The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH.
Date: 2008-12-22
23. In the third paragraph of the operative part of the judgment in Joined Cases C-427/93, C-429/93, and C‑436/93 Bristol-Myers Squibb and Others [1996] ECR I-3457, the Court ruled that Article 7(2) of Directive 89/104 must be interpreted as meaning that the trade mark proprietor may legitimately oppose the further marketing of a pharmaceutical product where the importer has repackaged the product and reaffixed the trade mark unless:
– it is established that reliance on trade mark rights by the proprietor in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States; such is the case, in particular, where the proprietor has put an identical pharmaceutical product on the market in several Member States in various forms of packaging, and the repackaging carried out by the importer is necessary in order to market the product in the Member State of importation, and also carried out in such conditions that the original condition of the product cannot be affected by it;
– it is shown that the repackaging cannot affect the original condition of the product inside the packaging;
– the new packaging clearly states who repackaged the product and the name of the manufacturer;
– the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the packaging must not be defective, of poor quality, or untidy; and
– the importer gives notice to the trade mark proprietor before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.
24. That last condition enables the proprietor to check that the repackaging is not carried out in such a way as directly or indirectly to affect the original condition of the product and that the presentation after repackaging is not likely to damage the reputation of the trade mark ( Bristol-Myers Squibb and Others , paragraph 78, and Boehringer Ingelheim and Others , paragraph 20).
25. The condition that the repackaging of the pharmaceutical product, inter alia by reboxing it, be necessary for its further marketing in the importing Member State is directed only at the fact of repackaging the product, and not at the manner or style in which it has been repackaged ( Boehringer Ingelheim and Others , paragraphs 38 and 39).
32. In the context of a dispute pending before a national court between the proprietor of the trade mark and a parallel importer who is marketing, in a Member State, a pharmaceutical product, imported from another Member State, in new packaging, it is for that parallel importer to prove, inter alia, the existence of the condition that reliance on trade mark rights by the proprietor in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States (see Boehringer Ingelheim and Others , paragraphs 24 and 54).
34. Taking account of the foregoing, and having regard to the fact that adequate functioning of the notice system presupposes that the interested parties make sincere efforts to respect each other’s legitimate interests (Case C-143/00 Boehringer Ingelheim and Others [2002] ECR I‑3759, paragraph 62), it is for the parallel importer to furnish the proprietor of the trade mark with the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation.
36. In that regard, it should be borne in mind that, in a situation where it is established that the details furnished are used by the proprietor of the trade mark to enable him to detect weaknesses in his sales organisation and thus combat parallel trade in his products, it is under the provisions of the EC Treaty on competition that those engaged in parallel trade should seek protection against action of the latter type (see, to that effect, Case C‑349/95 Loendersloot [1997] ECR I-6227, paragraph 43).