The European Court of Justice (ECJ) has been asked to rule on whether companies are allowed to use national trade mark law to restrict parallel imports of their products where importers repackage goods, albeit using the original trade mark.
In the Patents Court on February 28, Mr Justice Laddie said that, unless the ECJ ruled otherwise, proprietors could not interfere with the use of their trade marks by importers on the proprietor's goods unless such use caused substantial damage to "the specific subject matter" of the trade mark.
He said that companies should be guilty of creating a disguised trade restriction in contravention of European rules on the free movement of goods if they tried to prevent importers using their trade marks in a way which did not damage their rights.
The case arose from attempts by Glaxo Wellcome, Boehringer Ingelheim, Smith-kline Beecham and Eli Lilly to stop two parallel importers (Dowelhurst and Medi- health) repackaging imported branded medicines in their own boxes bearing the original trade marks or as generic medicines.
The judge decided to ask the ECJ for clarification of what have become known as the Paranova guidelines on trade marks and the free movement of goods. He said that he intended to ask the European Court for a ruling on whether a trade mark owner could interfere with parallel importing where no damage to their mark's reputation was caused. If the answer to this question was yes, the judge wanted to know whether such conduct was contrary to European rules on the free movement of goods. He also said that he intended to ask whether importers had to warn trade mark proprietors in advance of their intentions, how much notice should be given and whether failure to do so entitled proprietors to take steps against importers.