The third treat from the Court of Justice of the European Union this morning was a rare occurrence -- consideration by Europe's Finest of the effects of the Madrid Protocol, in Case C‑302/08, Zino Davidoff SA v Bundesfinanzdirektion Südost. This was a reference for a preliminary ruling from the Finanzgericht München (Germany) -- not one of the regular suppliers of intellectual property questions to the Court.
Invoking Article 5(4) of Regulation 1383/2003 -- the Regulation that lets you get suspected counterfeits and infringements suspended from free movement within the EU till you can tell if they're genuine fakes or not -- Davidoff applied to the Oberfinanzdirektion Nürnberg (Bundesfinanzdirektion Südost) for border seizure of goods suspected of infringing 12 of its internationally registered trade marks. According to its text, Article 5(4) 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".
"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 Court ruled this morning, in answer to this question:
"Article 5(4) of Council Regulation ... 1383/2003 ... 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".The reasoning of the Court in this very short judgment (just 27 paragraphs, inclusive of the relavant legal texts, the active part and the costs order) runs like this:
"23 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 IPKat is cheered by this ruling which, in his opinion, is unchallengeable.
24 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.
25 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".
Cool Water in Madrid here