# C_2006326EN.01001601.xml

| 30.12.2006 | EN | Official Journal of the European Union | C 326/16 |
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30.12.2006

EN

Official Journal of the European Union

C 326/16

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Judgment of the Court (Second Chamber) of 9 November 2006 (reference for a preliminary ruling from the Bundesgerichtshof — Germany) — Montex Holdings Ltd v Diesel SpA

(Case C-281/05) (1)

1

(Trade marks - Directive 89/104/EEC - Right of the proprietor of a trade mark to prohibit the transit of goods bearing an identical sign through the territory of a Member State in which the mark enjoys protection - Unlawful manufacture - Associated State)

(2006/C 326/31)

Language of the case: German

Referring court

Bundesgerichtshof

Parties to the main proceedings

Applicant: Montex Holdings Ltd

Applicant:

Defendant: Diesel SpA

Defendant:

Re:

Reference for a preliminary ruling — Bundesgerichtshof — Interpretation of Articles 28, 29 and 30 of the EC Treaty and of Article 5(1) and (3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Right of the proprietor of a trade mark to prohibit the transit of goods bearing an identical sign across the territory of a Member State where that mark is protected — No protection in the country of destination

Operative part of the judgment

| 1. | Article 5(1) and (3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the proprietor of a trade mark can prohibit the transit through a Member State in which that mark is protected (the Federal Republic of Germany in the present case) of goods bearing the trade mark and placed under the external transit procedure, whose destination is another Member State where the mark is not so protected (Ireland in the present case), only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that Member State of transit. |
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1.

Article 5(1) and (3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the proprietor of a trade mark can prohibit the transit through a Member State in which that mark is protected (the Federal Republic of Germany in the present case) of goods bearing the trade mark and placed under the external transit procedure, whose destination is another Member State where the mark is not so protected (Ireland in the present case), only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that Member State of transit.

| 2. | It is in that regard, in principle, irrelevant whether goods whose destination is a Member State come from an associated State or a third country, or whether those goods have been manufactured in the country of origin lawfully or in infringement of the existing trade mark rights of the proprietor in that country. |
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2.

It is in that regard, in principle, irrelevant whether goods whose destination is a Member State come from an associated State or a third country, or whether those goods have been manufactured in the country of origin lawfully or in infringement of the existing trade mark rights of the proprietor in that country.

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(1)  OJ C 243, 01.10.2005.

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