Effects of international registrations in border seizure actions clarified

European Union
In Zino Davidoff SA v Bundesfinanzdirektion Südost (Case C-302/08, July 1 2009), in a reference for a preliminary ruling from the Finanzgericht München (Germany), the European Court of Justice (ECJ) has clarified that the holder of an internationally registered trademark may secure action by the customs authority of one or more member states, besides that of the member state in which the application for border seizure was lodged, in the same way as the proprietor of a Community trademark (CTM).

Zino Davidoff SA lodged an application with Bundesfinanzdirektion Südost, the German customs authority, for border seizure of goods suspected of infringing 12 of its internationally registered trademarks. The EU Customs Regulation (1383/2003) sets out the conditions for action by the customs authorities where goods are suspected of infringing an IP right. According to Article 5(4) of the regulation, the owner of a CTM might, in addition to requesting action by the customs authorities of the member state in which the application for border seizure was lodged, request action by the customs authorities of one or more other member states.

Bundesfinanzdirektion Südost dismissed Davidoff’s application on the grounds that:
  • Article 5(4) of the regulation applies only to “the right holder of a CTM”; and
  • the regulation was not amended by the EU legislature despite the accession of the European Union to the Madrid Protocol on October 1 2004.
Davidoff appealed to the Finanzgericht München. The court stayed the proceedings and referred the following question to the ECJ for a preliminary ruling:

In the light of the accession of the [European Union] to the Protocol, is Article 5(4) of Regulation 1383/2003 to be interpreted as meaning that, despite the use of the term 'Community trademark', marks with international registrations within the meaning of Article 146 et seq of Regulation 40/94 are also covered?

Article 146 of the Community Trademark Regulation (40/94) provides that an international registration designating the European Union shall have the same effect as an application for a CTM. It further states that if no refusal has been notified, the international registration of a mark designating the European Union shall have the same effect as a CTM registration.
 
The ECJ underlined that the EU Customs Regulation was adopted prior to the accession of the European Union to the Madrid Protocol. Moreover, it pointed out that the EU legislature meant to treat internationally registered marks as CTMs as far as their practical effects are concerned. Therefore, the ECJ ruled that:
 
"following the assimilation into [CTMs] of internationally registered trademarks, it must necessarily be accepted that in conformity with the Community legislature’s intention [...], the application of Article 5(4) of the [EU Customs Regulation] may also be requested by the holder of an internationally registered trademark."
 
This clarification is to be welcomed, as it strengthens the position of trademark owners in the fight against counterfeiting in the context of EU-wide border seizure applications. Trademark owners may rely not only on CTMs, but also on international registrations designating the European Union to apply for border seizure. Although the ECJ's interpretation went against the strict wording of Article 5(4), it relied - rightfully - on the intent of the EU legislature.

The ECJ issued its judgment without a formal opinion of the advocate general.

Florian Schwab, Boehmert & Boehmert, Munich

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