Junek v Lohmann & Rauscher: repackaging
Seniority is a quirk providing that the holder of a national mark registered in an EU country who files a later EU trade mark (EUTM) for the same mark may surrender the earlier mark and claim seniority from it under the EUTM – the owner then enjoys the same rights that they would if the earlier mark remained registered.
In Junek Europ-Vertrieb v Lohmann & Rauscher International, Case C-642/16 the Court of Justice of the European Union (CJEU) offers some useful guidance for brand owners and parallel importers alike.
Lohmann & Rauscher International is a German company, manufacturing dressings and retailing them under the brand DEBRISOFT. It owns the European Union trade mark for DEBRISOFT for the goods.
Junek Europ-Vertrieb is an Austrian company which parallel imports products sold under the brand DEBRISOFT from Austria to Germany. In doing so, Junek Europ-Vertrieb affixed on packaging 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. This is shown below.
Art 15 Regulation 2017/1001 states that an owner of an EU trade mark is not entitled to prohibit the sale of goods already put on the market in the European Economic Area with its consent. This does not apply, however, where “the condition of the goods is changed or impaired after they have been put on the market.”
In Bristol-Myers Squibb and Boehringer Ingelheim the CJEU gave guidance on the predecessor to this article where labels were being placed on the packaging of pharmaceutical products. It concluded that the trade mark owner was entitled to prevent this unless, among other things:
It is shown that the repackaging cannot affect the original condition of the product inside the packaging;
- The new packaging states clearly 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 trade mark and of its owner; thus, the packaging must not be defective, of poor quality, or untidy; and
- The importer gives notice to the trademark proprietor before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.
Junek Europ-Vertrieb did not give Lohmann & Rauscher International prior notice of the importation of the product concerned and also had not supplied it with the modified packaging of the product with the contested label affixed. Lohmann & Rauscher International therefore commenced trade mark infringement proceedings.
The claim progressed to the Bundesgerichtshof (Federal Court of Justice, Germany), which referred the following (paraphrased) question to the CJEU: “Do the BMS guidelines apply to medical devices?”
The CJEU held that the application of the BMS guidelines were not restricted to pharmaceutical products. It, however, drew a distinction between the case at hand and Bristol-Myers Squibb and Boehringer Ingelheim. In particular, it held: “… the parallel importer has merely affixed an additional label to the unprinted part of the original packaging of the medical device in question … the label is small in size and included, as the only information provided, the name, address and telephone number of the parallel importer, a barcode and a central pharmacological number … it cannot be held that the attachment of such a label constitutes repackaging within the meaning of [Bristol- Myers Squibb and Boehringer Ingelheim]”
It follows that the re-labelling described above is unlikely to be held to be trade mark infringement. This is likely to give parallel importers more latitude in their approach and, crucially, trade mark owners no notice of some imports into the respective member state.
Case details at a glance
Jurisdiction: European Union
Decision level: Court of Justice
Parties: Junek Europ-Vertrieb GmbH v Lohmann & Rauscher International GmbH & Co KG
Date: 17 May 2018
C-642/16 - full decision
Junek Europ-Vertrieb GmbH v Lohmann & Rauscher International GmbH & Co KG.Full decision