Opinion of the Advocate General — ECLI:EU:C:2011:293
Date: 2011-05-12
Based on: Treaty on the Functioning of the European Union (consolidated version 2008)
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Denmark

Summary of the Judgment Approximation of laws – Trade marks – Directive 89/104 – Parallel imports of medicinal products after repackaging and reaffixing of the trade mark – New packaging indicating the holder of the marketing authorisation as the repackager – Physical repackaging carried out by a separate undertaking – Opposition of the proprietor – Not permissible (Council Directive 89/104, Art. 7(2)) Article 7(2) of First Directive 89/104 on trade marks must be interpreted as not allowing the proprietor of a trade mark relating to a pharmaceutical product which is the subject of parallel imports to oppose the further marketing of that product in repackaged form on the sole ground that the new packaging indicates as the repackager not the undertaking which, on instructions, actually repackaged the product and holds an authorisation to do so, but the undertaking which holds the marketing authorisation for the product, on whose instructions the repackaging was carried out, and which assumes liability for the repackaging. As regards the condition of exhaustion of the rights conferred by the trade mark that the new packaging must indicate clearly the repackager of the product, that requirement is justified by the trade mark proprietor’s interest in the consumer or end user not being led to believe that the proprietor is responsible for the repackaging. That interest of the proprietor is fully safeguarded where the name of the undertaking at whose order and on whose instructions the repackaging has been carried out, and which assumes responsibility for the repackaging, appears clearly on the packaging of the repackaged product. Such an indication, as long as it is printed so as to be comprehensible to a normally attentive person, is such as to avoid the consumer or end user being given the incorrect impression that the product has been repackaged by the proprietor. Moreover, because that undertaking assumes full responsibility for the repackaging operations, the proprietor can enforce his rights and, where appropriate, obtain compensation if the original condition of the product within the packaging has been affected by the repackaging or the presentation of the repackaged product is liable to damage the reputation of the trade mark. In such a case, an undertaking which is mentioned as the repackager on the new packaging of a repackaged product will have to answer for any damage caused by the undertaking which actually carried out the repackaging, and cannot avoid liability by arguing, in particular, that that undertaking acted contrary to its instructions. In those circumstances, the proprietor of the trade mark has no legitimate interest in requiring that the name of the undertaking which actually repackaged the product should appear on the packaging merely because the repackaging is liable to affect the original condition of the product and might therefore cause harm to his trade mark rights. The interest of the trade mark proprietor in the preservation of the original condition of the product inside the packaging is sufficiently protected by the requirement that it must be shown that the repackaging cannot affect the original condition of the product. It is for the holder of the marketing authorisation, on whose instructions the repackaging has been carried out and who assumes liability for it, to show that that is the case. (see paras 28-32, 36, operative part)