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Grey goods repackaging claim dismissed

In the recent case of Boehringer Ingelheim KG and others -v- Swingward Limited 2008, a group of pharmaceutical manufacturers brought trademark infringement actions in the UK against two parallel importers who imported the Claimants’ trade-marked products into the UK, marketing the goods there, after repackaging and relabelling them.  

This case followed the decision of the European Court of Justice in the case of Bristol – Myers, Squibb –v- Paranova AS where it was held that to avoid a trademark infringement claim, a parallel importer repackaged or relabelled pharmaceutical products must show that various conditions applied including that the repackaged product’s presentation was not liable to damage the reputation of the trade mark and its proprietor.

The Court in the Boehringer case held that the Defendant had complied with these conditions as their re-boxing and re-labelling had not damaged the reputation of the claimants’ trade marks.  The court reasoned that co-branding (where the parallel importer applies his own logo and get-up to the products) and de-branding (where the parallel importer uses the drugs generic name, not the manufacturer’s trademark) were not, in principle, liable to damage a trade mark’s reputation.  This decision will disappoint trade mark owners but will certainly benefit those companies wishing to co-brand or de-brand imported products.

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