Ferring Lægemidler A/S, acting on behalf of Ferring BV v Orifarm A/S.
Date: 2016-11-10
14


In this respect, it must be noted, first, that the specific purpose of a mark is to guarantee the origin of the product bearing that mark and that a repackaging of that product carried out by a third party without the authorisation of the proprietor is likely to create real risks for that guarantee of origin (see, by analogy, judgment of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraph 14 and the case-law cited).
15


Second, it must be noted that under Article 7(2) of Directive 2008/95, the trade mark proprietor’s opposition to the repackaging, in so far as 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 States party to the EEA Agreement within the meaning of the second sentence of Article 13 of that agreement (see, by analogy, with regard to the second sentence of Article 36 TFEU, judgment of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraph 16 and the case-law cited).
16


A disguised restriction within the meaning of that latter 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 the States party to the EEA Agreement, where the repackaging is done in such a way that the legitimate interests of the proprietor are respected (see, by analogy, with regard to the second sentence of Article 36 TFEU, judgments of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraph 17, and of 28 July 2011, Orifarm and Others, C‑400/09 and C‑207/10, EU:C:2011:519, paragraph 24 and the case-law cited).
17


A trade mark proprietor’s opposition to repackaging contributes to the artificial partitioning of the markets between the States party to the EEA Agreement where the repackaging is necessary to enable the product imported in parallel to be marketed in the importing State (see, by analogy, judgment of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraph 18 and the case law cited).
18


As is apparent from the case-law of the Court, the power of the proprietor of trade mark rights protected in a Member State to oppose the marketing of repackaged products under the trade mark should be limited only in so far as the repackaging undertaken by the importer is necessary in order to market the product in the Member State of importation (see, by analogy, judgment of 11 July 1996, Bristol-Myers Squibb and Others, C‑427/93, C‑429/93 and C‑436/93, EU:C:1996:282, paragraph 56).
19


It follows from those considerations that the change brought about by any repackaging of a trade-marked medicinal product — creating by its very nature the risk of interference with the original condition of the product — may be prohibited by the trade mark proprietor unless the repackaging is necessary in order to enable the marketing of the products imported in parallel and the legitimate interests of the proprietor are also safeguarded (see, by analogy, judgments of 23 April 2002, Boehringer Ingelheim and Others, C‑143/00, EU:C:2002:246, paragraph 34, and of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraph 19).
20


As regards in particular the criterion of the necessity of the repackaging, the circumstances prevailing at the time of marketing in the importing State, which render repackaging objectively necessary for the medicinal product to be placed on the market in that State by the parallel importer, must be taken into account in the assessment. A trade mark proprietor’s opposition to repackaging is not justified if it hinders effective access to the importing market (see, by analogy, judgments of 12 October 1999, Upjohn, C‑379/97, EU:C:1999:494, paragraph 43, and of 23 April 2002, Boehringer Ingelheim and Others, C‑143/00, EU:C:2002:246, paragraph 46).
21


In particular, it should be noted, first of all, that the trade mark proprietor cannot oppose the repackaging of the product in new external packaging, when the packet size used by that proprietor in the State party to the EEA Agreement where the importer purchased the product, cannot be marketed in the importing State because of, in particular, a rule authorising packaging only of a certain size or a national practice to the same effect, sickness insurance rules making the reimbursement of medical expenses depend on the size of the packaging, or well-established medical prescription practices based, inter alia, on standard sizes recommended by professional groups and sickness insurance institutions (see, by analogy, judgment of 11 July 1996, Bristol-Myers Squibb and Others, C‑427/93, C‑429/93 and C‑436/93, EU:C:1996:282, paragraph 53).
22


Then, where, in accordance with the rules and practices in force in the importing State, the proprietor uses several different sizes of packaging in that State, the finding that one of those sizes is also marketed in the exporting State party to the EEA Agreement is not enough to justify the conclusion that repackaging is unnecessary. Partitioning of the markets would exist if the importer were able to sell the product in only part of his market (see, by analogy, judgment of 11 July 1996, Bristol-Myers Squibb and Others, C‑427/93, C‑429/93 and C‑436/93, EU:C:1996:282, paragraph 54).
23


Finally, it is for the parallel importer to prove the existence of the conditions preventing the trade mark proprietor from lawfully opposing further marketing of those medicinal products (see, by analogy, judgment of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraph 52).