In Zino Davidoff SA v Bundesfinanzdirektion Südost C-302/08 2 July 2009 (unreported) the European Court of Justice (ECJ) ruled that a Madrid Protocol mark designating the Community has the same effect as a Community trade mark (CTM) for the purposes of Article 5(4) of the Customs Regulation (1383/2003/EC). The case was referred by a German court relating to the use of Madrid Protocol trade marks as part of the brand owner’s arsenal against the importation of infringing goods into the European Community,

BACKGROUND

Davidoff lodged an application with the German customs authorities under Article 5(4) for the border seizure of goods that it suspected infringed 12 of its trade marks, registered internationally under the provisions of the Madrid Protocol. German customs dismissed the application, stating that Regulation 1383/03 related only to CTMs and not to Madrid Protocol marks. Davidoff appealed to the Finanzgericht München, which took the view that Article 5(4) applied equally to Madrid Protocol marks since, by virtue of Article 146 of the Community Trade Mark Regulation (40/94/EC), an internationally registered trade mark that designates the European Community has the same effect as a CTM. Nonetheless, the Finanzgericht München decided to refer the question to the ECJ.

DECISION

The ECJ noted that the Customs Regulation was adopted prior to the accession of the European Community to the Madrid Protocol. However, it found that Article 4(1) of the Madrid Protocol provided that the protection of the mark in each of the contracting states or regions designated by the holder of that mark was to be the same as if the mark had been deposited direct with the intellectual property office of that state or region.

In the light of recitals 1, 6 and 8 of Regulation 1992/2003/EC (which provides for the accession of the Community to the Madrid Protocol), Article 146(2) of the Community Trade Mark Regulation provides that the international registration of a trade mark designating the European Community is to have the same effect as the registration of a mark as a CTM.

Article 5(4) of the Customs Regulation expressly allows only “the right-holder of a Community trade mark”, in the context of an application to intervene, to secure, in addition to action by the customs authorities of the Member State in which it is lodged, action by the customs authorities of one or more other Member States.

However, following the assimilation into CTMs of internationally registered trade marks, it must necessarily be accepted that, in conformity with the Community legislature’s intention in acceding to the Protocol, the application of Article 5(4) of the Customs Regulation may also be requested by the holder of an internationally registered trade mark.

Therefore, Article 5(4) of the Customs Regulation, in conjunction with Article 146 of the Community Trade Mark Regulation, must be interpreted as allowing the holder of an internationally registered trade mark to secure action by the customs authorities of one or more other Member States, besides that of the Member State in which it is lodged, just like the proprietor of a CTM.