Setterwalls acted for Orifarm in parallel trade case

The Patent and Market Court of Appeal approved Orifarm’s action and held that parallel importers are as a rule not obliged to name the holder of the trademark on their packages.

Several companies of the Merck Sharp & Dohme Group (MSD) sued Orifarm for alleged trademark infringement in 2014. The dispute concerned Orifarm’s parallel import of a number of MSD’s pharmaceutical products to Sweden. MSD argued that Orifarm was required to state on its packages that MSD owned the trademarks used on the packages. By not stating that the trademarks belonged to MSD, MSD argued, the reputation of the trademarks was liable to be damaged. Moreover, MSD argued that Orifarm’s failure to notify MSD about changes made to the previously notified packages constituted trademark infringement.

The Patent and Market Court dismissed MSD’s action in a ruling announced in March 2017. Following MSD’s appeal, the Patent and Market Court of Appeal dismissed the appeal and affirmed the first instance ruling in a judgment announced on 13 June 2018. The Patent and Market Court of Appeal held that MSD had not shown that the absence of a statement on the packages that the trademarks belonged to MSD had caused any damage to the reputation of the trademarks. Also, the Patent and Market Court of Appeal held that Orifarm had no obligation to notify MSD of changes to the packages in case such changes were made to conform the packages to requests made by MSD. The judgment is final and cannot be appealed.