King & Spalding

Firm overview:

US firm King & Spalding’s Frankfurt office, established in 2007, helps German and global clients with a broad range of significant and strategic matters and acts as a hub to the firm’s clients with business and legal interests in Germany, Europe and around the globe. A client says: “For parallel trade matters we have used King & Spalding (Ulf Grundmann), they were excellent with very high expertise in the field. We have been working with them for several years and I would recommend them.”

Team overview:

Ulf Grundman, a partner of the Government Matters Practice Group,  litigates matters before German and European courts, including the General Court and the Court of Justice of the EU. This includes aspects related to parallel imports, protection against falsified products, recalls, and product end-of-life. Grundman advises clients through all stages of the product life cycle, including product development and trademark clearance.

Key matters:

• King & Spalding partner Ulf Grundmann and counsel Elisabeth Kohoutek represented Novartis in a landmark ECJ pharma packaging victory. The ECJ ruled in a judgment of November 17, 2022 on the requests for preliminary rulings from courts in Germany (case number C- 147/20) and Denmark (case number C- 224/20) regarding parallel imports of medicinal products that repackaging of medicinal products by parallel importers generally infringes trade mark rights of the original manufacturer even when taking into account the EU Falsified Medicines Directive and that the original manufacturer can assert its trade mark rights.
• All proceedings deal with the assessment of the area of tension between trademark law on the one hand and pharmaceutical law, in particular in the light of protection against counterfeit medicines, on the other hand. The pharmaceutical company Novartis sued the Danish parallel importer Abacus in Germany and Denmark in the proceedings. With the judgements, the ECJ strengthened the trademark rights of pharmaceutical manufacturers and follows the argumentation of Novartis.

Clients:

Band Pro Film & Digital Inc., Novartis