Repackaging and co-branding of goods is legal, says court

In a case involving the repackaging and co-branding of goods by a parallel importer, the Copenhagen Maritime and Commercial Court has reversed a preliminary injunction issued by the Bailiff's Court (Case V-0012-02, March 7 2008).

Pharmaceutical company Pfizer ApS (previously Pharmacia A/S) manufactures eye drops which are sold under the trademark XALATAN. The product is stored in a bottle and packed in an outer packaging. Pfizer is the owner of the registered trademark XALATAN as a word mark, but not as a device mark. The XALATAN mark is displayed on the outer packaging of the product with a figurative design (the letter 'X' is written in green in logotype, while the rest of the trademark is printed in black text).

Orifarm A/S is a parallel importer of pharmaceutical products for sale in Scandinavia (including, among others, Xalatan eye drops from France). Orifarm markets the eye drops in an outer packaging bearing two reproductions of the trademark XALATAN as displayed on the original packaging. In addition, a supplementary label with two sloping green stripes is attached to the bottom right corner of the packaging. The outer packaging states that the manufacturer of the product is Pharmacia & Upjohn AB. However, on January 1 2001 Pharmacia & Upjohn became Pharmacia NV/SA. Further, the outer packaging states that the product is imported and repackaged by Orifarm. A label with the name Xalatan in standard print is attached to the bottle which contains the product. In addition, the original trademark is covered and the packaging does not mention that XALATAN is a registered trademark.

Pfizer sought a preliminary injunction preventing Orifarm from marketing, selling and exporting parallel-imported pharmaceutical products which were re-labelled or repackaged with the stripe design. The Bailiff's Court issued a preliminary injunction against Orifarm.

In a confirmatory action before the Copenhagen Maritime and Commercial Court, Pfizer submitted that:

• Orifarm's use of the stripe design on the outer packaging constituted unlawful co-branding;
  
  
• the incorrect information about the manufacturer on the outer packaging was contrary to the case law of the European Court of Justice (ECJ) on repackaging; and
  
  
• the fact that a label covered the original trademark on the bottle constituted unlawful de-branding.

The court found that Orifarm's use of a supplementary label bearing the stripe design did not constitute unlawful co-branding. According to the court, the stripe design was not sufficiently distinctive to be protectable and there was no risk of confusion among consumers. In addition, the court found that the information on the identity of the manufacturer was not contrary to the case law of the ECJ. Because the information related to the same business, the court considered that consumers would not be misled as to the origin of the products.

Finally, the court held that Orifarm's use of a label to cover the original trademark did not infringe Pfizer's trademark. The omission of the green 'X' in logotype was not considered an infringement, as Pfizer had registered XALATAN as a word mark only. Arguably, this finding is at odds with established principles, as use-based rights in (unregistered) trademarks are recognized in Denmark. Therefore, Pfizer's device mark should also be protected.

The decision is an interesting contribution to the discussion on lawful re-labelling and co-branding, as it shows that a stripe design of little distinctiveness placed next to the trademark of the original producer can escape a finding of unlawful co-branding. By way of comparison, the Danish Supreme Court has held that use by Orifarm of another - more distinctive - design constituted unlawful co-branding.

Lisbet Andersen, Bech-Bruun, Copenhagen