CASELEX:EU:2008:92 – IP Law – Trade marks – Pharmaceutical products

The reference was made by the Oberster Gerichtshof (Austria) in the course of proceedings between The Wellcome Foundation Ltd (‘Wellcome’), proprietor of the Austrian trade mark ZOVIRAX, and Paranova Pharmazeutika Handels GmbH (‘Paranova’), concerning pharmaceutical products under the ZOVIRAX trade mark, marketed in Member States of the European Economic Area (‘EEA’) by Wellcome or by third parties, and the subject of parallel importation by Paranova and marketing by the latter in Austria, after having been repackaged.

Wellcome is, inter alia, the proprietor of two Austrian word marks ZOVIRAX and the figurative word mark ZOVIRAX, protected in respect of the pharmaceutical products class. In Austria, the marks are regularly used by GlaxoSmithKline Pharma GmbH with Wellcome’s consent. 

Paranova is a pharmaceutical product wholesaler. In Austria it markets, inter alia, pharmaceutical products bearing the mark ZOVIRAX in packs of 60 x 400 mg tablets (ZOVIRAX 400/60), which Wellcome or third parties, with the consent of Wellcome, have put on the market in the countries of the EEA, and which were bought by Paranova’s parent company in the course of standard trade in pharmaceutical products. 

Paranova markets those pharmaceutical products in new packaging, the appearance of which is completely different from the packaging of the original product. The words ‘Repackaged and imported by Paranova’ are written in bold type and block capitals on the front of that new packaging. The manufacturer is referred to on the sides and on the back in normal type. The new packaging has a blue band, such as Paranova regularly uses for the pharmaceutical products which it markets.