Euro Court on Medical Re-Packaging Case
Boehringer Ingelheim KG and others v Swingward Ltd and others (No 2) (Case C-348/04)
ECJ
26 April 2007
Weekly Law Notes Summary
{The condition, which, if fulfilled, prevented the proprietor of a trade mark from opposing further commercialisation of a product bearing the mark by a parallel importer who reboxed or overstickered the product, that such repackaging had to be necessary for the further commercialisation in the importing state, applied solely to the fact of repackaging, and not to its manner and style.
The Second of Chamber of the Court of Justice of the European Communities so held, inter alia, on a reference for a preliminary ruling by the Court of Appeal.
Art 7 of the Directive provides: “(1) The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in a contracting party under that trade mark by the proprietor or with his consent. (2) 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 market.”
The defendants, parallel importers, bought in various member states of the EC medicinal products marketed under a number of trade marks by the claimants, and imported them into the United Kingdom and sought to market them there after altering the packaging. The alterations varied and comprised attaching a label with the parallel importer’s name and import licence number to the original package; repacking the product in a new box on which the original trade mark was reproduced; and repacking in a box which bore, not the original trade mark, but the product’s generic name. In trade mark infringement proceedings brought by the claimants, the High Court referred a number of questions for preliminary ruling to the European Court of Justice, to which that court replied in Boehringer Ingelheim KG v Swingward Ltd (Case C-143/00) [2003] Ch 27. On the resumption of the proceedings, the High Court ruled against the defendants, who appealed to the Court of Appeal, which made the present reference to the European Court for a preliminary ruling on further questions.
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