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ARTICLE · 02 MAY 2013

Unhappy News for Trade Marks Travelling through Germany

DLA Piper Australia
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A recent German case considered the legal status of counterfeit goods.

AustraliaIntellectual Property
Stefan Dittmer
Stefan Dittmer
Annemarie Bloss
Annemarie Bloss

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.

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