EU First Impression Trademark Ruling: In Favor of MSD, Against Parallel Importer Orifarm

At the risk of slipping into the admin-is-trivia of internal EU regional trademark rulings, I’ll post just a short note — on a recent Danish Supreme Court decision (across the pond) — which held that a parallel importer must mark its OWN wares, with the following magic words: “[Trademark Name XXX] is a registered trademark of Merck (or MSD)“, to escape infringement liability. This outcome is somewhat surprising, because earlier EU zone decisions had been less inflexible on such matters. The idea was — until now — that it was hard to argue that the foregoing (i.e., missing) words damaged Merck’s own proprietary marks, in any meaningful way. [My prior reporting on related spat history, from four years ago, may be read here.]

But now the decision is out there, and importers must deal with the risk of omitting the magic words (and thus being held liable for trademark reputation damages). The involved MSD products included Nuvaring®, CeraZette®, Diprophos® and Singulair®, in Denmark.

A bit, then from the very fine local Danish law firm newsletter, on this decision:

. . . .The 2015 decision confirms the degree of care that must be taken by parallel importers when using third-party trademarks. As the main purpose of a trademark is to function as an indication of origin, third-party marks cannot be used in a way which confuses the consumer as to its origin. However, hitherto, repackaging which informed consumers of the parallel importer and the name of the manufacturer was deemed by many to be sufficient. This decision illustrates that the reputation of a trademark can also be damaged by omitting a trademark statement along with use of the trademark.

The Supreme Court decision appears to be the first to consider this specific question in the European Union. Similar proceedings are pending in other EU jurisdictions and it will be interesting to see whether the judgment will affect these proceedings. . . .

So now you know. Off to the North — but not quite into the Danish woods — just a road trip, tonight!

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