squibb and Others (C-427/93, C-429/93 and C-436/93, EU:C:1996:282); in paragraph 32 of the judgment of 26 April 2007, Boehringer Ingelheim and Others (C-348/04, EU:C:2007:249); and in paragraph 28 of the judgment of 17 May 2018, Junek Europ-Vertrieb (C-642/16, EU:C:2018:322).
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1 OJ C 297, 7.9.2020.