Orifarm: ECJ rules on repackaging of pharma goods
The Court of Justice of the European Union has just given judgment in Joined Cases C-400/09 and C-207/10 Orifarm and Paranova v Merck Sharp Dohme. In a very short decision which breaks no significant new ground, the Court has affirmed that 

"Article 7(2) of First Council Directive 89/104 ... must be interpreted as not allowing the proprietor of a trade mark relating to a pharmaceutical product which is the subject of parallel imports to oppose the further marketing of that product in repackaged form on the sole ground that the new packaging indicates as the repackager not the undertaking which, on instructions, actually repackaged the product and holds an authorisation to do so, but the undertaking which holds the marketing authorisation for the product, on whose instructions the repackaging was carried out, and which assumes liability for the repackaging".

As the Court says, 

"30 ...  because that undertaking assumes full responsibility for the repackaging operations, the proprietor can enforce his rights and, where appropriate, obtain compensation if the original condition of the product within the packaging has been affected by the repackaging or the presentation of the repackaged product is liable to damage the reputation of the trade mark. It should be stated that, in such a case, an undertaking which is mentioned as the repackager on the new packaging of a repackaged product will have to answer for any damage caused by the undertaking which actually carried out the repackaging, and cannot avoid liability by arguing, in particular, that that undertaking acted contrary to its instructions. 

31 In those circumstances, the proprietor of the trade mark has no legitimate interest in requiring that the name of the undertaking which actually repackaged the product should appear on the packaging merely because the repackaging is liable to affect the original condition of the product and might therefore cause harm to his trade mark rights. 

32 The interest of the trade mark proprietor in the preservation of the original condition of the product inside the packaging is sufficiently protected by the requirement ... that it must be shown that the repackaging cannot affect the original condition of the product. In circumstances such as those of the main proceedings, it is for the holder of the marketing authorisation, on whose instructions the repackaging has been carried out and who assumes liability for it, to show that that is the case."
Posted by: Blog Administrator @ 13.10
Tags: Exhaustion of rights, parallel importation,

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