Parallel import did not violate trademark rights, says Supreme Court

In Paranova Danmark A/S v AstraZeneca AB (Case 72/2005, December 4 2007), the Supreme Court has ruled on the parallel import, repackaging and marketing of drugs by Paranova Danmark A/S.

AstraZeneca AB is owner of the trademarks OXEOL and BAMBEC for drugs containing bambuterol.

Paranova had purchased Oxeol in France, repackaged it and marketed the drug in Denmark under the designation Bambuterol Paranova. The company name AstraZeneca, its logo and the trademark OXEOL had been removed from the outside packaging. However, the text on the packaging stated that the drug had been produced by AstraZeneca, and parallel imported and repackaged by Paranova. It also stated that Bambuterol Paranova was equivalent to Bambec. The indication Bambuterol Paranova featured on the front of the packaging, while the trademarks OXEOL and ASTRA featured on the back.

The bailiff's court issued an interim injunction resulting in Paranova remarketing the product with the reference to Bambec removed.

AstraZeneca had accepted that according to the practice of the European Court of Justice (ECJ), Paranova was entitled to repackage Oxeol.

The Maritime and Commercial Court found in favour of AstraZeneca and ordered Paranova to pay damages and costs.

The Supreme Court overturned the decision and found in favour of Paranova. The Supreme Court stated that it appeared from the ECJ judgment in Boehringer II (C-348/04) that the necessary condition of repackaging for the drug to be marketed in the country of import applies only to the repackaging of the drug, and not to the way in which the repackaged product is designed. In Boehringer II, the ECJ also stated that a parallel importer's removal of the producer's trademark from the repackaging (de-branding), or use of its own trademark or logo together with the producer's trademark (co-branding), may in principle be harmful to the reputation of the producer's trademark; it is for the national court to decide on this.

The Supreme Court found that the way in which the packaging had been designed before and after the injunction had not harmed AstraZeneca's or the trademarks' reputation, and thus Paranova had not acted in an unjustified manner. The Supreme Court consequently found in favour of Paranova and lifted the interim injunction.

Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen