In Pharmon v Hoechst [1985] ECR 2281; [1985] 3 CMLR 775 a licence of right to make the products in question in the UK was granted, but with a ban on exports written into it. Pharmon nevertheless exported the product to the Netherlands and Hoechst sought an injunction to stop the sale of the drug in that country. The European Court of Justice held that Hoechst had not consented to the manufacture of the product by the compulsory licensee. The exclusive right of first marketing must be protected, therefore the patentee could prevent the marketing of parallel imports in such circumstances. The Advocate General added a proviso which was not adopted by the court that this would be different if the patent holder had expressly or impliedly consented to the grant of a compulsory licence. This might, for example, be the case where there were links between the patent holder and the compulsory licensee such as where they were parent and subsidiary.

doi:10.4324/9781843142928-25

Chapter

In Pharmon v Hoechst [1985] ECR 2281; [1985] 3 CMLR 775 a licence of right to make the products in question in the UK was granted, but with a ban on exports written into it. Pharmon nevertheless exported the product to the Netherlands and Hoechst sought an injunction to stop the sale of the drug in that country. The European Court of Justice held that Hoechst had not consented to the manufacture of the product by the compulsory licensee. The exclusive right of first marketing must be protected, therefore the patentee could prevent the marketing of parallel imports in such circumstances. The Advocate General added a proviso which was not adopted by the court that this would be different if the patent holder had expressly or impliedly consented to the grant of a compulsory licence. This might, for example, be the case where there were links between the patent holder and the compulsory licensee such as where they were parent and subsidiary.

Chapter

In Pharmon v Hoechst [1985] ECR 2281; [1985] 3 CMLR 775 a licence of right to make the products in question in the UK was granted, but with a ban on exports written into it. Pharmon nevertheless exported the product to the Netherlands and Hoechst sought an injunction to stop the sale of the drug in that country. The European Court of Justice held that Hoechst had not consented to the manufacture of the product by the compulsory licensee. The exclusive right of first marketing must be protected, therefore the patentee could prevent the marketing of parallel imports in such circumstances. The Advocate General added a proviso which was not adopted by the court that this would be different if the patent holder had expressly or impliedly consented to the grant of a compulsory licence. This might, for example, be the case where there were links between the patent holder and the compulsory licensee such as where they were parent and subsidiary.

ABSTRACT

In order to answer the question whether that exclusive right involves the right to prevent the trademark being affixed by a third person after the product has been repackaged, regard must be had to the essential function of the trademark, which is to guarantee the identity of the origin of the trademarked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish that product from products which have another origin. This guarantee of origin means that the consumer or ultimate user can be certain that a trademarked product which is sold to him has not been subject at a previous stage of marketing to interference by a third person, without the authorisation of the proprietor of the trademark, such as to affect the original condition of the product. The right attributed to the proprietor of preventing any use of the trademark which is likely to impair the guarantee of origin so understood is therefore part of the specific subject-matter of the trademark right.