Case C-276/05: Judgment of the Court (Second Chamber) of 22 December 2008 (reference for a preliminary ruling from the Oberster Gerichtshof (Austria)) — The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH (Trade marks — Pharmaceutical products — Repackaging — Parallel imports — Substantial change in appearance of the packaging — Obligation of prior notice)
Date: 2008-12-22
Institutions: Court of Justice
Subjects: interpretation of the law, preparation for market, trade-mark law

C 44/2

EN

Official Journal of the European Union

21.2.2009

V

(Announcements)

COURT PROCEEDINGS

COURT OF JUSTICE

Judgment of the Court (Second Chamber) of 22 December
2008 (reference for a preliminary ruling from the Oberster
Gerichtshof (Austria)) — The Wellcome Foundation Ltd v
Paranova Pharmazeutika Handels GmbH

(Case C-276/05) (1)

(Trade marks — Pharmaceutical products — Repackaging —
Parallel imports — Substantial change in appearance of the
packaging — Obligation of prior notice)

to damage the reputation of
proprietor.

the trade mark or

that of

its

2. Article 7(2) of Directive 89/104, as amended by the Agreement
on the European Economic Area of 2 May 1992, is to be inter-
preted as meaning that it is for the parallel importer to furnish to
the proprietor of the trade mark the information which is necessary
and sufficient to enable the latter to determine whether the repacka-
ging of the product under that trade mark is necessary in order to
market it in the Member State of importation.

(2009/C 44/02)

Language of the case: German

(1) OJ C 217, 3.9.2005.

Referring court

Oberster Gerichtshof

Parties to the main proceedings

Applicant: The Wellcome Foundation Ltd

Defendant: Paranova Pharmazeutika Handels GmbH

Judgment of the Court (First Chamber) of 18 December
2008 — Les Éditions Albert René Sàrl v Office for
Harmonisation in the Internal Market (Trade Marks and
Designs), Orange A/S

(Case C-16/06 P) (1)

Re:

Reference for a preliminary ruling — Oberster Gerichtshof —
Interpretation of Article 7 of Directive 89/104/EEC: First
Council Directive of 21 December 1988 to approximate the
laws of the Member States relating to trade marks (OJ 1989
L 40, p. 1) — Repackaging of a pharmaceutical product
imported in parallel — Substantial change in the appearance of
the packaging — Extent of the obligation of prior notification

(Appeals — Community trade mark — Regulation (EC)
No 40/94 — Articles 8 and 63 — Word mark MOBILIX —
Opposition by the proprietor of the Community and national
word mark OBELIX — Partial rejection of the opposition —
Reformatio in pejus — ‘Counteraction’ theory — Modification
of the subject-matter of the dispute — Documents included as
an annex to the application as new evidence before the Court
of First Instance)

Operative part of the judgment

1. Article 7(2) of Council Directive 89/104/EEC of 21 December
1988 to approximate the laws of the Member States relating to
trade marks, as amended by the Agreement on the European
Economic Area of 2 May 1992, is to be interpreted as meaning
that, where it is established that repackaging of the pharmaceutical
product is necessary for further marketing in the Member State of
importation, the presentation of the packaging should be assessed
only against the condition that it should not be such as to be liable

(2009/C 44/03)

Language of the case: English

Parties

Appellant: Les Éditions Albert René Sàrl
J. Pagenberg, Rechtsanwalt)

(represented by: