Use of neutral packaging does not exempt parallel importer from indicating mark owner

Denmark

In Merck Sharp & Dohme BV v Orifarm A/S (Case V-49-12 and V-76-12, November 19 2013), the Danish Maritime and Commercial Court has issued a decision regarding the sale of parallel-imported and repackaged pharmaceutical products.

The main question before the court was whether a parallel importer of pharmaceutical products is obliged to indicate the owner of the trademarks on the outside of the repackaged products.

Merck Sharp & Dohme BV, MSD Denmark ApS and Merck Sharp & Dohme Corp (collectively MSD) are part of a global group that is one of the largest manufacturers of original pharmaceutical products. Orifarm is a Danish company engaged mainly in the parallel import of pharmaceuticals.

During 2012 and 2013, Orifarm parallel-imported MSD’s pharmaceutical products and repackaged them in white boxes with MSD’s trademarks printed in black on the outside of the packaging. On the packaging, it was stated that MSD was the manufacturer, and that Orifarm was the importer and was responsible for the repackaging. The parties did not dispute the fact that it was not indicated that MSD was the proprietor of the trademarks on the packaging, the blister packs or the package insert.

The Maritime and Commercial Court noted that the present case was different from previous cases on parallel import since the packaging was white with black print, without any colours, symbols or other signs or business identifiers. The parallel importer had not even used its own business identifiers. The court stated that the use of neutral packaging, in itself, did not exempt the parallel importer from indicating the owner of the trademarks on the packaging.

Further, the court emphasised that it would be natural for doctors, suppliers, distributors and patients, among others, to seek information about the origin of a pharmaceutical product. As Orifarm’s name was stated in several places on both the outer and inner packaging, including as being the holder of the marketing authorisation, this could:

  • give rise to justifiable doubts as to the proprietor of the trademarks used on the packaging; and
  • be harmful to the reputation of MSD and its trademarks, and benefit Orifarm commercially.    

Further, the Maritime and Commercial Court stated that, if Orifarm continued to use the white packaging, this could, in the long term, create a business identifier for Orifarm that would cancel out such neutrality.

Accordingly, the court found that Orifarm’s use of MSD’s trademarks constituted trademark infringement. MSD was awarded compensation pursuant to the Danish Trademark Act; based on case law, such compensation amounted to 5% of the turnover generated by Orifarm through the sale of the parallel imported products.

The present judgment is in line with recent case law of the Danish Supreme Court on parallel imports - in Case 234/2008 (October 17 2012), the Supreme Court gave weight to the fact that the parallel importer had clearly indicated the manufacturer, the importer, the party responsible for the repackaging and the proprietor of the trademarks on the packaging. In that case, the parallel importer was acquitted.

Nina Ringen, Rønne & Lundgren, Copenhagen

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