Orifarm A/S and Others (C-400/09) and Paranova Danmark A/S and Paranova Pack A/S (C-207/10) v Merck Sharp & Dohme Corp. and Merck Sharp & Dohme BV and Merck Sharp & Dohme.
Date: 2011-07-28
23. It should be recalled, as a preliminary point, that under Article 7(2) of Directive 89/104 the trade mark proprietor’s opposition to the repackaging of products bearing the mark, in that it constitutes a derogation from free movement of goods, cannot be accepted if the proprietor’s exercise of that right constitutes a disguised restriction on trade between Member States within the meaning of the second sentence of Article 30 EC (now the second sentence of Article 36 TFEU) (see Case C‑348/04 Boehringer Ingelheim and Others  [2007] ECR I‑3391, paragraph 16 and the case-law cited).
24. A disguised restriction within the meaning of that provision will exist where the exercise by the trade mark proprietor of his right to oppose repackaging contributes to artificial partitioning of the markets between Member States and where, in addition, the repackaging is done in such a way that the legitimate interests of the proprietor are respected (see Boehringer Ingelheim and Others , paragraph 17 and the case-law cited).
25. On the latter point, the Court has held that, if the repackaging is carried out in conditions which cannot affect the original condition of the product inside the packaging, the essential function of the trade mark as a guarantee of origin is safeguarded. The consumer or end user is not misled as to the origin of the products, and does in fact receive products manufactured under the sole supervision of the trade mark proprietor (see Bristol-Myers Squibb and Others , paragraph 67, and MPA Pharma , paragraph 39).
26. However, it has also held that the conclusion that the proprietor may not rely on the rights conferred by the trade mark in order to oppose the marketing under his trade mark of products repackaged by an importer amounts to conferring on the importer certain rights which in normal circumstances are reserved for the trade mark proprietor himself. Consequently, in the interests of the proprietor as owner of the trade mark, and to protect him against any misuse, those rights must be recognised only in so far as the importer also complies with a number of other requirements (see, to that effect, Bristol-Myers Squibb and Others , paragraphs 68 and 69, and MPA Pharma , paragraphs 40 and 41).
27. It thus follows from settled case-law, in particular the judgments which the referring court asks the Court to interpret, that the proprietor of a trade mark may not legitimately oppose the further marketing of a pharmaceutical product bearing his trade mark which has been repackaged by an importer who has reaffixed the mark if
– it is shown that such opposition would contribute to artificial partitioning of the markets between Member States, in particular because the repackaging is necessary for marketing the product in the Member State of import;
– it is shown that the repackaging cannot affect the original condition of the product inside the packaging;
– the new packaging clearly indicates the repackager of the product and the name of the manufacturer;
– the presentation of the repackaged product is not liable to damage the reputation of the trade mark and its proprietor, which implies in particular that the packaging must not be defective, of poor quality, or untidy; and
– the importer gives notice to the proprietor of the trade mark before putting the repackaged product on sale, and supplies him, on request, with a specimen of the repackaged product (see, inter alia, Hoffmann-La Roche , paragraph 14; Bristol-Myers Squibb and Others , paragraph 79; MPA Pharma , paragraph 50; Boehringer Ingelheim and Others , paragraph 21; and Case C‑276/05 The Wellcome Foundation  [2008] ECR I‑10479, paragraph 23).
28. As regards the condition at issue in the main proceedings 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 (see Bristol-Myers Squibb and Others , paragraph 70, and MPA Pharma , paragraph 42).