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Supreme Court of Denmark

Co-branding was unauthorised 

Case no. 40/2008
Judgment 21 September 2009

Handelsselskabet af 5. januar 2002 A/S in liquidation (previously Orifarm A/S)
Ompakningsselskabet af 1. november 2005 A/S (previously Medipack A/S)


Sanofi-aventis Denmark A/S

Co-branding was unauthorised, but a claim for compensation relating to this co-branding was not admitted due to inactivity

From 1996 to 2000, Orifarm A/S marketed parallel-imported medicinal products from Sanofi-aventis Denmark A/S under the figurative mark "Orifarm" and a triangular logo.
Sanofi-aventis brought an action against Orifarm as well as Medipack A/S, the company responsible for repackaging the products, claiming that they were not authorised to repackage or market the repackaged products and that they should pay compensation to Sanofi-aventis in that connection.   
Sanofi-aventis did not contest that Orifarm, in accordance with the case law of the European Court of Justice, was authorised to repackage and in that connection re-label the new packaging; however, it submitted that the re-packaged product's presentation was of such a nature that it damaged Sanofi-aventis' trade mark.
The Supreme Court found that both Orifarm's figurative mark and its triangular logo were so dominant and placed so close to Sanofi-aventis' trade mark (the name of the medicinal product) that both marks, also if assessed separately, could damage the reputation of the trade mark. This is not changed by the fact that it was also indicated elsewhere on the packaging in smaller print who had repackaged and manufactured the product.
Sanofi-aventis. thus, prevailed on the issue of whether Medipack's and Orifarm's repackaging and marketing were unauthorised.
However, the Supreme Court gave judgment in favour of Medipack and Orifarm with regard to the claim for compensation relating to the unauthorised marketing. In this connection, the Supreme Court noted that a special notification scheme has been set up in respect of parallel-imported medicinal products. If this scheme is to work as intended, each party involved must endeavour to consider the other party's legitimate interests. This means, among other things, that after having received the notification within a reasonable deadline, the proprietor of the trade mark must object to the planned design of the packaging if it is not acceptable. The Supreme Court found that Sanofi-aventis had reacted so late that it had forfeited its right to claim payment for the marketing prior to the claim. In addition, the marketing of the individual products had already been discontinued or was discontinued immediately following receipt of the claim.
The Danish Maritime and Commercial Court had come to the same conclusion with regard to the infringement claim, while the opposite conclusion was reached with regard to the claim for compensation. 

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