Not so cuckoo: the assimilation of marks from Madrid

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.

Right: here's a useful guide to anyone who needs to navigate Madrid

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".

This application was dismissed on the grounds that (i) Article 5(4) of Regulation 1383/2003 concerned 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. Davidoff appealed to the Finanazgericht München which considered that, by its very wording, Article 5(4) of Regulation 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. The Finanzgericht München therefore stayed the proceedings and referred 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 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.

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".

The IPKat is cheered by this ruling which, in his opinion, is unchallengeable.

Cool Water in Madrid here