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Judgment of the ECJ in Case C-302/08, Zino Davidoff SA v Bundesfinanzdirektion Südost

On 2 July 2009, the ECJ handed down its judgment in Case C-302/08, Zino Davidoff SA v Bundesfinanzdirektion Südost. The Court held that Article 5(4) of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights, read in the light of Article 146 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as amended by Council Regulation (EC) No 1992/2003 of 27 October 2003, is to 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 Community trade mark.

On 10 May 2007, on the basis of Article 5(4) of Regulation No 1383/2003, Davidoff lodged an application with the Oberfinanzdirektion Nürnberg, now the Bundesfinanzdirektion Südost (the German South Eastern Federal Revenue Office), for border seizure of goods suspected of infringing 12 internationally registered trade marks, of which it is holder.

Article 5(1) of Regulation 1383/2003 provides that in each Member State a right-holder may apply in writing to the competent customs department for action by the customs authorities when goods suspected of infringing certain intellectual property rights are found in one of the situations referred to in Article 1(1) (application for action).

Article 5(4) further provides that, where the applicant is the right-holder of a Community trade mark, an application may, in addition to requesting action by the customs authorities of the Member State in which it is lodged, request action by the customs authorities of one or more other Member States.

Davidoff’s application was dismissed on 22 August 2007 on the grounds that Article 5(4) of Regulation No 1383/2003 concerns only ‘the right-holder of a Community trade mark’ and that that Regulation was not amended by the Community legislature despite the Community’s accession to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted on 27 June 1989 (’the Protocol’).

Davidoff brought an appeal against that decision before the Finanzgericht München. The latter decided to stay the proceedings and to refer the following question to the ECJ for a preliminary ruling:

‘In the light of the accession of the Community to the Protocol, is Article 5(4) of Regulation 1383/2003 to be interpreted as meaning that, despite the use of the term “Community trade mark”, marks with international registrations within the meaning of Article 146 et seq. of Regulation No 40/94, are also covered?’

The Court decided to proceed to judgment without an Opinion.

It first recalled that Regulation No 1383/2003 was adopted prior to the accession of the Community to the Protocol. Indeed, the Community acceded to the Protocol with effect from 1 October 2004 pursuant to Council Decision 2003/793/EC of 27 October 2003 (OJ 2003 L 296, p. 20).

The ECJ, following the stance of the referring court, Davidoff, all Member States submitting observations, and the Commission of the European Communities, decided that the Community legislature meant, so far as their practical effects are concerned, to treat internationally registered marks as Community trade marks.

Indeed, Article 146(1) and (2) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), inserted by virtue of Regulation No 1992/2003 amending Regulation No 40/94 and entitled ‘Effects of international registrations designating the European Community’, provides that:

‘1. An international registration designating the European Community shall (…) have the same effect as an application for a Community trade mark.

2. If no refusal has been notified (…) or if any such refusal has been withdrawn, the international registration of a mark designating the European Community shall (…) have the same effect as the registration of a mark as a Community trade mark.’

Article 5(4) of Regulation No 1383/2003 relates specifically to a procedure for the implementation in the Community of the protection of a Community trade mark, as regards its effects.

The Court concluded that, following the assimilation into Community trade marks of internationally registered trade marks designating the Community, pursuant to Article 146(2) of Regulation 40/94, it must necessarily be accepted that, in conformity with the Community legislature’s intention in adopting Regulation No 1992/2003, the application of Article 5(4) of Regulation No 1383/2003 may also be requested by the holder of an internationally registered trade mark.

The ECJ’s decision has to be approved. It may seem unfortunate that the Court did not specifically provide in the operative part of the Judgment that the application of Article 5(4) may, in fact, be requested by the holder of an internationally registered trade mark when such international trade mark designates the Community. However, the explicit reference to Article 146(2) of Regulation 40/96 leaves no doubt about this.

Read the Judgment here.