Hollister Inc. v. Medik Ostomy Supplies Ltd.
Hollister Inc. v. Medik Ostomy Supplies Ltd.
[2013] F.S.R. 24
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Key Words: Parallel Import, Exhaustion Principle, Trade Mark
FACTS
H owned trade marks for medical products. M had imported H’s products into the United Kingdom and repackaged them for sale. In doing so, it had breached the requirement[1] that the importer give notice to the trade mark owner before selling any repackaged product, and supply him with a specimen on demand. H submitted that the judge had failed to properly apply Boehringer Ingelheim KG v Swingward Ltd.[2] (available here) and was wrong to regard the failure to give notice as “a breach of a procedural requirement”. M argued H had suffered no relevant damage or loss of profits.
Held/Key Observations:
A failure to give notice renders the importation and sale of the repackaged products an infringement. Repackaging is, in itself, prejudicial to the subject matter of the mark and may be prohibited unless both the repackaging is necessary to enable the marketing of the imported products and the legitimate interests of the trade mark owner are safeguarded. According to the established case law of the Court, the notice requirement is an important aspect of this protection because it enables the owner to check that the repackaging has not been carried out in such a way as to affect the condition of the products and that the presentation of the repackaged products is not such as to damage the reputation attaching to the trade mark. It also serves to protect the owner against counterfeiting.
Medik failed to give notice. It has therefore performed acts prohibited by Article 5 of the Directive (and Article 9 of the Regulation). Further, the exhaustion principles in Article 7(1) of the Directive (and Article 13(1) of the Regulation) do not apply because the claimants had legitimate reasons within the meaning of Article 7(2) of the Directive (and Article 13(2) of the Regulation) to oppose the further commercialisation of the repackaged products.
Note: The case has been summarized only for the purpose of highlighting few key points related to parallel import and exhaustion of trade mark. The present case also dealt with account of profit and damages in such cases which the author has deliberately omitted from the discussion.