Repackaging and rebranding - five cases won in the Supreme Court

Plesner Svane Grønborg Attorneys Katja Høegh and Karen Dyekjær-Hansen have won five Supreme Court cases on behalf of the trademark proprietors. All five judges allowed the trademark proprietors' objections against 1:1 repackaging and rebranding in connection with parallel import.

On 28 May 2003 the Supreme Court delivered four judgements on 1:1 repackaging. The cases all concerned the parallel importer Paranova's appeal of judgements delivered by the Maritime and Commercial Court.

On the same date, the Supreme Court also delivered a judgement on rebranding. This case also concerned an appeal made by Paranova. Karen Dyekjær-Hansen represented and won the case on behalf of Pharmacia.

The judgements affirmed the Supreme Court's previous case law in respect of lack of necessity of 1:1 repackaging.

The judgements affirmed the Supreme Court's previous case law in respect of lack of necessity of 1:1 repackaging and rebranding and furthermore emphasised the parallel importer's burden of proof for the necessity of the repackaging/rebranding carried out.

Katja Høegh represented the trademark proprietors Boehringer-Ingelheim, Bristol-Myers Squibb, Roche and AstraZeneca.

In 1996, the cases involving the two first trademark proprietors resulted in the European Court of Justice's "Bristol-Myers Squibb-judgement" which established the criterion of necessity.

The Pharmacia-case has also been submitted to the European Court of Justice which established in the Pharmacia & Upjohn-judgement in 1999 that the criterion of necessity also applies to rebranding.

The Court dismissed an AIM-survey referred to by Paranova, which according to Paranova indicated that the negative attitude to relabelling and non-rebranding among pharmacists and patients implied the necessity to carry out repackaging/rebranding, at least during the dispensing rules before 1997, which were less friendly to parallel importers.

In the Boehringer-Ingelheim-case, the Supreme Court furthermore dismissed the parallel importer Paranova's claim that repackaging is necessary due to "sealing" (perforation) and a mouthpiece extension not authorised in Denmark.

The Supreme Court also dismissed Paranova's objections in respect of laches in both the Roche- case and the Astra-Zeneca-case, and about limitation in the Roche-case.

In the four repackaging cases in relation to which claims were made for compensation, the trademark proprietors were awarded compensation in accordance with their claims. In the Roche-case, it had prejudicial effect that Paranova refused to disclose the extent of 1:1 repackaging, to the effect that Roche's "hypothetical" statement was taken into account.