# C_2010179EN.01002301.xml

| 3.7.2010 | EN | Official Journal of the European Union | C 179/23 |
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3.7.2010

EN

Official Journal of the European Union

C 179/23

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Reference for a preliminary ruling from the Højesteret (Denmark) lodged on 30 April 2010 — Paranova Danmark A/S, Paranova Pack A/S v Merck Sharp & Dohme Corp., Merck Sharp & Dohme B.V. and Merck Sharp & Dohme

(Case C-207/10)

(2010/C 179/38)

Language of the case: Danish

Referring court

Højesteret

Parties to the main proceedings

Applicants: Paranova Danmark A/S, Paranova Pack A/S

Defendants: Merck Sharp & Dohme Corp., Merck Sharp & Dohme and Merck Sharp & Dohme BV

Questions referred

| 1. | Are Article 7(2) of Council Directive 89/104/EEC (1) of 21 December 1988 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 (2) and 1/81 Pfizer v Eurim-Pharm (3) and Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb and Others v Paranova (4), 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? |
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1.

Are Article 7(2) of Council Directive 89/104/EEC (1) of 21 December 1988 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 (2) and 1/81 Pfizer v Eurim-Pharm (3) and Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb and Others v Paranova (4), 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?

| 2. | 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? |
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2.

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?

| 3. | 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, 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? |
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3.

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, 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?

| 4. | 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? |
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4.

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?

| 5. | 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)? |
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5.

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)?

| 6. | Is it of significance in answering Question (i) that the repackaging company is indicated as the manufacturer in the package leaflet? |
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6.

Is it of significance in answering Question (i) that the repackaging company is indicated as the manufacturer in the package leaflet?

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(1)  OJ L 40, 11.2.1989.

(2)  [1978] ECR 1139.

(3)  [1981] ECR 2913.

(4)  [1996] ECR I-3457.

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