13. Parallel Importation

Question 1

L’Oreal v eBay (samples)

Answer 1

samples supplied free of charge is not putting on market

Question 2

Zino Davidoff

Answer 2

CONSENT CAN BE IMPLIED BUT VERY DIFFICULT

• implied only if “unequivocally demonstrated” intention to renounce rights
• can’t imply from silence or lack of statement saying no import to EEA

Question 3

Master cigars v Hunters

Answer 3

CONSENT to import in EEA unequivocally demonstrated

• limit on sales in Cuba was well beyond personal use
• parties involved knew of import (parties wanted hard currency in Cuba, and invoices in German)

Failure to police importation is not enough
BUT here, C facilitated importation

Question 4

Copad v Dior (exhaustion)

Answer 4

NO exhaustion if marketing occurred in breach of a license (consent only given for specific batch)

marketing is NOT with consent if breach of license re:

• duration
• form of TM
• scope of g/s
• territory
• quality

Question 5

L’Oreal v Ebay (depackaging)

Answer 5

sale with without packaging = legitimate reason to oppose if

1. essential information missing (i..e who is manufacturer)
2. damage to image of product and this mark

Question 6

Bristol-Myers Squibb v Paranova

Answer 6

repackaging = legitimate reason to oppose (s.7(2))

because it jeopardises guarantee of origin

• presumption = can oppose (inherent risk to goods so legitimate reason to oppose)
• BUT can allowed if

1. necessary to repackage
2. repackaging does not adversely affect original condition
3. notice to trademark owner
4. indicates who repackaged
5. even if all conditions met, TM owner can have legitimate reason to oppose if repackaging discredits reputation

Question 7

Boehringer I

Answer 7

STRICT STANDARD but can repackage even if no legal bar (just consumer rejection of original is fine)

necessity:
- well-established medical prescription practice
- original packaging would face consumer resistance barring access to market

not necessity:
- commercial advantage (sell more if repackaged)

Question 8

Boehringer II

Answer 8

NO NEED TO SHOW REPACKAGING HARMS because presumption is = inherent risk to goods

Question 9

Paranova II

Answer 9

Applying new TM (of intended country of import)

• situation = repackaging
• apply BMS rules
• only possible if NECESSARY to penetrate

Question 10

SEP v Doncaster

Answer 10

not necessary to apply new TM

because prescription issued under generic name

Question 11

Boehringer (notice)

Answer 11

UK tried to argue notice not important

ECJ said NO = NOTICE IS A REAL REQUIREMENT

• must be effective and real penalty for lack of notice
• must be enough notice for TM owner to react (around 15 days if enough)

Question 12

Boehringer II (notice)

Answer 12

not necessary to give injunction to stop resale

Question 13

Bristol-Myers (discredit reputation)

Answer 13

consider nature of product and market of product

• pharmaceutical if directed at public = packaging crucial for public confidence
• if sold to hospital -> less important

Question 14

Christian dior v Evora

Answer 14

DAMAGE TO MENTAL CONDITION = POTENTIALLY ACTIONABLE

• but balance must be struck between tM owner and re-seller
• seller must be able to advertise using its usual techniques
• if seller uses normal techniques, can only object if it “seriously damages reputation”

Question 15

Copad v Dior

Answer 15

NO exhaustion of right (no consent)

IF EXHAUSTION –> would it be legitimate reasons to oppose?

• possible
• legitimate balance

Question 16

L’Oreal v Ebay (debranding)

Answer 16

legitimate reason to oppose

• case by case
• damage can occur when packaging is or as more importance than bottle containers in presentation of image of product

PACKAGING IS PART OF PURCHASE

Question 17

Silhouette v Hartlauer

Answer 17

EXHAUSTION IS HARMONSIED

• no intentional exhausation
• only regional exhaustion