Advocate General delivers opinion in Zovirax repackaging case

Advocate General Eleanor Sharpston has delivered her opinion in The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH (Case C-276/05, October 9 2008), a trademark infringement and pharmaceutical repackaging case.

The Wellcome Foundation Ltd owns an Austrian trademark registration for ZOVIRAX for pharmaceutical products. These products are marketed within the European Economic Area by Wellcome itself or with its consent. Paranova Pharmazeutika Handels GmbH imported ZOVIRAX-branded products from Greece, where they were marketed in batches of 70 tablets. Since Austria requires that they be sold in packs of 60 tablets, Paranova repackaged them in packs of 60. The new packaging also differed from that of the original product in that:

the words ‘repackaged and imported by Paranova’ appeared in bold type and block capitals on the front;
the manufacturer was referred to on the sides and on the back in normal type; and
the box featured the blue band which Paranova regularly uses for its pharmaceutical products.

Paranova informed Wellcome of its intention to market Zovirax in Austria, sending colour prints of the outer packaging, the tablets' blister packs and the instructions for use. Wellcome asked that, in future, Paranova should:

add a complete sample of each type of packaging that it proposed to use; and
disclose the state of export and the exact reasons for the repackaging.

Paranova disclosed the reasons for the repackaging (different size of packaging), but not the state of export; it also refused to provide a sample unless Wellcome paid. It was again asked to communicate the state of export and the precise reasons for the repackaging. Wellcome, which also objected to aspects of the new packaging, sought an injunction to stop Paranova from marketing Zovirax in packaging displaying those features without having informed it of the state of export and of the precise reasons for the repackaging.

The dispute came to the Oberster Gerichtshof (the Federal Supreme Court of Austria), which referred the following questions to the European Court of Justice (ECJ) for a preliminary ruling:

“(1)(a) Are Article 7 of the Trademarks Directive and the case law of the [ECJ] which has been pronounced on it to be interpreted as meaning that proof that reliance on the trademark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging in itself, but also as regards the presentation of the new packaging?

If the answer to this 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 trademark and its proprietor?

(2) Are Article 7 of the Trademarks Directive and the case law of the [ECJ] 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 trademark also of the state of export and the precise reasons for the repackaging?”

The reference for a preliminary ruling was suspended until the ECJ had delivered judgment in Boehringer II (Case C-348/04). In that judgment, question 1(a) was in effect answered in the negative. In the present case, the referring court indicated that it wished to maintain questions (1)(b) and (2), which were not specifically answered.

In her opinion, Advocate General Sharpston recommended that these questions be answered as follows:

"(1) Where a parallel importer of pharmaceutical products repackages the products in new packaging on the grounds that repackaging is necessary in order to market the product in the member state of importation, the lawfulness of the new packaging is to be measured solely against whether it is such as to damage the reputation of the trademark and its proprietor.

(2) In such circumstances, the parallel importer, in order to fulfil its duty of notification under Article 7 of the Trademarks Directive, as interpreted by the [ECJ], must give the proprietor of the trademark information which objectively demonstrates that the repackaging was necessary. Such information may, but need not necessarily, include identification of the member state of export."

A significant amount of case law and legal analysis has been devoted to the issue of giving notice of intention to import repackaged products, an area of jurisprudence which has been developed entirely by the ECJ without any assistance from the First Trademarks Directive (89/104/EEC). Arguably, this resembles the way in which doctrine develops under the common law system of precedents. Repackaging cases seem to intertwine with one another: the final UK decision in the Boehringer dispute has been suspended pending the outcome of this reference.

The final ruling is expected within the next four to six months.

Jeremy Phillips, IP consultant to Olswang, London

Advocate General delivers opinion in Zovirax repackaging case

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