Ferring markets a medicine under the brand "Klyx" in
Denmark, Finland, Sweden and Norway. In all those countries, Klyx
is sold in the same way: in containers of 120 and 240ml sold
individually or in boxes of 10 units.
Orifarm bought 10-unit boxes of Klyx in Norway, repackaged them
individually, reaffixing the KLYX mark to them, and sold them in
As an EEA member, Norway is subject to Directive 2008/95.
Article 7 of that Directive provides:
The trade mark shall not entitle the
proprietor to prohibit its use in relation to goods which have been
put on the market in the Community under that trade mark by the
proprietor or with his consent.
Paragraph 1 shall not apply where
there exist legitimate reasons for the proprietor to oppose further
commercialisation of the goods, especially where the condition of
the goods is changed or impaired after they have been put on the
Ferring opposed the repackaging claiming:
It was not necessary to market the
This was instead an attempt by the
importer to secure a commercial advantage.
Orifarm contended on the other hand that the repackaging was
necessary to gain access to the segment of the Danish market for
Klyx repackaged in packets of one.
The Danish court questioned whether the repackaging was
necessary given the availability of the packs in sizes of 1 or 10
in all the states concerned. It referred the matter to the Court of
Justice, asking whether Article 7(2) means that a trade mark
proprietor may lawfully object to repackaging when the product is
already sold in all the relevant sizes in all the markets
The CJEU summarised the case law on repackaging by parallel
The purpose of a trade mark is to
guarantee the origin of the product bearing the market, and thus
the repackaging of a product carried out by a third party without
the authorisation of the proprietor is likely to create real risks
for that guarantee of origin.
A trade mark owner's opposition
to repackaging cannot be accepted if it constitutes a disguised
restriction to trade between Member States.
There will be such a disguised
restriction when the exercise by a trade mark proprietor of his
right to oppose repackaging helps the artificial partitioning of
Therefore, the change caused by any third party's
repackaging of a trade mark-bearing medicine, creating by its very
nature the risk of interference with the original condition of that
product, may be prohibited by the owner of that trade mark unless
the repackaging is necessary in order to enable to marketing of the
products imported and at the same the legitimate interests of the
proprietor are safeguarded.
The circumstances prevailing at the time of marketing in the
importing state must be taken into account objectively. This can
include, for example, insurance rules on the size of the packaging
or well-established medical prescription practices
Finally, it is up to the parallel importer to justify why the
trade mark owner should be prevented from lawfully opposing the
further marketing of the medicines.
Thus, a trade mark proprietor can oppose the marketing of a
medicine by a parallel importer where the latter has repackaged the
product in a new, outer packaging and reaffixed the trade mark
where (1) the medicine can be marketed in the importing country in
the same packaging as that in which it was originally bought in the
exporting country and (2) the importer has not demonstrated that
the product can only be marketed in a limited part of the importing
state's market. Those matters are to be determined by the
This judgement strengthens the position of pharmaceutical trade
mark owners as in EEA parallel import disputes the parallel
importers will have to establish their actions are necessary.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
The General Court has upheld a Board of Appeal decision dismissing an opposition to the figurative EUTM mark CHOCOLOVE, based on earlier marks for CHOCOLATE, CSOKICSÖ and a figurative mark CHOCOLATE BROWN.
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