Can medicines be repackaged into new packaging?
In Case C-224/20, the CJEU addressed the issue of repackaging medicines into new packaging.
Proceedings of the national court:
The Claimants are pharmaceutical manufacturers and the Defendants are parallel traders in medicinal products. These products are repackaged by the Defendants into new packaging which either incorporates the manufacturer’s trademark but replaces that trademark with a completely new name. The Plaintiffs claim that they are entitled to object to the repackaging of the medicines into new packaging.
The Referring Court wondered whether it was in fact possible for manufacturers to object to such action by the Defendants. It therefore referred a number of questions to the CJEU for a preliminary ruling.
In its judgment of 17 November 2022 (ref. C-224/20), the Court held that a manufacturer may object to the repackaging of medicines where the replacement of the tamper-evident component of the original outer packaging would leave visible – or tactile – traces of the opening on that original packaging, provided that it is clear that those traces are attributable to the repackaging of that medicinal product by the parallel importer, and that those traces do not give rise, on the market of the Member State of importation or on a substantial part thereof, to resistance by a significant group of consumers to the medicinal products thus repackaged which would constitute an obstacle to effective access to that market.
It also held that a trade mark proprietor may oppose the placing on the market in a Member State, by a parallel importer, of a medicinal product imported from another Member State, repackaged by that importer in a new outer packaging which he has reaffixed to the proprietor’s trade mark relating to that product, but not to the other trade marks or other distinctive signs which appeared on the original packaging of that medicinal product, if the presentation of that new outer packaging is such as genuinely to be detrimental to the reputation of the trade mark or if, when reasonably well-informed and reasonably observant consumers are aware of it, it does not enable them, or enables them only with difficulty, to ascertain whether the medicinal product in question comes from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, from a third party, thereby adversely affecting the trade mark’s function of indicating origin.
The CJEU argued that it must be assessed on a case-by-case basis “whether the reaffixing, to the new outer packaging of a medicinal product, of the proprietor’s trade mark specific to that product, without reproducing on that packaging the other trade marks and/or the other distinctive signs which appeared on the original packaging of that medicinal product adversely affects the function of indicating the origin of the mark.”. The Court also pointed out that “the conclusion that the proprietor may not rely on the rights conferred by the trade mark in order to oppose the marketing under his or her trade mark of products repackaged by an importer amounts to conferring on the importer certain rights which in normal circumstances are reserved for the trade mark proprietor himself or herself.”
The CJEU’s ruling is relevant to any industry in which the goods in question are imported with their repackaging. The ruling indicates the conditions when it is permissible to repackage goods and when such repackaging may be opposed by the trade mark owner.
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