In a judgment on February 21, the England and Wales Court of Appeal gave its second decision in a series of disputes dating back more than eight years between three pharmaceutical companies (Boehringer Ingelheim, Eli Lilly and GlaxoSmithKline) and two parallel importers (Dowelhurst and Swingward).
The disputes concern the parallel importation of legitimate pharmaceutical products (tablets and inhalers) into the UK from other EU countries. Due to regulatory requirements, the packaging and labelling have to be changed for the imported goods, for example the language of the information leaflets has to be changed to English.
In the latest decision, Lord Justice Jacob ruled that the importers had complied with the requirement, set down by the European Court of Justice (ECJ), that they do not damage the brand owners’ marks (the so-called BMS condition 4) in the repackaging: “ ... their activities by way of re-boxing and re-labelling have not caused and will not cause damage to the reputation of the claimants’ trade marks.”
This is the sixth judgment attempting to resolve this particular set of disputes, but it may still not be the final word, as another reference to the ECJ is pending in a similar case (Wellcome v Paranova) in the Austrian courts. The Court of Appeal may revisit the case, depending on the ECJ’s answers.
The first judgment in Boehringer, in the High Court, was in February 2000. This led to questions being referred to the ECJ, after which the High Court gave a second judgment in February 2003.
Both sides appealed aspects of that ruling, and in March 2004 the Court of Appeal resolved some issues but sought further guidance from the ECJ on others, asking a total of 14 questions. The ECJ answered the questions in April last year.
Interpreting the ECJ’s latest judgment, Jacob said the Court had made it clear that there is no “necessity” argument about either the need to re-box or re-label or the manner in which that is done: “Ruling 2 is a practical answer: you can re-box or sticker if that is the only way you can get market access. Otherwise you can’t.”
He added: “Necessity is not the test, only whether there is damage to reputation.” And the question of what amounts damage is a matter of fact for the national court to decide.
Jacob rejected arguments from the pharmaceutical companies that the concept of damage to a trade mark is wide, and said that partial de-branding is not damaging in itself: “Given that the trade mark owner is not entitled to any exposure of his mark after he has sold the product, some exposure, even if not as prominent as he would wish, is more than he has a right upon which to insist. It cannot be damaging as such.”
Therefore, he said, he agreed with the first instance finding: “The specific de-branding complained of here does not damage the claimants’ trade marks, is not shown to be wrong and must accordingly stand.”
