Grey-goods importer must disclose name of exporter

Netherlands

In Boehringer Ingelheim Pharma KG v GTO Expeditie BV (Case 02-205), the Civil Court of The Hague has ordered the defendant, a Dutch importer of grey-market goods, to disclose to the plaintiff the name of the East European exporter of the goods. The court noted that the plaintiff's trademark rights had been violated and the order was necessary to find the source of the infringement.

Boehringer Ingelheim Pharma, a German pharmaceutical company, supplied the East European market with a number of medicines that were then re-packaged by an unknown third party and imported back into the European Economic Area (EEA) without Boehringer's consent. Evidence provided by Boehringer at trial appeared to show that the goods were brought back into the EEA by an East European carrier at the request of GTO Expeditie, a Dutch carrier. Boehringer had asked GTO to disclose the name of the East European exporter but GTO refused. Boehringer then brought a suit against GTO, requesting The Hague court to:

  • rule that GTO had acted wrongfully by refusing to disclose information that could help Boehringer identify the source of the grey-market goods;

  • order GTO to disclose the name of the exporter; and

  • find that the carrier, too, was guilty of trademark infringement by bringing the goods back into the EEA.

Although the court found that there were no grounds for ruling that GTO had acted wrongfully by refusing to disclose the identity of the East European exporter, it nevertheless ordered the Dutch company to disclose the name in order to help Boehringer find the source of the infringement. Having made this determination, the court did not address the issue of the carrier's liability.

For discussion of other cases involving the parallel importation of drugs in the EEA, see Repackaging of parallel-imported drugs restricted, Parallel importation of Leo Pharma brands illegal, rules court and ECJ precludes repackaging of parallel imported medicines.

Jasper de Gier, Allen & Overy, Amsterdam

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