Repackaging of parallel-imported pharmaceuticals

Case no. 286/2013
Judgment delivered on 30 April 2015

Orifarm A/S
and
Orifarm Supply A/S
vs.Merck Sharp & Dohme B.V.,
Merck Sharp & Dohme Corp.
and
MSD Danmark ApS

Orifarm A/S and Orifarm Supply A/S ("Orifarm") are engaged in, among other things, parallel import of pharmaceuticals, including pharmaceuticals manufactured by the Merck Group ("MSD").

The case concerned Orifarm's import and marketing of four pharmaceuticals using

the original trade marks (product names) of the pharmaceuticals, which trade marks belonged to MSD. The main issue was whether MSD was entitled to demand that Orifarm, when repackaging the pharmaceuticals, state on the outer packaging that MSD is the trade mark proprietor.

The majority of the Supreme Court referred to the case law of the European Court of Justice and held that failure to indicate that the trade mark belongs to the trade mark proprietor may damage the reputation of the trade mark, e.g. if the trade mark is used in a way that leaves the impression that there is a special connection between the distributor and the proprietor.

The majority believed that Orifarm when repackaging the pharmaceuticals in question had performed a partial debranding, as only the product name, but not MSD's logo or other information showing that MSD was the proprietor, had been indicated on the outer packaging, which also named Orifarm as the parallel importer and repackager and MSD or a company in the MSD Group as the manufacturer. Such type of partial debranding could, in combination with the information on the parallel importer and manufacturer, serve to confuse users as to who was the trade mark (product name) proprietor and give the impression of a special connection between Orifarm and MSD. Accordingly, Orifarm had infringed MSD's trade mark rights by not indicating that the trade mark (product name) belonged to MSD on the outer packaging.

In accordance with usual practice, MSD was entitled to compensation for the trade mark infringement amounting to 5% of Orifarm's undue sale of the pharmaceuticals.

The Maritime and Commercial Court had come to the same conclusion.