Supreme Court clarifies parallel import provisions

In Roche International Ltd v Verona Trading SA (Case 86-01), the Civil Chamber of the Supreme Court of Peru has broadened the interpretation of the parallel import provisions of Andean Community Decision 486 on a Common Intellectual Property Regime. It held that where a local mark owner has an economic relationship with a company that legitimately puts identical goods on to the market in another country, the local mark owner cannot oppose the parallel importation of these goods, even if they bear a similar - rather than identical - mark.

Decision 486 provides that the owner of a registered trademark cannot prohibit a third party from further marketing the trademarked goods when the products have been placed on the market in any country by:

• the trademark owner itself;
  
  
• another person with the mark owner's consent; or
  
  
• another person that is economically related to the mark owner.

In the case at hand, Roche International Ltd, a subsidiary of F Hoffman - La Roche Ltd that owns a registration in Peru for the mark ROHYPNOL in Class 5 of the Nice Classification, brought a trademark infringement action against Verona Trading SA. Verona imported into Peru goods bearing the trademark ROHIPNOL that were identical to Roche's ROHYPNOL products. The parallel imported goods were manufactured and first put on the market in Spain by another subsidiary of F Hoffman.

The Supreme Court rejected the infringement claim. Decision 486 had until the Supreme Court's ruling been interpreted narrowly to mean that parallel imports are admissible only when the mark of the plaintiff is identical to that used on the parallel imported goods. Here, the court considered that (i) the Spanish entity had legitimately introduced its goods into commerce in Spain, and (ii) Roche and the Spanish entity were subsidiaries of the same company - F Hoffman. That economic relationship implied that both parties had an implicit consent from the parent to market the products and use nearly identical marks to distinguish the same goods. Accordingly, the court rejected Roche's claim, even though the Spanish manufacturer had not given its consent to the exportation of its goods.

José Barreda, Barreda Moller, Lima