In the case of Zino Davidoff SA v Bundesfinanzdirektion Sudost, the ECJ has ruled that the proprietor of an international trade mark protected under the Madrid Protocol has the same rights under the Counterfeit Goods Regulation (the Regulation) as the proprietor of a Community Trade Mark to secure action against infringing goods by the customs authorities of a number of EU member states.

Background

Article 5(1) of the Regulation states that an IPR owner may make an application for customs authorities to take action to detain goods suspecting of infringing their Intellectual property rights. Article 5(4) states that the holder of a Community Trade Mark (CTM) may request that action be taken not only by the customs authorities in the member state in which the application is lodged but also by customs authorities in other EU Member States.

Decision

In this case, a lower court had previously held that only the owner of a CTM was able to take Community-wide action under Article 5(4) of the Regulation. The ECJ ruled, however, that an international mark designating the EC was to be treated as it if was a CTM for the purpose of the Regulation. Therefore, Article 5(4) of the Regulation extended to the owner of an international trade mark.

Comment

This decision essentially establishes wider rights for the owners of international trade marks than previously envisaged and will be welcomed by them as strengthening their ability to protect their brands.

Further reading

Click here for a copy of the judgment