Still Room For Argument On Pharmaceutical Repackaging

In the recent decision of Boehringer Ingelheim KG v

Swingward Limited1, the Court of Appeal has

considered and applied the ECJ decision of April 2007 after a

second reference from the English Courts in the same

proceedings on the issue of repackaged pharmaceutical parallel

imports within the EEA. It holds in favour of the parallel

importers but reserves its final judgment pending the outcome

of a related Austrian reference to the ECJ.

BACKGROUND

This case concerns the circumstances in which a proprietor

may rely on his trade mark rights to prevent a parallel

importer from marketing products he has repackaged bearing the

trade mark. The claimants are pharmaceutical companies and the

defendants are parallel importers of pharmaceuticals

manufactured and marketed within the EEA by the claimants. The

case first came before the English High Court in January 2000

(see [2000] F.S.R. 529). In April 2002, the ECJ handed down its

decision in Boehringer 1 (see [2002] E.C.R. I-3759). On 6

February 2003, Laddie J. applied Boehringer 1 to the facts

before him and concluded that its effect was that the

co-branding and debranding which the pharmaceutical companies

objected to, did amount to an infringement of their trade mark

rights (see [2003] EWHC 110 (Ch)). His decision was appealed

and cross-appealed. On 5 March 2004, the Court of Appeal

(Kennedy L.J., Clarke L.J. and Jacob L.J) indicated its views

which favoured the importers' arguments and felt compelled

to refer a second series of questions to the ECJ. On 26 April

2007, the ECJ gave its answers to the questions referred (Case

No. C348/04) (Boehringer 2). The Court of Appeal has now

considered and applied Boehringer 2 in the resumed appeal. It

accedes, however, to the claimants' request to hold off a

final decision until a pending Austrian reference has been

dealt with by the ECJ.

LEGAL ISSUES

Article 30 EC And The Trade Marks Directive

Under Article 30 EC prohibitions or restrictions on imports

between Member States which are justified on the grounds of the

protection of industrial and commercial property are authorised

as long as they do not constitute a means of arbitrary

discrimination or a disguised restriction on trade between

Member States. Article 7(1) of Directive 89/104 provides for

the exhaustion of a proprietor's trade mark rights once

goods have been put on the market in the EEA by the proprietor

or with his consent. However, under Article 7(2), exhaustion

will not apply where there exist legitimate reasons for the

proprietor to oppose further...