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.
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