The matter at hand
Ferring is the owner of the trade mark KLYX under which it markets a medicinal product in Denmark, Finland, Sweden and Norway. In all those States, Klyx is sold in packets containing 1 or 10 containers. In the course of its parallel import business, Orifarm purchases KLYX in Norway in packets of 10, repackages them in packets of 1 and then sells the repackaged product on the Danish market.
Before the referring court in Denmark, Ferring argued that it can oppose this repackaging since, in the first place, the repackaging is not necessary to sell the product in Denmark and, in the second place, the only reason for the repackaging is the importer’s attempt to secure a commercial advantage.
In those circumstances, the referring court asked the ECJ whether the contested repackaging can be opposed on the basis of Article 7(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.
The judgment of the ECJ
With reference to its judgments in Boehringer Ingelheim (C-348/04 and C‑348/04) and Bristol-Myers Squibb (C‑427/93, C‑429/93 and C‑436/93), the ECJ notes that “the change brought about by any repackaging of a trade-marked medicinal product — creating by its very nature the risk of interference with the original condition of the product — may be prohibited by the trade mark proprietor unless the repackaging is necessary in order to enable the marketing of the products imported in parallel and the legitimate interests of the proprietor are also safeguarded” (paragraph 19).
Such necessity exists when the packet size used by the trade mark proprietor in the EEA State where the importer purchased the product cannot be marketed in the importing State, “because of, in particular, a rule authorising packaging only of a certain size or a national practice to the same effect, sickness insurance rules making the reimbursement of medical expenses depend on the size of the packaging, or well-established medical prescription practices based, inter alia, on standard sizes recommended by professional groups and sickness insurance institutions” (paragraph 21).
However, in circumstances where the trade mark proprietor uses several different sizes of packaging in the importing State, the finding that one of those sizes is also marketed in the exporting State is not enough to justify the conclusion that repackaging is unnecessary. After all, “partitioning of the markets would exist if the importer were able to sell the product in only part of his market” (paragraph 22).
Considering that Ferring markets the product in identical packaging in both the importing and exporting State, and that none of the aforementioned circumstances appear to apply in the present case, the ECJ concludes that Ferring can, in principle, oppose the repackaging by Orifarm (paragraphs 24 – 26). This could be different if it would be established that the market for Klyx in packets of 10 represents only a limited part of the Danish market (paragraphs 27 and 28).
On the basis of these considerations, the ECJ rules that a trade mark proprietor may object to the continued marketing of a repackaged medicinal product by a parallel importer, where, first, the medicinal product at issue can be marketed in the importing State in the same packaging as that in which it is marketed in the exporting State and, second, the importer has not demonstrated that the imported product can only be marketed in a limited part of the importing State’s market (paragraph 29).