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
- 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.
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