Adding additional label to parallel imported medical device does not constitute a trade mark infringement

Print this page 10-07-2018
IPPT20180517, CJEU, Junek v Lohman en Rauscher

Trade mark proprietor cannot oppose parallel import of a medical device in authentic inside- and outside packaging which, by its content, function, size, presentation and placement, does not give rise to a risk to the guarantee of origin of the medical device bearing the mark. Conditions from judgements Bristol-Meyers Squibb (IPPT19960711) and Boehringer (IPPT20070426) only applicable when importer has repacked product. The mere attachment of an extra label on an unprinted portion of the original packaging is not a repackaging within the meaning of these judgments.

TRADE MARK LAW

 

Lohmann & Rauscher is the proprietor of the trademark "Debrisoft". Junek markets its units in Germany through parallel import hygiene products for medical use and related resources manufactered by Lohmann & Rauscher and shipped to Austria. On 25 May 2012, Lohmann & Rauscher International purchased in a pharmacy in Düsseldorf a pack of ‘Debrisoft' which Junek had previously imported from Austria. Before the sale to the pharmacy, that company had affixed on that box a label featuring the following information: the company responsible for the importation, its address and telephone number, a barcode and a central pharmaceutical number. 

According to Lohmann & Rausscher there has been a trade mark infringement. The Oberlandesgericht Düsseldorf refers to the judgments of 23 April 2002, Bristol-Mayers Squibb (IPPT19960711) and Boehringer (IPPT20070426) and asks if these principles are applicable.

 

The CJEU considers that the conditions as seen in earlier judgements only are applicable if there is a case of repackaging. The mere act of putting an extra label on an unprinted portion of the original packaging is not a repackaging within the meaning of these judgments. 

 

"34. By contrast, in the case in the main proceedings, it must be observed, first, that the parallel importer has merely affixed an additional label to the unprinted part of the original packaging of the medical device in question, which, moreover, had not been opened. Second, the label is small in size and included, as the only information provided, the name, address and telephone number of the parallel importer, a barcode and a central pharmacological number which serves to organise the movement of the products with pharmacies.

 

35. Given that the packaging of the medical device concerned has not been modified and the original presentation of the packaging has not been affected other than by the attachment of a small label, which does not conceal the mark and which designates the parallel importer as responsible for placing it on the market by setting out his details, a barcode and a central pharmacological number, it cannot be held that the attachment of such a label constitutes repackaging within the meaning of the judgments of 23 April 2002, Boehringer Ingelheim and Others (C‑143/00, EU:C:2002:246), and of 26 April 2007, Boehringer Ingelheim and Others (C‑348/04, EU:C:2007:249).

 

The CJEU considers as well that 'in any event' it cannot be held that the attachment of such a label affects the specific purpose of the mark, which is to guarantee the origin of the product that it identifies.Therefore, the situation which gave rise to the case in the main proceedings constitutes a case of exhaustion of the rights conferred by a trade mark. The answer to the preliminary question is that the proprietor of a mark cannot oppose the further commercialisation, by a parallel importer, of a medical device in its original internal and external packaging where an additional label, such as that at issue in the case in the main proceedings, has been added by the importer, which, by its content, function, size, presentation and placement, does not give rise to a risk to the guarantee of origin of the medical device.

 

39. Having regard to the foregoing considerations, the answer to the question referred is that Article 13(2) of Regulation No 207/2009 must be interpreted as meaning that the proprietor of a mark cannot oppose the further commercialisation, by a parallel importer, of a medical device in its original internal and external packaging where an additional label, such as that at issue in the case in the main proceedings, has been added by the importer, which, by its content, function, size, presentation and placement, does not give rise to a risk to the guarantee of origin of the medical device bearing the mark."

 

IPPT20180517, CJEU, Junek v Lohman-Rauscher

 

C-642/16 – ECLI:EU:C:2018:322