Following two preliminary references to the European Court of Justice (“ECJ”), on 21 February 2008, the Court of Appeal handed down the latest decision in the long running pharmaceutical parallel import case of Boehringer Ingelheim KG and Boehringer Ingelheim Pharma KG v Swingward Limited ( EWCA Civ 83). The case essentially concerned the repackaging and over-stickering of pharmaceutical products by parallel importers.
The ECJ had previously held that whether co-branding and debranding by parallel importers damaged the reputation of the manufacturer's trade mark for the purposes of BMS Condition 4 (i.e. no damage to the reputation of the mark) was a question of fact for the national court.
Specifically in relation to the repackaging issue, the Court held that this did not, of itself, damage the reputation of manufacturer’s trade marks and the mere fact that the importer had placed its own trade mark on the product alongside that of the manufacturer (so-called co-branding), when it was plain in the circumstances that it was the importer’s trade mark, did not damage the reputation of the manufacturer’s mark unless it was done in such a way so as to damage the manufacturer’s mark.
With regard to the de-branding of products, the Court considered both total de-branding, where the manufacturer’s trade mark was removed from the product completely and partial de-branding, typically where the product was reboxed with just the generic name displayed on the outside but leaving the manufacturer’s trade mark on certain aspects of the packaging such as the blister packs or on the pills themselves.
In respect of total de-branding, the Court held that there could be no trade mark infringement as there was simply no ‘use’ of the trade mark at all.
In respect of partial de-branding however, the Claimants had argued that it was damaging to the reputation of the trade mark that it had been partially removed, as the trade mark would have less exposure than it otherwise would have done. The Court however rejected this argument and held that, as the trade mark owner had no right to insist that its trade mark stayed on the goods after they had been sold, in the case of partial debranding, the continued exposure of trade mark at all after this time (albeit only partial) was more than the manufacturer had a right to insist upon. As such, the mere act of partial de-branding was not, of itself, damaging. The Court did accept that de-branding could be damaging depending on the manner and form of the debranding but this was a question of fact for the national court.
Whilst the Court concluded that the Defendants’ re-boxing and relabelling of the products did not, as a question of fact, damage the reputation of the manufacturers' trade marks in this case, it stopped short of allowing the appeals due to a pending and potentially relevant reference to the ECJ by the Austrian Supreme Court in Wellcome v Paranova (C-276/05). The Austrian Court has asked the ECJ to consider whether the presentation of the new packaging is to be measured against the principle of minimum intervention or only against whether it is such as to damage the reputation of the trade mark and its proprietor.
Despite holding that the repackaging caused no damage to the Claimants’ marks, the Court considered that the mere possibility that the ECJ may introduce what would effectively be a 6th BMS condition of minimum intervention meant that it was only right to defer its final decision until after the ECJ has given its ruling on the Austrian reference.