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Thursday, 9 October 2008

Boxing pharmaceuticals: another piece in the case law jigsaw

Today -- while her Opinion on 'extraction' of data and the European sui generis database right in Directmedia was being affirmed by the Court of Justice of the European Communities in Directmedia (see the IPKat's comment below) -- Advocate General Sharpston was delivering another Opinionm Case C‑276/05 Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, yet another trade mark infringement and pharmaceutical repackaging case.

Right: Zovirax in a box (not the version that's litigated here)

What's this all about? Wellcome owns the Austrian trade mark registration of ZOVIRAX for pharmaceutical products that relieve the symptoms of genital herpes. These products are marketed within the EEA by Wellcome or with its consent. Paranova imported branded ZOVIRAX products from Greece, where they are marketed in lots of 70 tablets. Since Austria requires that they be sold in packs of 60 tablets, Paranova repackaged them in packs of 60. The new packaging also differs from that of the original product in that the words ‘Repackaged and imported by Paranova’ are in bold type and block capitals on the front; the manufacturer is referred to on the sides and on the back in normal type; the box also features the blue band which Paranova regularly uses for the pharmaceutical product it markets.

Paranova naturally informed Wellcome of its intention to market ZOVIRAX in Austria, sending colour prints of the outer packaging, of the tablets' blister packs and of the instructions for use. Wellcome asked that, in future, Paranova should (i) add a complete sample of each type of packaging it proposed to use and (ii) disclose the State of export and the exact reasons for the repackaging. Paranova disclosed the reasons for the repackaging (different size of packaging), but not the State of export; it also refused to provide a sample unless Wellcome paid. It was again asked to communicate the State of export and the precise reasons for the repackaging. Wellcome, which also objected to the aspects of the new packaging described above, then sought an injunction to stop Paranova marketing ZOVIRAX in packaging with those features and without having informed it of the State of export and the precise reasons for the repackaging. The dispute got to the Oberster Gerichtshof, which referred the following questions for a preliminary ruling:

‘1(a) Are Article 7 of the Trade Marks Directive and the case-law of the Court of Justice of the European Communities which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging in itself, but also as regards the presentation of the new packaging?

If the answer to this question is in the negative:

(b) Is the presentation of the new packaging to be measured against the principle of minimum intervention or (only) against whether it is such as to damage the reputation of the trade mark and its proprietor?

2 Are Article 7 of the Trade Marks Directive and the case-law of the Court of Justice of the European Communities which has been pronounced on it to be interpreted as meaning that the parallel importer fulfils his duty of notification only if he informs the proprietor of the trade mark also of the State of export and the precise reasons for the repackaging?’
Given the overlap between these questions referred, this reference was suspended until the Court had delivered judgment in Boehringer II on 26 April 2007 (see the IPKat's note here). Question 1(a) was in effect answered "no" in that judgment. The referring court in the present case indicated that it wished to maintain its questions 1(b) and 2, which were not specifically answered. Advocate General Sharpston today recommended that these questions be answered thus:

"(1) Where a parallel importer of pharmaceutical products repackages the products in new packaging on the ground that repackaging is necessary in order to market the product in the Member State of importation, the lawfulness of the new packaging is to be measured solely against whether it is such as to damage the reputation of the trade mark and its proprietor.

(2) In such circumstances, the parallel importer, in order to fulfil his duty of notification under Article 7 of the Trade Marks Directive as interpreted by the Court of Justice, must give the proprietor of the trade mark information which objectively demonstrates that the repackaging was necessary. Such information may, but need not necessarily, include identification of the Member State of export".

The IPKat marvels at how much case law and legal analysis has been devoted to the issue of giving notice of intention to import repackaged products, an area of jurisprudence which has been developed entirely by the European Court without any assistance from Council Directive 89/104 on the approximation of national laws: it looks very much like the way doctrine develops under the common law system of precedents, he considers. Merpel says, it's amazing how these repackaging cases intertwine with one another: the final UK version of the Boehringer dispute has been held up, pending the outcome of this reference: see the IPKat's note here.

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