People who complain about the European Union often grumble about its large and expensive bureaucracy. One thing it doesn't have is an official Department of Déjà Vu. Fortunately it doesn't need one since the national courts of Member States, in combination with the Court of Justice, can easily give us a regular diet of paramnesia.
If you have read what seems to be the same dispute over parallel importation of repackaged pharma products on more than one occasion, brace yourself for Case C-207/10 Paranova Danmark A/S, Paranova Pack A/S v Merck Sharp &Dohme Corp. (formerly Merck & Co. Inc.), Merck Sharp & Dohme B.V. and Merck Sharp & Dohme is upon us. The questions, according to the UK's Intellectual Property Office (it's not yet available on Curia, it seems) do not merely follow the well-trodden path of déjà-vu but thankfully depart from it, as they lead us up a fresh garden path or two. They ask as follows:
"(i) Are Article 7(2) of [the repealed and re-enacted but regularly cited] Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks and the associated case-law, in particular the judgments of the Court of Justice in Cases 102/77 Hoffmann-La Roche v Centrafarm and 1/81 Pfizer v Eurim-Pharm and Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb and Others v Paranova, to be interpreted as meaning that a trade mark proprietor may rely on these provisions in order to prevent a parallel importer's marketing company, which is the holder of a marketing authorisation for a medicinal product in a Member State, from selling that product with an indication that the product is repackaged by the marketing company, although the marketing company has the physical repackaging carried out by another company, the repackaging company, to which the marketing company gives instructions for the purchasing and repackaging of the product, for the detailed design of the product's packaging and for other arrangements in relation to the product, and which holds the repackaging authorisation and reaffixes the trade mark on the new package in the course of repackaging? [Given the current state of the law, is it really necessary to ask this question? Does the secret lie in the facts before the referring court?]The IPKat would love to know more about this reference. Can any readers supply some background? Also, if you would like to comment on this case so that the IPO can ponder your thoughts before deciding whether to participate, please email the office here before 25 June 2010.
(ii) Is it of significance in answering Question (i) that an assumption might be made that the consumer or end-user is not misled with regard to the origin of the product and will not be led to believe that the trade mark proprietor is responsible for the repackaging through the indication by the parallel importer of the manufacturer's name on the packaging along with the indication as described of the undertaking responsible for the repackaging? [How interesting that, since the Google AdWord ruling, confusion-like concepts such as 'misled' have entered the vocabulary of same-mark, same-goods infringement, via the concept of the essential function]
(iii) Is it only the risk that the consumer or end-user might be misled into assuming that the trade mark proprietor is responsible for the repackaging which is of significance in answering Question (i), or are other considerations regarding the trade mark proprietor also relevant ["Are other considerations also relevant ...?" looks like a fishing expedition, hoping to catch some fresh comment or suggestion from the Court of Justice which will be closely examined, jurisprudentially tested and then sent back to the Court in the form of further questions and requests for clarification], for example (a) that the entity which in fact undertakes the purchasing and repackaging and reaffixes the trade mark proprietor's trade mark on the product's packaging thereby potentially infringes independently the trade mark proprietor's trade mark rights, and that that may be due to factors for which the entity that physically carried out the repackaging is responsible that (b) the repackaging affects the original condition of the product or that (c) the presentation of the repackaged product is of such a kind that it may be assumed to harm the trade mark or its proprietor's reputation? [Once 'reputation' is mentioned, the Kat suddenly wonders whether this is a tarnishment issue rather than regular infringement ...]
(iv) If, in answering Question (iii), the Court finds that it is also relevant to take account of the fact that the repackaging company potentially infringes independently the trade mark rights of the trade mark proprietor, the Court is asked to indicate whether it is of significance to this answer that the marketing company and repackaging company of the parallel importer are jointly and severally liable under national law for the infringement of the trade mark proprietor's trade mark rights? [issues concerning joint and several liability, like vicarious liability, look like something that it is for the national court to determine rather than for the Court of Justice to rule on -- is this correct?]
(v) Is it of significance in answering Question (i) that the parallel importer which holds the marketing authorisation and has indicated itself as being responsible for repackaging, at the time of the notification of the trade mark proprietor prior to the intended sale of the repackaged medicinal product, belongs to the same group as the company which undertook the repackaging (sister company)?
(vi) Is it of significance in answering Question (i) that the repackaging company is indicated as the manufacturer in the package leaflet?"