Judgment of the Court (Sixth Chamber) of 2 July 2009 (Reference for a preliminary ruling from the Finanzgericht München — Germany) — Zino Davidoff SA v Bundesfinanzdirektion Südost

(Case C-302/08) (1)

(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)

2009/C 205/15

Language of the case: German

Referring court

Finanzgericht München

Parties to the main proceedings

Applicant: Zino Davidoff SA

Defendant: Bundesfinanzdirektion Südost

Re:

Reference for a preliminary ruling — Finanzgericht München — 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) — The right to make an application to the customs authorities to take action which, apart from seeking action to be taken by the customs authorities in the Member State in which the application is made, seeks action from customs authorities of one or more other Member States, exists only for the proprietors of Community trade marks — Extension of that right to proprietors of internationally registered trade marks within the meaning of Article 146 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark — Legal effects of the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks.

Operative part of the judgment

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.

(1)  OJ C 247, 27.9.2008.