Last week the IPKat was too busy stuffing himself with chocolate mice to notice the ruling of the Court of Justice of the European Communities in Case C 276/05, The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, a reference for a preliminary ruling made by the Austrian Oberster Gerichtshof in May 2005 -- which is a longer time ago than most Kats can remember.
"1. (a) Are Article 7 of … Directive 89/104 … and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging itself, but also as regards the presentation of the new packaging? If the answer to that question is in the negative:
(b) Is the presentation of the new packaging to be measured against the principle of minimum intervention or (only) against whether it is such as to damage the reputation of the trade mark and its proprietor?
2. Are Article 7 of Directive [89/104] and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that the parallel importer fulfils his duty of notification only if he informs the proprietor of the trade mark also of the State of export and the precise reasoning for the repackaging?"The European Court of Justice has now ruled as follows:
"1. Article 7(2) of Council Directive 89/104 ... is to be interpreted as meaning that, where it is established that repackaging of the pharmaceutical product is necessary for further marketing in the Member State of importation, the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor.
2. Article 7(2) of Directive 89/104 ... is to be interpreted as meaning that it is for the parallel importer to furnish to the proprietor of the trade mark the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation".