The Supreme Court confirms the European Court of Justice's practice regarding re-packaging of parallel imported pharmaceutical products
On 21 September 2009 the Supreme Court ruled that Ori-farm A/S had violated Sanofi-aventis Denmark A/S' trademarks when repackaging and debranding parallel imported pharmaceutical products. The Supreme Court's ruling is in accordance with long standing Danish case law which was not changed by the European Court of Justice (ECJ) ruling C-348/04 (Boehringer II). Sanofi-aventis Denmark A/S was represented by Attorney-at-Law Per Håkon Schmidt.
In the period 1996 to 2000 Orifarm A/S (Orifarm) had marketed parallel imported pharmaceutical products from Sanofi-aventis Denmark A/S (Sanofi-aventis). Orifarm repackaged the parallel imported pharmaceutical products. On the repackaged products Orifarm placed the logo "Orifarm" with a particular font and a triangle logo with additional geometric shapes illustrating whether the drug in the pack consisted of tablets, capsules, drops or ointment. Orifarm's logo and triangle logo were placed in close connection with Sanofi-aventis' trademark. Orifarm had placed the logos on both outer packages and inner packages consisting of tubes and smaller packages.
The Supreme Court's decision
In the case referred to in the Danish Weekly Law Reports 2009.2956, the Supreme Court ruled in accordance with long standing ECJ case law according to which a parallel importer is not entitled to repackage, and in doing so, to reapply the trademark on the new packages unless the repackaging is necessary for the parallel importer in order to market the product in the importing country. Furthermore, a number of additional conditions must be met, including that the name of the repackaging manufacturer must be clearly marked on the package and that the presentation of the repackaged pharmaceutical product may not be of such nature that it discredits the trademark holder.
In this case it was undisputed that Orifarm had been entitled to repackage and reapply the trademark on the packages of the pharmaceutical products subject of the proceedings in order to market the products in Denmark. The Supreme Court considered, however, that both the Orifarm logo and the Orifarm triangle logo were so dominant and were placed in such a connection to Sanofi-aventis' trademark that both logos - also when rated separately - were likely to discredit Sanofi-aventis' trademark. The fact that it was specified on the packages that Orifarm had repackaged the pharmaceutical products including that Sanofi-aventis was the producer of the product and the fact that the courts in Germany and United Kingdom to a greater extent have accepted that the parallel importer can place logos on the repackaged packages did not change the Supreme Court's assessment.
The Supreme Court was also of the opinion that the inner packages consisting of tubes and smaller packages were intended to serve as independent packages after being removed from the outer package. Therefore Sanofi-aventis could also oppose against the labelling of these packages, and Sanofi-aventis could also oppose against Orifarm's marketing of the logos on its website.
When parallel importers repackage a pharmaceutical product they must notify the trademark owner of the repackaging. The Supreme Court emphasized that if the notification system is to work properly, it must imply that the trademark owner responds to the proposed design of the package within a reasonable time if the trademark owner does not find the design acceptable. As the Supreme Court found that Sanofi-aventis had responded too late after Orifarm's notification no claims for damages were awarded to Sanofi-aventis.
Any questions to the decision can be directed to Attorney-at-Law Per Håkon Schmidt.