Parallel Imports and Non-authorised Sales
←
→
Page content transcription
If your browser does not render page correctly, please read the page content below
Parallel Imports and
Non-authorised Sales
www.bardehle.com2
Content
5 1. Inadmissibility of parallel imports
5 1.1 Inadmissibility because the product was put
into circulation outside the European Union
6 1.2 Changes to the product or its packaging
6 1.3 S ale of an original trade mark product outside
the selective distribution network
(“non-authorised” or “grey market sales”)
7 1.4 Import of pharmaceutical products from the
accession countries of the EU-Eastern Enlargement
8 2. Claims and litigation available to the manufacturer
8 2.1 The right to a cease-and-desist order, and
border confiscation
9 2.2 Claims for damages
3Introduction
Parallel imports concern the sale of a manu-
facturer’s original product outside his
distribution network. German and European
trademark and patent law provide ways of
preventing this. Under certain conditions the
manufacturer can prohibit a parallel importer
or other reseller from selling the original
product. This is of great practical significance
in the case of goods the prices of which may
vary considerably from country to country,
in particular pharmaceutical products and
medicines, or branded prestige products that
are sold through selective distribution networks
via authorised dealers and whose sale by
retailers outside these networks needs to be
prevented.
41. Inadmissibility of parallel imports 1.1 Inadmissibility because the product
was put into circulation outside the Euro-
The inadmissibility of the sale of an original pean Union Inadmissibility of parallel
product can essentially result from one or more imports
of the following: In contrast to the law in numerous other countries Inadmissibility because of
outside the European Union, in particular the circulation outside the EU
USA and also Switzerland, German and European
– the fact that the product was not intended law on intellectual property rights does not rec-
for sale on the European market ognise exhaustion world-wide but solely Europe-
– the changes which the distributor has wide. If the maker of a product which is protected
made to the product or to the original by trademark in Europe puts it into circulation
packaging outside the European Union, the product may
– the sale of the product, particularly in the not be sold in the European Union without his
case of prestige-branded products, via consent. The manufacturer can prohibit the sale
supply chains outside the manufacturer‘s of his product in the European Union on the basis
own distribution network (so-called “non- of his trademark if he has put it into circulation
authorised” or “grey market sales”) outside the European Union and it was not in-
– in the case of patented pharmaceutical tended for sale in European Union countries. In
products, or those protected by a so-called countries outside the European Union in which
supplementary protection certificate, or the principle of world-wide exhaustion applies,
the fact that the product was imported as for example the USA or Switzerland, this is not
from the accession countries of the Euro- possible. The manufacturer cannot prohibit the
pean Union’s Eastern Enlargement. sale of his product within these countries solely on
the basis that it was intended for other countries.
Resulting from the territorial limitation, the
owner of a German trademark or a Community
trademark can always defend parallel imports
from third countries based on this trademark
5Distribution of original goods outside the distribution system of the manufacturer
– possible reasons for inadmissibility:
1.2 Changes to the product or its The manufacturer is only obliged to tolerate
packaging repackaging and any other changes to packaging
if the changes do not damage his legitimate in-
Changes to the product or its Furthermore, the owner of a trademark can pro- terests. One of the conditions for this is that the
packaging hibit parallel imports from EU member states, reseller must indicate on the packaging that it
if there are “legitimate reasons”, which accord- has in fact been repackaged. The reseller is also
ing to § 24 II German Trademark Act/Art. 13 II obliged to ensure that the changed packaging is
CTMR is expressively the case if the product’s not defective or incorrect (e.g. the translation
original packaging has been changed and he was on a package insert) and that it has a proper,
not notified of this in advance. business-like appearance. If these conditions
are not fulfilled the trademark proprietor can
Even where advance notification of the change prohibit the sale of the product. In Germany,
to the packaging has been given, as a rule the there is an established and differentiated judi-
manufacturer can prohibit the resale of his cial practice which, as a rule, allows for a reli-
product by third parties in the Federal Repub- able legal assessment.
lic of Germany if the control number has been
removed from the product or its packaging.
This applies in particular if the control number
details the place and time of production, or if
it is apparent to the consumer that a control
number has been removed.
61.3 Sale of an original trademark product ised distributor or retailer who has obtained the
outside the selective distribution net- products from an authorised dealer within the
work (“non-authorised” or “grey market distribution network from reselling them solely
sales”) on the basis of his trademark, if as a result of
the sale by this third party, e.g. a discounter, the
In order to safeguard marketing quality, Ger- prestige value of a branded product is impaired. Sale of an original outside the
man and European law permits the manufac- Exhaustion of the manufacturer’s trademark distribution network
turer’s marketing partners to be bound by rights does not apply in this case either, so that
marketing requirements under certain condi- he is able to obtain a sales prohibition directly
tions of competition and anti-trust law. If a against such third party.
product which is sold via an authorised selective
distribution network to a third-party, non-
authorised distributors or retailers in breach of 1.4 Import of pharmaceutical products
the terms of the selective distribution network, from the accession countries of the EU-
trademark law permits the manufacturer under Eastern Enlargement
certain conditions to take action directly against
the non-authorised distributor and to prohibit The European Union has a special mechanism Import of pharmaceutical pro-
him from selling the product. for prohibiting the parallel import of pharma- ducts from Eastern Europe
ceutical products which even allows for the
On the one hand, the manufacturer may take prohibition of the parallel import of pharma-
direct action against the non-authorised dis- ceuticals within the European Union itself. The
tributor if, for example, the latter has removed mechanism allows the owner of a patent or sup-
control numbers or made them unidentifiable, plementary protection certificate to prohibit the
even if the number only contained details of the sale of the pharmaceutical product in European
distribution channels, or its removal or oblitera- Union countries, even if it was marketed with
tion is not discernible to the consumer. The se- his consent within the European Union, namely
curity of an authorised distribution network can in the new Member States in Eastern Europe.
therefore be effectively maintained by means of
a control number system which gives informa- The countries in question are those which
tion about the product’s distribution channels became member states of the EU in 2004, i.e.
within the selective distribution network. the Czech Republic, Estonia, Latvia, Lithuania,
Hungary, Poland, Slovenia and Slovakia and
Following a recent decision of the European those which became member states of the EU in
Court of Justice (decision dated 23.04.2009 – 2007, i.e. Bulgaria and Romania. The back-
C-59/08 – Copad v. Dior), the manufacturer ground to this ruling is that in these countries,
may, as an alternative, prohibit a non-author- in general, there is no equivalent to the Western 7European standard of patent protection. Parallel If a pharmaceutical product has been marketed
imports from these Member States into other in the latter countries with the manufacturer’s
EU states where the pharmaceutical product is consent, his intellectual property rights are
protected by patent or supplementary protec- basically exhausted and he can only oppose the
tion certificate can be prevented under this product’s import into other EU Member States
ruling. on the grounds of general principles (see in
particular 2.1. above).
If the patent protection or a supplementary
protection certificate for the pharmaceutical
product was applied for in a Member State at 2. Claims and litigation available to the
a time when no equivalent protection could manufacturer
be obtained in one of the new Member States
Claims and litigation available cited above, the patent proprietor can prohibit In the instances cited above of an infringement
to the manufacturer the import of the product from such states into of the manufacturer’s rights by the parallel
another Member State of the European Union, importer or non-authorised distributor, the
provided that his intellectual property rights proprietor of the rights may assert all the claims
are still in force there. By way of exception, the to which he would otherwise be entitled in the
rule on exhaustion of intangible property rights, event of an infringement of his industrial prop-
which as a rule is applicable in other cases of the erty rights, in particular claims to a cease-and-
marketing of goods in the European Union, does desist order, information about the distribution
not apply under this special mechanism if the channels and the scope of the illegal sales,
pharmaceutical product had been marketed in destruction and compensation.
the countries named above.
This special arrangement applies only to the ten
named sates. No equivalent arrangement exists
for the accession countries Malta and Cyprus.
82.1 The right to a cease-and-desist order, are able to confiscate parallel import products at
and border confiscation the border.
The manufacturer can enforce the right to a The right to a cease-and-desist
cease-and-desist order by recourse to the inter- 2.2 Claims for damages order, and border confiscation
locutory legal process, which enables a prohibi-
tion order to be issued within a few days. One In cases of trademark infringements too, a Claims for damages
condition for issue of a preliminary injunction claim for damages often enables the intellectual
however, is that the manufacturer acts quickly; property rights holder to demand the surrender
as a rule, no more than a month may elapse of the entire profit that the parallel importer has
from the date that the illegal sale of a prod- made from parallel sales and for which he must
uct by a parallel importer or non-authorised render accounts.
distributor has been discovered and the filing
of the application for the issue of a preliminary The German Federal Supreme Court has recent-
injunction. ly held that this applies to the parallel sale of
pharmaceutical products which cannot be sold
The manufacturer can call on the customs under a different trademark for pharmaceutical
authorities in the Federal Republic of Germany law reasons. This decision however presup-
to monitor inadmissible parallel imports. He poses that the rights holder can also demand the
can request that the customs authorities con- surrender of the parallel importer’s entire profit
fiscate suspicious goods temporarily and notify from the illegal sale of other medical products,
an agency named by him. He can then prevent provided it can be assumed that the product
them being resold by recourse to the courts. In would not be accepted on the market if it had
order to do this he must first ensure that the been sold under a different trademark.
customs authorities have a description as pre-
cise as possible of the identifying features of the
suspected products, and once the manufacturer
has received notification of the confiscation, he
must act very quickly – within two weeks – to
file a court order prohibiting sales.
The confiscation of illegally sold original prod-
ucts at a country’s borders is not possible at the
European level. EU border confiscation regula-
tions do not permit the seizure of original prod-
ucts. The German customs authorities, however, 9© 2014 BARDEHLE PAGENBERG Partnerschaft mbB
BARDEHLE PAGENBERG Partnerschaft mbB, Patentanwälte Rechts-
anwälte is a partnership of patent attorneys and attorneys-at-law
registered at Amtsgericht München, Partnership Registry No 1152.
Our offices act legally independent from the other countries‘ offices in
each country and are not liable for those.
All rights reserved. No part of this publication may be reproduced,
stored in a retrieval system or transmitted in any form or by any means,
mechanical, photocopying, recording or otherwise, without prior
permission of the publishers.
Nothing in this publication constitutes legal advice.
BARDEHLE PAGENBERG assumes no responsibility for information
contained in this publication or on the website www.bardehle.com and
disclaims all liability with respect to such information.
10 04/201411
Contact
Munich
Prinzregentenplatz 7
81675 München
T +49.(0)89.928 05-0
F +49.(0)89.928 05-444
info@bardehle.de
Dusseldorf
Breite Straße 27
40213 Düsseldorf
T +49.(0)211.478 13-0
F +49.(0)211.478 13-31
info@dus.bardehle.de
Paris
10 Boulevard Haussmann
75009 Paris
T +33.(0)1.53 05 15-00
F +33.(0)1.53 05 15-05
info@bardehle.fr
Barcelona
Avenida Diagonal 420, 1º1ª
08037 Barcelona
T +34.93.4 57 61 94
F +34.93.4 57 62 05
info@bardehle.es
Milan
Viale Regina Margherita 35
20122 Milano
T +39.02.87 38 94 50
F +39.02.87 38 94 52
info@mil.bardehle.eu
12 www.bardehle.comYou can also read
