Poland: Milestone ruling of the Supreme Court

On rebranding of parallel imported medicinal products

In brief

On 6 May 2022, the Polish Supreme Court issued a judgment (No. II CSKP 457/22) in the case brought by a trademark owner against a parallel importer on the grounds of unlawful rebranding of an imported medicinal product.


Subject of the dispute

In the discussed case, the trademark owner challenged the parallel importer’s practice of replacing the trademark originally affixed on the imported product in the country of export with the trademark used by the trademark owner in the country of import.

The parallel importer argued that:

  1. Such rebranding is necessary to obtain effective access to the market of the country of import (i.e., Poland).
  2. The trademark owner initially did not oppose the rebranding as such, but generally repackaging in new boxes, and thus should be banned from pursuing any claims on this basis in court.
  3. Ultimately, the practice of rebranding imported products is allowed under Polish Pharmaceutical law.

Condition of rebranding

First, the Supreme Court reiterated the fact that the BMS conditions established by the CJEU serve to assess whether opposition against further distribution of an imported product raised by the trademark owner in a given case leads to the artificial partitioning of markets (constitutes a limitation in trade) between the Member States. In this regard, the Supreme Court pointed out that the partitioning of markets premise relates to the unitary nature of the market of the EU Member States and not to the “market existing in the country of import, determined by the demand at the date the imported product is to be marketed”, as claimed by the parallel importer and the Court of Second Instance. Effective access to the market does not mean access to the market position acquired by the producer. Trademark protection may not be enforced when it leads to artificial partitioning of the EU market into separate markets of the Member States; however, this does not entail any obligation on the part of trademark owners to allow free-of-charge use of their trademarks by other entrepreneurs (parallel importers) only because otherwise they (parallel importers) would be in a worse market position.

It is an established rule that the condition of necessity (to have effective access to the market) is satisfied when there exists a law or practice in the country of import which disallows the marketing of the imported product in its original packaging. The above condition is not, however, satisfied, if the aim of the repackaging (likewise rebranding) is solely for the parallel importer to secure an economic advantage (a similar view was expressed by the Advocate General, prof. Maciej Szpunar, in the Opinion of 13 January 2022 in the joint cases C-253/20 and C-254/20). The Supreme Court concluded that an attempt to benefit from the locally recognized trademark used in place of or next to the original trademark from the country of export constitutes an attempt to secure a commercial advantage and thus does not satisfy the condition of necessity under the BMS conditions.

No obligation to list all reasons for opposition by a trademark proprietor

Second, the Supreme Court confirmed that the fact that the opposing letter sent to the parallel importer in response to the notification of the intended parallel import did not specifically mention opposition to the rebranding does not constitute any de facto consent to the use by the parallel importer of the replacement trademark and does not deprive the trademark owner of any claims for a trademark infringement. The Supreme Court ruled that the trademark owner is not obliged to inform the parallel importer in advance of all possible grounds for potential future court action when opposing the intended parallel importation.

No statutory right to use a new brand

Last but not least, the Supreme Court explained that Art. 21a (9) of Polish Pharmaceutical law, invoked by the parallel importer as the alleged source of the “statutory right to use a certain name” for the imported product, does not constitute an autonomous legal basis enabling the parallel importer to use somebody else’s trademark, and in particular it does not constitute any statutory license to use a third party’s trademark. Any other interpretation of this provision would in fact, deprive owners of trademarks used on parallel imported medicinal products from any trademark protection.

Summary

In summary, the judgment is of great importance to parallel import cases as it explains how the BMS conditions established by the Court of Justice of the EU (C-348/04, Boehringer II) should be applied to rebranding, i.e., a replacement of the trademark originally affixed to the imported product in the country of export to the trademark used in the country of import, rebutting arguments that are commonly raised by parallel importers to justify the condition of necessity.


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