CELEX: 62008CJ0302
Trade marks
International registration
Protocol Relating to the Madrid Agreement
Regulation (EC) No 40/94
Article 146
International registration and a Community trade mark having the same effects in the Community
Regulation (EC) No 1383/2003
Article 5(4)
Goods suspected of infringing a trade mark
Customs action
Proprietor of a Community trade mark
Right to secure action also in Member States other than the Member State in which the application is lodged
Extension to the holder of an international registration

This reference for a preliminary ruling concerns the interpretation of 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 (OJ 2003 L 196, p. 7) and Article 146 of Council Regulation
(EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC)
No 1992/2003 of 27 October 2003 (OJ 2003 L 296, p. 1; ‘Regulation No 40/94’).
The reference has been made in the course of proceedings between Zino Davidoff SA (‘Davidoff’) and the Bundesfinanzdirektion
Südost (South Eastern Federal Revenue Office) concerning Davidoff’s application for border seizure in respect of 12 internationally
registered trade marks, of which it is the holder.

Legal context
Article 1 of Regulation No 1383/2003 states:
‘1.      This Regulation sets out the conditions for action by the customs authorities when goods are suspected of infringing an intellectual
property right in the following situations:
(a)      when they are entered for release for free circulation, export or re-export …;
(b)      when they are found during checks on goods entering or leaving the Community customs territory …, placed under a suspensive
procedure … in the process of being re-exported subject to notification … or placed in a free zone or free warehouse … .
2.      This Regulation also fixes the measures to be taken by the competent authorities when the goods referred to in paragraph 1
are found to infringe intellectual property rights.’
Article 2 of the same regulation specifies:
‘1.      For the purposes of this Regulation, “goods infringing an intellectual property right” means:
(a)      counterfeit goods; namely:
(i)      goods, including packaging, bearing without authorisation a trade mark identical to the trade mark validly registered in respect
of the same type of goods, or which cannot be distinguished in its essential aspects from such a trade mark, and which thereby
infringes the trade mark-holder’s rights under Community law, as provided for by Council Regulation (EC) No 40/94 of 20 December
1993 on the Community trade mark or the law of the Member State in which the application for action by the customs authorities
is made;
…
…
2.      For the purposes of that Regulation, “right-holder” means;
(a)      the holder of a trade mark, copyright …
...’
Article 5 reads as follows:
‘1.      In each Member State a right-holder may apply in writing to the competent customs department for action by the customs authorities
when goods are found in one of the situations referred to in Article 1(1) (application for action).
…
4.      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.
…’
The Community acceded with effect from 1 October 2004 to the Protocol relating to the Madrid Agreement concerning the international
registration of marks adopted at Madrid on 27 June 1989 (‘the Protocol’) pursuant to Council Decision 2003/793/EC of 27 October
2003 (OJ 2003 L 296, p. 20).
Article 4 of the Protocol states:
‘Effects of international registration
(1)(a) From the date of the registration or recordal effected …, the protection of the mark in each of the contracting parties concerned
shall be the same as if the mark had been deposited direct with the office of that contracting party. If no refusal has been
notified to the International Bureau … or if a refusal notified … has been withdrawn subsequently, the protection of the mark
in the contracting party concerned shall, as from the said date, be the same as if the mark had been registered by the office
of that contracting party.
…’
Article 146 of Regulation No 40/94, entitled ‘Effects of international registrations designating the European Community’,
provides:
‘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.
…’

The main proceedings and the question referred to the Court
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, for border seizure of goods suspected of infringing 12 internationally registered
trade marks, of which it is holder.
That action 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 trademark’ and that that regulation was not amended by the Community legislature despite the Community’s
accession to the Protocol.
Davidoff brought an appeal against that decision before the Finanazgericht München.
The referring court takes the view that the Community provisions at issue pose interpretation problems.
For its part, it is of the view that, by its very wording, Article 5(4) of Regulation No 1383/2003 also applies to the right-holder
of an internationally registered trade mark, since such a trade mark is treated as a Community trade mark with regard to its
effects in the Community.
In those circumstances, the Finanzgericht München decided to stay the proceedings and to refer the following question to the
Court for a preliminary ruling:
‘In the light of the accession of the Community to the [Protocol], is Article 5(4) of Regulation [No 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 [No 40/94], are also covered?’

The question referred for a preliminary ruling
By its question, the national court asks, essentially, whether Article 5(4) of Regulation No 1383/2003, read in the light
of Article 146 of Regulation No 40/94, allows 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.
In this respect, it must be held that Regulation No 1383/2003 was adopted prior to the accession of the Community to the Protocol
pursuant to Decision No 2003/793.
Pursuant to Article 4(1) of the Protocol, the protection of the mark in each of the Contracting Parties designated by the
holder of that mark is to be the same as if the mark had been deposited direct with the Office of that Contracting Party.
Recital 8 in the preamble to Regulation No 1992/2003 states that the regulation contains the measures which are necessary
to give effect to the accession of the Community to the Protocol.
Recital 6 in the preamble to the same regulation points out in particular that it is necessary to allow holders of international
registrations under the Protocol to apply for protection under the Community trade mark system.
Recital 1 in the preamble specifies that uniform protection is given to Community trade marks and that they produce their
effects throughout the entire area of the European Community.
In the light of those recitals, Article 146(2) of Regulation No 40/94, as inserted by Regulation No 1992/2003, 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 Community trade mark.
As the referring court, the applicant in the main proceedings, all Member States submitting observations, and the Commission
of the European Communities maintain, the Community legislature thus meant, so far as their practical effects are concerned,
to treat internationally registered marks as Community trade marks.
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.
According to its wording, it only allows ‘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 Community trade marks of internationally registered trade marks, 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.
Therefore, the answer to the question referred for a preliminary ruling is that Article 5(4) of Regulation No 1383/2003, in
conjunction with Article 146 of Regulation No 40/94, 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.

Costs
Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court,
the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs
of those parties, are not recoverable.
On those grounds, the Court (Sixth Chamber) hereby rules:
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.
[Signatures]
*
Language of the case: German.