Intellectual Property Law

After 2014 the EFTA Court has decided one more IP case, E-16/14, Pharmaq AS v. Intervet International BV, judgment of 9 April 2015, published electronically, concerning supplementary protection certificates for medicinal products (so-called SPCs). This judgment will not be dealt with here.

See, however, footnote 1, meaning that the case-law of the EFTA Court has now moved to a ‘second stage’.

Directive 89/104/EEC, [1989] O.J. L 40/1, with necessary EEA amendments in Annex XVII EEA, at point 4 (c). Later the Directive has been repealed and replaced by Directive 2008/95/EC, [2008] O.J. L 299/25, included in the EEA Agreement by JCD on 4 December 2009, no 146/2009, [2010] L 62/43.

So expressly Case C-352/95 SA Phytheron International v. SA Jean Bourdon [1997] ECR I-1729, paragraph 21.

Case E-2/97 Mag Instruments Inc. v. California Trading Company Norway [1997] EFTA Ct. Rep. 127; Case C-355/96 Silhouette International Schmied GmbH [1998] ECR I-4799.

Maglite (fn. 5 supra) paragraph 19.

With reference to the Dior case, Case C-337/95 Parfums Christian Dior SA and Parfums Christian Dior BV v. Evora BV [ECR] 1997 I-6013.

Maglite (fn. 5 supra) paragraph 20.

Maglite (fn. 5 supra) paragraph 22.

Maglite (fn. 5 supra) paragraphs 24 and 25.

Maglite (fn. 5 supra) paragraphs 26 and 27.

Maglite (fn. 5 supra) paragraph 27.

Maglite (fn. 5 supra) paragraph 29.

Silhouette (fn. 5 supra) paragraphs 25 and 26.

Silhouette (fn. 5 supra) paragraph 27.

Silhouette (fn. 5 supra) paragraph 29.

See Joller (1998), pp. 751 and 759; von Fragstein (1998), pp. 405 and 407.

Baudenbacher (1998), p. 645 notes to the fact that although ‘the ECJ is under no explicit obligation to pay due account to EFTA Court decision …, [o]ne may … assume that such an incumbency follows from the spirit of the EEA Agreement, in particular from its overall goal of securing a homogeneous development of the law in the EEA’. It is not difficult to concede to this view, but the problem with Maglite was that the EFTA Court in that case strongly argued against homogeneity as far as the internal market argument was concerned.

To be sure, reference to Maglite was made by Advocate General Jacobs in the same case, see point 43 of his opinion, [1998] ECR I-4799. Even the Advocate General, however, refrained from elaborating on the impact of Maglite on Silhouette, limiting himself mainly to citing the grounds of Maglite where the EFTA Court emphasised the differences between the Community (EU) and the EEA.

Silhouette (fn. 5 supra) paragraph 4.

Note in this context that the ECJ consequently speaks about the Member States’ obligations (see eg. paragraphs 24–31) and not the obligations of the Contracting Parties.

See also Alexander (1999), p. 66.

See my criticism in Rognstad (1999a), pp. 131 and 137–142, and even more elaborated in Rognstad (1999b).

Former Articles 113 (Rome Treaty) and 133 (Amsterdam Treaty).

See Blanchet et al. (1994), p. 43, pointing out that ‘[a]lthough it was discussed during the negotiations whether in particular the rules pertaining to technical barriers of trade (TBTs) or on exhaustion of intellectual property rights, should be limited to originating products, the negotiators voluntarily made them applicable to both originating and non-originating products’.

Joined Cases E-9/07 and E-10/07 L’Oreal Norge AS and L’Oreal SA v. Per Aarskog et al [2008] EFTA Ct. Rep 259.

L’Oreal (fn 27 supra) paragraph 38.

L’Oreal (fn 27 supra) paragraph 27 emphasises that homogeneity is the main objective of the EEA Agreement.

L’Oreal (fn 27 supra) paragraph 31.

L’Oreal (fn 27 supra) paragraph 26.

L’Oreal (fn 27 supra) paragraph 33.

L’Oreal (fn 27 supra) paragraph 34.

L’Oreal (fn 27 supra) paragraph 35.

L’Oreal (fn 27 supra) paragraph 36.

See for example, Case C-487/07 L’Oreal SA et al v. Bellure NV [2009] ECR I-5185 paragraph 58.

See Fredriksen (2010), p. 481.

For a similar view, see Magnússon (2011), pp. 507 and 519–520.

See for example Case 102/77 Hoffmann-La Roche & Co. AG v. Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mBH [1978] ECR 1139.

Joined Cases C-427/93, C-429/93 and C-436/93 Bristol Myers Squibb et al v. Paranova A/S et al [1996] ECR I-3457, paragraph 56.

Case C-379/97, Pharmacia & Upjohn SA v. Paranova A/S, [1999] I-6927, paragraph 42.

Upjohn (fn 41 supra) paragraph 44.

Upjohn (fn 41 supra) paragraph 45.

Case E-3/02 Paranova AS v. Merck & Co. and others [2003] EFTA Ct. Rep. 101.

Paranova (supra fn. 44) paragraph 43, with reference inter alia to the ECJ decision in Case C-443/99 Merck Sharpe & Dohme [2002] ECR I-3703 paragraph 26.

Paranova (supra fn 44) paragraph 44.

Paranova (fn 44 supra) paragraph 46.

Paranova (fn 44 supra) paragraphs 47 and 48.

Paranova (fn 44 supra) paragraphs 53 and 54.

Paranova (fn 44 supra) paragraph 55.

Case C-384/04 Boehringer Ingelheim KG and Boehringer Ingelheim GmbH & Co. KG v. Swingward Ltd. et al [2007] ECR I-3391.

Boehringer II (fn 51 supra) paragraph 38.

Case C-276/05 The Wellcome Foundation Ltd. v. Paranova Pharmazeutica Handels GmbH [2009] I-10429, paragraph 25.

Compare Paranova (fn 44 supra) paragraphs 39 to 43, with Boehringer II (fn 51 supra) paragraphs 33–37).

Boehringer II (fn 51 supra) paragraph 46. According to Myhre (2008), pp. 388 and 394, ‘both the EFTA Court and the ECJ base their grounds on the premise that the use of a ‘house style’ with coloured end stripes or variants of ‘reboxed’ or ‘overstickered’ products may in principle be liable to damage the reputation of the trade mark’ at the same time as he—rightly—points out that this is not the end of the story. The EFTA Court uses, however, the quite different expression ‘in theory’, instead of ‘in principle’ at the same time as it concludes that the ‘use of coloured stripes could not alone constitute a ‘legitimate reason’ as long as the name of the manufacturer and the parallel importer are adequately stated’ (Paranova paragraph 56). It is not evident that this result necessarily will follow from a national court’s assessment of the facts under the Boehringer II test. The advantage of the EFTA Court’s approach is that it gives clearer guidance to the assessment, see also Myhre (2008), p. 397. But the outcome of the different approaches will not necessarily be identical.

In this context, a short comment should be made to Myhre’s observation that while ‘EU commentators have not found it difficult to accept the rejection of the necessity condition to the presentation of the repackaged product’, citing two contributions published after the Boheringer II decision, ‘Norwegian commentators, however, have been very critical at least of the Paranova judgment, insisting that the necessity condition also applies to the presentation of the repackaged product’, see Myhre (2008), pp. 395–396. The statement is quite misleading. The two Norwegian contributions he refers to, including my own article Rognstad (2006), p. 23, were published before the ECJ’s ruling in Boehringer II and on the—in hindsight obviously wrong—anticipation that the ECJ would not follow the EFTA Court’s ruling on the necessity requirement. After Boehringer II even this author does ‘not find it difficult to accept’ the rejection of the necessity condition as a matter of law. That having been said ‘EU commentators’ also have criticized the reasoning of the courts on the co-branding issue, see for example, Hays (2004), pp. 821 and 857–858 and Slopek (2011), pp. 1009 and 1016–1017. As with other issues there are different opinions, and the Norwegian scholarship is certainly not unique in this respect.

Case E-1/98 The Norwegian Government v. Astra Norge AS, [1998] EFTA Ct. Rep. 140.

Astra (fn 57 supra) paragraphs 24 and 26.

See Kur (1999a), p. 24, see in particular fn 21 and 32. See also Kur (1999b), p. 379 and 392–395.

Dior (fn 7 supra) paragraph 58

See Kur (1999a), p. 25.

Compare Kur (1999a), p. 26.

This expression is previously used by the author in Rognstad (1999b), p. 750.