Parallel imports of pharmaceuticals

United Kingdom
Boehringer Ingelheim - v – Swingward
European Court of Justice - Case C-143/00

The European Court of Justice (“ECJ) gave judgment in this case on 23 April 2002, which concerns the pharmaceutical companies Boehringer Ingelheim, Eli Lilly and Glaxo SmithKline against the parallel importers Swingward Limited and Dowelhurst Limited in a series of consolidated cases concerning the repackaging of branded pharmaceuticals.

The conclusions of the Court broadly follow existing ECJ case law on parallel imports as well as the opinion of Advocate General Jacobs in this case which was given on 12 July 2001. In a number of important respects the Judgment rejects the views of Mr Justice Laddie, who had originally referred the case to the ECJ in March 2000.

In particular, the ECJ:

  • confirmed that it is not necessary for a trade mark owner to demonstrate damage to the specific subject matter of his trade mark in order to raise an objection to parallel imports, as had been Laddie’s view;
  • stated that the legitimate interests of the trade mark owner must be respected, which in particular means that repackaging must not affect the original condition of the product and must not harm the reputation of the trade mark;
  • stated that reboxing (as opposed to overlabelling) is objectively necessary if without such packaging effective access to the market, or a substantial part thereof, would be hindered as a result of strong resistance from a significant proportion of consumers to relabelled product;
  • confirmed the longstanding notice requirements under which the parallel importer must give reasonable notice to the trade mark owner of an intention to repackage and provide samples, suggesting a reasonable notice period of 15 working days.

However, the Judgment is somewhat disappointing for trade mark owners as it does not address the nature and extent of reboxing in circumstances where reboxing is found to be necessary by the national court. Further, it does not comment at all on the view of the Advocate General that all repackaging should be carried out in the least intrusive way possible.

In contrast the ECJ Judgment in the Tesco/Levi cases last year gave useful and specific guidance on trade mark owners’ rights in connection with parallel importation from outside the EEA.

These cases will now revert to Mr Justice Laddie for the High Court to apply the ECJ’s Judgment to the facts in these cases.

For further information please contact Stephen Whybrow +44(0)20 7367 2175 or stephen.whybrow@cms-cmck.com or contact Lucy Kilshaw +44(0)20 7367 2044 or lucy.kilshaw@cms-cmck.com.