The conjoined Boehringer Ingelheim & Anr v Swingward; Boehringer Ingelheim & Anr v Dowelhurst cases have been running for a number of years and concern the circumstances in which owners of trade marks covering medicinal products can prevent the parallel import of goods that they have placed on the market in the EU which have then been repackaged by parallel importers for sale elsewhere in the EU.

The key case dealing with repackaged parallel imports is Bristol-Myers Squibb v Paranova [1996] ECR I-3457, which laid down the so-called “BMS conditions”. Unless all five of these conditions are satisfied by a parallel importer, a trade mark owner will be deemed to have not exhausted his rights and will be able to prevent parallel imports.

Initially, the case was heard in the High Court of England and Wales, which gave judgment after referring a number of questions to the ECJ. The parties then appealed the High Court decision in the Court of Appeal, which itself referred further questions to the ECJ, obtaining the following responses:

  • in cases where a label has been applied to a product’s original packaging (“over-stickering”), all the BMS conditions will apply;
  • the condition that parallel importers show that repackaging is necessary in order to market the goods in the importing State only applies to the fact of repackaging, not the manner;
  • the requirement that the repackaging should not be damaging is not limited to cases where the repackaging is defective, of poor quality or untidy;
  • whether de-branding, co-branding or failure to identify the owner of the trade mark damage the mark owner’s reputation is a question of fact for the national courts;
  • parallel importers carry the burden of proving that repackaging complies with the BMS conditions, although this can be reversed if they provide evidence that “leads to the reasonable presumption that the condition has been fulfilled”;
  • it follows from the failure by a parallel trader to give notice of the repackaged product to the trade mark owner, that the trade mark is infringed on any subsequent importation of the product; and
  • it is for the national courts to address the sanctions for failure to give notice but they must not only be proportionate but also sufficiently effective and deterrent to ensure that Directive 89/104 is fully effective.

On 21 February 2008, the English Court of Appeal ruled that the parallel importers had complied with the BMS conditions in relation to damage to reputation. However, the Court of Appeal was unable to give a final ruling due to an Austrian court’s ECJ reference on Article 7(2).