By first instance decision of 24 July 2017 (no. 8240/17), the IP Court of Milan ruled in a dispute between the two pharmaceutical companies Bayer and DOC Generici, stating that some communications spread by the latter constituted forbidden advertising of class C drugs and hence amounted to unfair competition against Bayer. We already talked about drugs advertising here on this blog.

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The dispute arose from the fact that DOC Generici had published on their website the list of their products and prices, specifying the relevant active ingredients, reimbursement class, originator drug and excipients; in addition, they had published in a magazine an advertisement that contained information on their own generic drugs. Bayer complained that this constituted a breach of the laws on the advertising of medicinal products under art. 115 and following of Legislative Decree no. 219/06 (which implemented Directive no. 2001/83/CE), a breach of Bayer’s rights in the trademarks of the originator drugs, and unfair competition. DOC Generici instead alleged that the disputed communications were not of an advertising nature, since the information that was disclosed therein would coincide with those contained in the substitution lists published by the Italian Medicines Agency (AIFA).

In its decision, the Court granted Bayer’s view that the communications of DOC Generici infringed art. 115 of Legislative Decree no. 219/06, which prohibits the advertising of medicinal products available only on prescription. In fact, the Judges stated, the communications were characterised by the elements that, according to the EU case-law, make a communication an advertising – as opposed to a merely informative – message, i.e.:

  • they only concerned the DOC Generici products and therefore did not provide consumers with objective and general information on the differences between originators and generic medicines, but focussed on DOC Generici products only in order to promote their purchase in place of the relevant originators;
  • they were chosen within different substitution lists and manipulated, as they differ from the substitution lists in the addition of classification criteria and of further information (excipients) regarding the products marketed by DOC Generici;
  • they are not directed at qualified operators but at the general public of consumers, and with visualisation methods that do not require any active research by consumers, so that even those who are not interested in the medicines in question will see them.

Based on the foregoing, the Court concluded that the dissemination of the communications in question constituted an act of unfair competition against Bayer under art. 2598(1)(3) of the Civil Code, as it was made in breach of the rules on the advertising of medicinal products. Those rules, in fact, “are certainly linked to the public interests relating to the protection of the citizens’ primary right to health, but also place a number of limitations on the business activities of the market operators in relation to one aspect – i.e. advertising – that directly relates to competition and to the market and, therefore, to the position of the company compared to its competitors, on which advertising activity has a great influence.

The decision therefore enjoined DOC Generici from the abovementioned activities and ordered it to reimburse Bayer’s legal fees to the amount of € 20,000.