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In recent months, the Court of Justice of the European Union (CJEU) has issued two rulings on the possible effects of adding or removing labels to or from branded goods on trademark rights.
In the first case (Case C‑642/16, Junek Europ-Vertrieb GmbH v Lohmann & Rauscher International GmbH & Co. KG, ECLI:EU:C:2018:322), the court considered how its case law concerning repackaging of pharmaceutical products applies to medical devices (that same case law had already been applied, for example, to relabeling of whiskey bottles in Case C-349/95). At issue was whether the trademark owner could oppose parallel importation of a product for cleaning superficial wounds when a label containing the importer’s particulars was added to the packaging on an unprinted portion of the box without concealing the original trademark.
Under the CJEU’s case law, trademark owners can oppose the sale of a medicinal product in a Member State under its trademark when the product has been imported from another Member State and repackaged by the importer unless five conditions have been met:
- it is established that reliance on trademark rights by the owner in order to oppose the marketing of repackaged products under that trademark would contribute to the artificial partitioning of the markets between Member States;
- it is shown that the repackaging cannot affect the original condition of the product inside the packaging;
- the new packaging clearly states who repackaged the product and the name of the manufacturer;
- the presentation of the repackaged product is not such as to be liable to damage the reputation of the trademark and of its owner; thus, the packaging must not be defective, of poor quality, or untidy; and
- the importer gives notice to the trademark owner before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.
In the case of the medical device, these requirements had not been met. However, the CJEU distinguished between the facts of the cases, holding that the trademark owner could not oppose parallel importation of the medical device, because (i) the modification to the package was slight and could not be regarded as repackaging of the product within the meaning of the case law dealing with medicinal products referred to above, and (ii) in the case considered, the specific purpose of the trademark as an indicator of product origin was unaffected.
Another judgment issued on July 25 (Case C‑129/17, Mitsubishi Shoji Kaisha Ltd v. Duma Forklifts NV, ECLI:EU:C:2018:594 ) deals with debranding, i.e., whether removal by a parallel importer of the label from the package containing the product followed by resale after affixing its own distinctive signs constitutes trademark infringement. Under Spanish law the question is clear: under article 34.4 Spanish Trademark Act, trademark owners are entitled to prevent traders from removing their trademark. However, there is no similar provision for European trademarks in Regulation (EU) 2017/1001 (article 9), nor is it one of the rights granted to trademark owners under article 5 Directive 2008/95/EC.
The CJEU held that removing the trademark prevented the owner from controlling initial marketing in the EEA (in the case in question, the goods were imported from outside the EEA) and adversely affected the functions of the mark, both the function of indicating origin and the function of investment and advertising. Regarding these two latter functions, the CJEU held that, as the goods are placed on the market by the importer even before the trademark owner has done so, “consumers will know those goods before being able to associate them with that trademark, [and this] is likely substantially to impede the use of that mark, by the proprietor, in order to acquire a reputation likely to attract and retain consumers, and to serve as a factor in sales promotion or as an instrument of commercial strategy. In addition, such actions deprive the proprietor of the possibility of obtaining, by putting the goods on the EEA market first, the economic value of the product bearing that mark and, therefore, of its investment.”
By Jorge Llevart Espinosa
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