Schering succeeds in halting infringing parallel imports

In Schering AG v Aktuapharma (Case 2002/AR/2905, September 30 2004), the Brussels Court of Appeal has ruled that the defendant's parallel importation and repackaging of the plaintiff's pharmaceutical product Femodene was illegal. The court also laid down the conditions under which further parallel importation of the plaintiff's product could take place.

Schering AG is the manufacturer of the contraceptive Femodene and owns the trademark SCHERING. Aktuapharma is a Belgian parallel importer. It bought Femodene (bearing the SCHERING trademark) in the United Kingdom and put a sticker on the outside packaging indicating its name and the fact that it had authorization to market Femodene in Belgium. Aktuapharma also replaced the English user instructions with instructions destined for the Belgian market.

Schering started legal action for trademark infringement. It argued that the parallel importation of its repackaged goods caused harm to the reputation of its SHERING mark.

With reference to established case law of the European Court Justice (Bristol-Myers Squibb v Paranova A/S; Eurim-Pharm Arzneimittel GmbH v Beiersdorf AG and MPA Pharma GmbH v Rhône-Poulenc Pharma GmbH), the Brussels Court of Appeal stated that in order for repackaging to be permitted, among other things, the parallel importer must:

• indicate the name of the manufacturer;
  
  
• stipulate the identity of the party who repackaged the goods; and
  
  
• not harm the reputation of the trademark or its owner.

As to the first two conditions, the court noted that the objective of trademark law is to offer certainty to the relevant public - which, in the present case, did not only consist of pharmacists, as Aktuapharma argued, but also end consumers - as to the origin of goods. The court reasoned that the mere presence of the trademark SCHERING on the parallel-imported goods was not sufficient. Neither was the reference to Aktuapharma's marketing authorization. The court therefore ordered Aktuapharma to state explicitly on the packaging that Schering was the manufacturer and that Aktuapharma had repackaged the goods.

As to the issue of reputation, the court put a lot of emphasis on consumer protection. It asserted that the majority of Belgian women using Femodene would probably not understand the English abbreviations of the days of the week on the blisters packs (eg, 'Mon' for 'Monday'). It held that Aktuapharma's failure to mention the days of the week in Dutch, French or German on the blister packs could lead to incorrect use of the medicine (including the risk of unwanted pregnancy), which could cause harm to the reputation of the SCHERING trademark. The court added that even the mere inconvenience of having to check the meaning of the English abbreviations constituted sufficient harm to the trademark. It therefore ordered Aktuapharma to put a sticker on each blister pack containing a translation of the days of the week.

It also instructed Aktuapharma to inform Schering, prior to commercialization, of its intention to sell the repackaged medicine and, if requested, provide Schering with a sample.

Finally, it ordered Aktuapharma to pay damages, consisting both of lost profits and compensation for damage to Schering's reputation.

This judgment clearly highlights the importance of consumer protection when assessing the possibility of harm done to the reputation of a trademark. It also obliges parallel importers to take the issue of consumer perception into consideration when repackaging pharmaceutical products.

Michel Draps, Altius, Brussels