Crystal-clear ruling in border measures reference

Author: Marius Schneider (Eeman & Partners, Attorneys-at-law, Brussels; co-author of Border Measures)

Citation: Journal of Intellectual Property Law & Practice 2009 4(11):782-784; doi:10.1093/jiplp/jpp151

Zino Davidoff SA v Bundesfinanzdirektion Südost (Case C-302/08) European Court of Justice, 2 July 2009

The holder of an internationally registered trade mark designating the European Community is entitled to file a ‘Community’ application for customs action under Article 5(4) of Regulation (EC) 1383/2003 of 22 July 2003, just like the proprietor of a Community trade mark.

Legal Context

The European Union's ‘border measures’ Regulation 1383/2003 empowers the customs authorities of the EU Member States to retain goods suspected of infringing certain IP rights in order to enable the right-holder, within a fixed term, to initiate proceedings to determine whether an IP right has been infringed or to settle the matter under the simplified procedure. The filing of an application for action with customs by the right-holder is a cornerstone of the system of border measures, since this application contains important information and a detailed description of the authentic as well as the infringing goods that facilitate their recognition and identification by the customs authorities.

Since the filing and annual renewal of national applications for action throughout the 27 Member States can be burdensome, right-holders often prefer to take advantage of the possibility to file a ‘Community’ application for action under Article 5(4) of the Regulation. A Community application for action is a single application for action designating several Member States. Only the owners of a ‘Community IP right’—a Community trade mark, a Community design right, a Community plant variety right, a designation of origin, geographical indication, or geographical designation protected by the Community—may file such a Community application for action.


Davidoff lodged a Community application for action with the competent German customs department, the Bundesfinanzdirektion Südost, on the basis of several internationally registered trade marks designating the Community. That application was dismissed on the grounds that Article 5(4) of the Regulation concerns only ‘the right-holder of a Community trade mark’ and that that the Border Measures Regulation was not amended by Community legislation despite the Community's accession to the Protocol relating to the Madrid Agreement concerning the international registration of marks of 27 June 1989 (the ‘Madrid Protocol’).
Davidoff appealed to the Finanzgericht München, which took the view that, by its very wording, Article 5(4) of the Regulation also applied to the right-holder of an internationally registered trade mark designating the Community, since such a trade mark is treated as a Community trade mark with regard to its effects in the Community. Nevertheless, the Finanzgericht München decided to stay the proceedings and to seek clarification from the European Court of Justice (ECJ).


The ECJ manifestly thought the case was crystal-clear, since it did not only decide to proceed with the ruling without the need for an Opinion of the Advocate General but also handed down a very short judgment of merely 27 paragraphs. The fact that all parties, namely the referring court, Davidoff as the applicant in the main proceedings, all Member States submitting observations, and the EU Commission, agreed on the answer to be given to the question referred probably encouraged the Court to be concise.

At the outset, the Court noted that Regulation 1383/2003 was adopted before the accession of the Community to the Madrid Protocol, its accession date being 1 October 2004.

The ECJ then emphasized that Article 151(2) of Regulation 207/2009 of 26 February 2009 on the Community trade mark (codified version OJ 2009 L 78 p 1), which provides that
‘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',
meant to treat, as far as the practical effects are concerned, internationally registered marks as Community trade marks.

The Court concluded that, following this assimilation into Community trade marks of internationally registered trade marks, it must necessarily be accepted that, by acceding to the Madrid Protocol, the Community legislature intended to allow the right-holders of internationally registered Community trade marks to file a Community application for customs action under Article 5(4) of the border measures Regulation.

Practical Significance

Although one may regret the fact that the operative part of the ECJ's judgment does not specifically provide that the owners of internationally registered trade marks designating the Community may lodge Community applications for action like right-holders of a Community trade mark and even though the decision contains a few typos, the judgment is to be approved.

The owners of internationally registered trade marks—and by analogy also designs—designating the Community may file Community applications for action with customs. They thus enjoy the main advantage of the Community application for border seizure which is, certainly in comparison to the handling of 27 national applications, a simplified exercise in management:

Only one Community application for action need to be filed with one of the competent customs departments in any Member State. Once granted in the first Member State, the decision is addressed by the customs department which took the decision to the other Member States designated in the application for action.

The Community application for action has a uniform expiry date, as the period during which the customs authorities are to take action on the basis of the application shall be set at 1 year, and can be renewed under a simplified renewal procedure with a single renewal request.

The right-holder may, as long as the Community application for action remains valid, in the Member State where the application was originally lodged, enter a request for action to be taken in another Member State not previously mentioned. In such a case, the period of validity of the new application will be the period remaining under the original application, and it may be renewed in accordance with the conditions applying to the original application.

The decision represents progress in reducing administrative hurdles for IP right-holders in the everlasting battle against counterfeiting and piracy and, although the case appeared crystal-clear from the outset, the clarification is welcome.

The author's correspondence email address is here

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