Removal of trademark constitutes trademark infringement

On 9 December 2002, the bailiff's court in Ballerup issued an injunction against the marketing of two different pharmaceuticals in a new outer packaging on which Paranova had placed a trademark registered by Paranova instead of the manufacturer's trademark.

The manufacturer had marketed the pharmaceuticals under different trademarks in the exporting country and in Denmark, respectively. The court attached importance to the fact that the European Court of Justice has established that the mere removal of a trademark constitutes trademark infringement. Paranova alleged that it would probably not be possible to market the pharmaceuticals in Denmark under the trademarks used in the exporting country. The court however did not find the use of different trademarks could justify the trademark infringement as Paranova had fail to show that it was necessary to exchange the trademarks in order to gain market access.

Furthermore, it was found to have been rendered probable that by marketing the products under a new brand identity Paranova infringed the rights of the manufacturer under section 1 of the Danish Marketing Practices Act. The injunction also applies to Paranova Pack A/S, which is responsible for the repacking of the pharmaceuticals, even though this company is not in charge of marketing the products in Denmark.

By Gitte Holtsø, attorney-at-law