• Claim from manufacturer of medical dressings that a parallel importer's re-packaging of its goods infringed its trademark
  • CJEU considered application of principles in cases of Bristol-Myers Squib and Boehringer Ingelheim which dealt with repackaging of pharmaceutical products
  • CJEU's ruling may give certainty to parallel importers that affixing certain types of labels to packaging will not lead to a finding of trade mark infringement

What's it about?

This case concerned a claim by Lohmann & Rauscher International (L&R) that the re-packaging of its medical product DEBRISOFT (in respect of which L&R has a registered trade mark) by Junek Europ-Vertrieb GmbH (Junek), a parallel importer, infringed its trade mark. Junek had put a small label on L&Rs original packaging (which did not cover up the DEBRISOFT trade mark) which stated limited information (including Junek's contact details). Prior to resale, Junek did not provide L&R with its proposed modified packaging. L&R brought trade mark infringement proceedings which were upheld (which Junek appealed). On appeal, the court asked the CJEU if a trade mark proprietor is entitled to oppose a sale of its products by a parallel importer where additional labels have been added to its original packaging.

Why does it matter?

In Bristol-Myers Squibb and Others and Boehringer Ingelheim and Others, the CJEU stated that a trade mark proprietor can oppose modifications made to the packaging of its pharmaceutical products if there is a risk that there would be uncertainty over the origin of the products unless certain conditions were met (such as if the modifications did not affect the original condition of the product). In both these cases, the parallel importers had done more to the goods in question than just affix a label (in Boehringer, the importer inserted an information leaflet in English, which was different to the language of the country of origin). In this case, L&R's trade mark had not been covered up by the additional label; there was no confusion as to the country of origin; and the label attached was small and included limited information. In these circumstances the CJEU held that this did not constitute re-packaging.

Now what?

This decision gives certainty that affixing an additional label to the packaging of medical devices which have been kept in their original packaging will not constitute re-packaging. However, as the facts of this case are quite narrow in scope, parallel importers will still need to consider the courts' guidance in the cases of Bristol-Myers Squibb and Boehringer in relation to what types of labels are acceptable.

Junek Europ-Vertrieb GmbH v Lohmann & Rauscher International GmbH & Co.KG Case, C-642/16