New ECJ judgment on the possibility of repacking in the context of parallel imports
21 November 2016
In a recent judgment, the Court of Justice of the European Union ("ECJ") has considered whether the repacking of medicinal products in the context of parallel import can be seen as "necessary" when the repacking is carried out in situations where the relevant packet sizes are marketed in both the importing and exporting country.
The case concerned whether Orifarm's parallel imports from Norway to Denmark of Ferring's medicinal product Klyx in packets of 10 had infringed Ferring's trademark rights by Orifarm's repacking of the medicinal product to packets of 1, upon which Ferring's trademark was reaffixed. At the time of the parallel import, the medicinal product was available on the market in Norway and Denmark in the same packet sizes, and Ferring opposed the parallel import based on the grounds that the repacking in Ferring's opinion was unnecessary.
On a number of points, the ECJ confirmed the established principles of parallel import, which have been determined by the ECJ in previous case law. Accordingly, the ECJ determined that the trademark owner in a situation as in the present case may lawfully oppose the repacking, unless the parallel importer is able to demonstrate that the imported product only can be marketed in a limited part of the market in the importing country. The ECJ noted that it was not apparent from the information available to the Court whether this was the case, but that the issue, in any event, was for the national court to determine.
The ECJ's judgment must be taken to mean that repacking cannot lawfully be made in a situation where the relevant packet sizes are available in the exporting as well as the importing country. The case did not establish any prove that Ferring's objection to repacking would entail a limitation of Orifarm's access to the Danish market, and we expect the Maritime and Commercial High Court to reach the same conclusion.
The ECJ's judgment is an important judgment for original manufacturers of medicinal products as the judgment clearly states that repacking of parallel imported medicinal products cannot be justified purely based on commercial considerations.
Read the ECJ's judgment
On a number of points, the ECJ confirmed the established principles of parallel import, which have been determined by the ECJ in previous case law. Accordingly, the ECJ determined that the trademark owner in a situation as in the present case may lawfully oppose the repacking, unless the parallel importer is able to demonstrate that the imported product only can be marketed in a limited part of the market in the importing country. The ECJ noted that it was not apparent from the information available to the Court whether this was the case, but that the issue, in any event, was for the national court to determine.
The ECJ's judgment must be taken to mean that repacking cannot lawfully be made in a situation where the relevant packet sizes are available in the exporting as well as the importing country. The case did not establish any prove that Ferring's objection to repacking would entail a limitation of Orifarm's access to the Danish market, and we expect the Maritime and Commercial High Court to reach the same conclusion.
The ECJ's judgment is an important judgment for original manufacturers of medicinal products as the judgment clearly states that repacking of parallel imported medicinal products cannot be justified purely based on commercial considerations.
Read the ECJ's judgment
