The German Federal Supreme Court (BGH) determined in its
"Clinique Happy" decision (BGH I ZR 235/10), that
imported counterfeit articles traveling through Germany intended
for sale in a foreign market (so-called "unbroken transit of
custom sealed goods" – zollverschlossene,
ungebrochene Durchfuhr von Waren) are not subject to the
protection of German trade mark law, even if the mark in question
is registered in Germany or the EU. Such marks are not being used
as trade marks pursuant to the German trademark Act during the mere
transport of the articles through Germany to a foreign destination
market. Furthermore, the principle of territoriality foreign
trademark law in connection with German tort law does not grant
protection to marks merely travelling through Germany.
The BGH made it clear that counterfeit goods, protected by
German trade marks and merely travelling uninterrupted through
Germany do not violate German trade mark law as it does not
constitute a required "use in commerce". Furthermore, the
court also denied protection against this transit under German tort
law. As a result, to claim for preliminary injunctive relief, trade
mark owners must now demonstrate that an infringement of their
trade mark rights also threatens in the country of destination of
the goods and that the import of those goods may be prohibited
under the laws of the country of destination.
This publication is intended as a general overview and
discussion of the subjects dealt with. It is not intended to be,
and should not used as, a substitute for taking legal advice in any
specific situation. DLA Piper Australia will accept no
responsibility for any actions taken or not taken on the basis of
DLA Piper Australia is part of DLA Piper, a global law firm,
operating through various separate and distinct legal entities. For
further information, please refer to www.dlapiper.com
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