CJEU restricts TM owners’ ability to thwart parallel imports

Trademark owners cannot oppose a parallel importer’s further commercialisation of a medical device in its original packaging when a label that has been added to the packaging does not threaten the trademarked device’s guarantee of origin.

That was according to the Court of Justice of the European Union (CJEU) in a ruling today, May 17, in Junek Europ-Vertrieb v Lohmann & Rauscher International, a case referred by Germany’s Federal Court of Justice.

The German court had asked for an interpretation of article 13(2) of Council Regulation (EC) No 207/2009, which covers trademark rights exhaustion.

Austrian company Junek Europ-Vertrieb is a parallel importer of sanitary preparations for medical purposes and dressings, while Lohmann & Rauscher International manufactures such products. Junek Europ-Vertrieb imported into Germany and then marketed dressings made by Lohmann & Rauscher International after having relabelled them.

Lohmann & Rauscher International owns the EU trademark ‘Debrisoft’, which covers plasters, dressings and other related products. One of the company’s products is called ‘Debrisoft for debridement, STERILE, 10 x 10 cm, 5 pieces’.

In May 2012, Lohmann & Rauscher International purchased in a pharmacy in Düsseldorf a pack of ‘Debrisoft for debridement, STERILE, 10 x 10 cm, 5 pieces’ which Junek Europ-Vertrieb had previously imported from Austria, the court said.

Before the sale to the pharmacy, Junek Europ-Vertrieb had affixed on the 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”. The label was applied neatly to an unprinted part of the box and did not conceal the mark of Lohmann & Rauscher International, the CJEU said.

The court explained that Junek Europ-Vertrieb had not notified Lohmann & Rauscher International of the reimportation of the product concerned and had not supplied it with the modified packaging of the product with the contested label.

“Lohmann & Rauscher International considered that the conduct of Junek Europ-Vertrieb was an infringement of the ‘Debrisoft mark’,” said the court, and therefore filed an action at the Regional Court, Düsseldorf seeking to stop Junek Europ-Vertrieb using the mark for designating dressings for debridement and an order that the company recall, withdraw from the market and destroy the products concerned.

The Regional Court, Düsseldorf later upheld that claim. On appeal by Junek Europ-Vertrieb, the city’s Higher Regional Court dismissed the case, but noted that the prohibition on use of the trademark related only to Germany.

Junek Europ-Vertrieb filed an appeal before the Federal Court of Justice.

The CJEU said that the German court was essentially asking whether article 13(2) of Regulation No 207/2009 “must be interpreted as meaning that the proprietor of a mark may oppose the further commercialisation, by a parallel importer, of a medical device in its original internal and external packaging when an additional label, such as that at issue in the main proceedings, has been added by the importer”.

The CJEU said that because the medical device packaging had not been modified and its original presentation 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 as according to earlier CJEU rulings.

According to the court, Lohmann & Rauscher International cannot legitimately oppose the further commercialisation of the medical device by Junek Europ-Vertrieb.

“Therefore, the situation which gave rise to the case in the main proceedings constitutes a case of exhaustion of the rights conferred by a trademark pursuant to article 13(1) of Regulation No 207/2009,” the court said.

It added: “Article 13(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trademark 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.”

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