A Wellcome relief?

Last week the IPKat was too busy stuffing himself with chocolate mice to notice the ruling of the Court of Justice of the European Communities in Case C 276/05, The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, a reference for a preliminary ruling made by the Austrian Oberster Gerichtshof in May 2005 -- which is a longer time ago than most Kats can remember. 

Wellcome owned two Austrian trade marks -- the word ZOVIRAX and a figurative representation of that word -- each of which was registered for pharmaceutical products in Class 5; the mark is used for a top-selling treatment for genital herpes. Paranova, as many regular readers of this blog and of the inscriptions on the boxes containing their medicaments will know, is a pharmaceutical product wholesaler. In Austria Paranova marketed genuine pharma products bearing the mark ZOVIRAX in packs of 60 x 400 mg tablets (ZOVIRAX 400/60), which were legitimately put on the market in the countries of the European Economic Area and which Paranova's parent company bought in the normal course of trade. Paranova however sold its lawfully acquired ZOVIRAX in new packaging, the appearance of which was completely different from the packaging of the original. The words "Repackaged and imported by Paranova" were written in big bold block capitals on the front of its packaging which mentioned the details of the original manufacturer (in rather smaller print) but also sported Paranova's distinctive blue band. 

In May 2003 Paranova wrote to tell Wellcome of its intention to market ZOVIRAX 400/60 in Austria, enclosing colour prints of the outer packaging, of the blister packs and of the instructions for use. Wellcome then asked that, in future, Paranova inform its related company Glaxo of the details of its marketing activities, attaching a complete sample of every type of packaging and disclosing the state of export and the exact reasons for the repackaging. Paranova, having disclosed the reasons for the repackaging which it carried out, but not the State of export of the pharmaceutical product in question, was again asked by Glaxo to disclose the State of export and the precise reasons for the repackaging.Glaxo also told Paranova that there was no reason to state the information concerning the parallel importer in such a noticeable manner and in larger, clearer type than that of the manufacturer’s name. Glaxo also objected to the distinctive coloured bands on the edges of the box. Glaxo then asked that a sample of all packaging be sent to it; Paranova refused, saying this wasn't technically possible -- particularly if Glaxo wasn't willing to bear the costs. Paranova actually imported ZOVIRAX from Greece, where it was marketed in packs of 70 tablets, repackaging it as 400/60 for resale in Austria. 

Wellcome applied to the Handelsgericht Wien (Vienna Commercial Court) for an interim order prohibiting Paranova from offering and/or marketing repackaged ZOVIRAX where the repackaging included Wellcome trade marks if (i) the reference to Paranova was bigger on the repackaging than the reference to Wellcome, (ii) Paranova's coloured bands were placed on the edge of the repackaging and (iii) Paranova did not duly inform Wellcome, before marketing the repackaged ZOVIRAX, of the impending marketing, specifying both the State of export and the precise reasons as to why repackaging was necessary. That court granted Wellcome’s application in part. On appeal, the Oberlandesgericht Wien (Vienna Higher Regional Court) granted the application as regards points (i) and (iii), but rejected it in relation to (ii). Both parties then appealed on a point of law to the Oberster Gerichtshof (Supreme Court), which stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

"1. (a) Are Article 7 of … Directive 89/104 … and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging itself, but also as regards the presentation of the new packaging? If the answer to that question is in the negative: 

(b) Is the presentation of the new packaging 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? 

2. Are Article 7 of Directive [89/104] and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that the parallel importer fulfils his duty of notification only if he informs the proprietor of the trade mark also of the State of export and the precise reasoning for the repackaging?"

The European Court of Justice has now ruled as follows:

"1. Article 7(2) of Council Directive 89/104 ... is to be interpreted as meaning that, where it is established that repackaging of the pharmaceutical product is necessary for further marketing in the Member State of importation, the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor. 

2. Article 7(2) of Directive 89/104 ... is to be interpreted as meaning that it is for the parallel importer to furnish to the proprietor of the trade mark the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation".

The IPKat knows how pleased the Court of Appeal for England and Wales will be now that this ruling has been given, since that court was awaiting this decision before giving its own final decision in the long-running saga of Boehringer Ingelheim v Swingward, which was itself twice referred to the European Court of Justice for a preliminary ruling (see most recently the IPKat note here).  Merpel says, I'm getting all confused again.  The court says "the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor"; I can understand that damage to the reputation of the trade mark is part of the formula that constitutes trade mark infringement, but I just don't get the bit about damaging the reputation of the trade mark's proprietor.

Horrible website for online sale of ZOVIRAX here

Organic treatments for genital herpes here

Best protection against genital herpes here