Words from the Chair Belgium - Parallel Imports Update Christian Dekoninck and Judith Bussé, CROWELL & MORING Brussels The repackaging of pharmaceutical products by parallel traders continues to be a topic of discussion before the various European courts. According to the well-known Bristol-Myers Squibb case, trade mark holders cannot prevent the import of their repackaged products on the basis of their trade mark rights if (among other conditions) the parallel trader can establish that repackaging is “necessary” to market the product in the country of importation. This condition is met if, without repackaging, effective access to the markets of the importing member state is hindered. However, if repackaging is only an attempt to secure a commercial advantage, the parallel importer can be prevented from repackaging the products. In a recently published case, the Brussels Court of Appeal had to decide whether differences in pack sizes between member states made it necessary to repackage the pharmaceutical products. The case concerned losartan, which is marketed in Belgium and Poland under the trade mark Cozaar. In Poland, the country of export, this product is marketed in packs of one size only (containing 28 tablets) whereas in Belgium various pack sizes are marketed (of 28, 56 and 98 tablets). The question arose as to whether it was “necessary” for the parallel trader to repackage the Polish product into packs of 98 tablets. The parallel trader argued this was indeed the case, as the 98-tablet packs were the most sold in Belgium, whereas the 28-tablet packs were clearly less successful. The trade mark holder on the other hand argued that there was no legal obligation and thus no “objective necessity" to market the 98-tablet packs. The parallel trader still had access to the Belgian market when using the 28-tablet packs, and these could, if necessary, be bundled to make 56 or 98-tablet packs. There was therefore no need for repackaging. According to the trade mark holder the parallel trader was merely trying to secure a commercial advantage by using a new 98-tablet pack size. Referring to the ECJ case law, the Brussels Court of Appeal ruled in favour of the parallel trader and decided that the differences in pack sizes used by the trade mark holder in the countries of export and import made it necessary to repackage the pharmaceutical products. To decide otherwise would have contributed to the artificial partitioning of the markets between member states. The Court moreover established that the mere bundling of smaller packages was in this case not a valid option or solution for the parallel importer, as the Belgian authorities would have objected to such bundling. The Court saw no need to refer a new question to the ECJ in this regard. This decision is in line with earlier decisions of the Brussels Court of Appeal, confirming that differences in pack sizes between the member states can be considered to hinder access to the Belgian market. In such circumstances the repackaging of pharmaceutical products may be justified according to the Brussels Court of Appeal, even if the parallel trader would still have retained access to the Belgian market through its use of one of the other pack sizes. The recent referral to the ECJ by the Danish Sø-og Handelsretten may however impact this case law. In this case the question arose whether the trade mark holder may oppose the repackaging if he markets the medicinal product in the same volume and pack sizes in all the relevant countries where the medicinal product is sold. The Danish court also asked whether it is relevant in such circumstances that the parallel importer purchased the product in one pack size in the country of export and repackaged them in another pack size before marketing the products in the country of import. The decision of the ECJ may clarify the thorny issue of parallel imports and pack sizes. Unfortunately a decision is not to be expected any time soon. Many of you will know by now that I was elected as PTMG Chairman during the Spring conference in Venice earlier this year. I feel highly honored to have been elected by my fellow PTMG Committee Members and really look forward to this new role. At the same time I would like to pay tribute to my wonderful predecessor Sophie Bodet who made such a good job as our previous PTMG Chair in the last three years. It will be quite a challenge to succeed her, but I promise to do my very best! After a nice summer we are all back to work again. A lot of current developments will most probably require our attention in the months to come such as the draft of a European Trade Secrets Directive, the last revision of the Chinese trademark law, OHIM's Convergence Paper 5 etc. But do not worry: A lot of interesting ongoing topics will be covered in our PTMG Autumn Conference in Warsaw at the end of this month. Again we are fully booked for this event. So I hope to see many of you there! Frank Meixner 2