Opinion – 1. In the present case the Court of Appeal (England and Wales) (Civil Division) seeks further guidance from the Court of Justice on the effect of the latter’s judgment in Boehringer Ingelheim and Others (‘Boehringer I’). (2) That case concerned the circumstances in which a trade mark owner may rely on his trade mark rights to prevent a parallel importer who has repackaged products bearing the trade mark from marketing those products.
2. In the judgment of the Court of Appeal which led up to the order for reference, Lord Justice Jacob said: ‘Sometimes I think the law may be losing a sense of reality in this area – we are, after all, only considering the use of the owner’s trade mark for his goods in perfect condition. The pickle the law has got into would, I think, astonish the average consumer.’
3. I agree. It seems to me that after 30 years of case-law on the repackaging of pharmaceutical products it should be possible to distil sufficient principles to enable national courts to apply the law to the constantly replayed litigation between manufacturers and parallel importers. I will attempt to articulate such principles in this Opinion. I would then hope that national courts will play their part robustly in applying the principles to the facts before them without further requests to fine-tune the principles. Every judge knows that ingenious lawyers can always find a reason why a given proposition does or does not apply to their client’s situation. It should not however in my view be for the Court of Justice to adjudicate on such detail for evermore. (3)
Judges:
Sharpston AG
Citations:
[2006] EUECJ C-348/04
Links:
Cited by:
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
See also – Boehringer Ingelheim KG v Swingward Ltd ECJ 26-Apr-2007
ECJ (Free Movement of Goods) Industrial and commercial property – Trade mark rights – Pharmaceutical products – Parallel imports – Repackaging of the product bearing the trade mark. . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 11 July 2022; Ref: scu.251860