The European Court of Justice handed down its decision in the case C 281/05. The decision says that goods which are transported via an external method of dispatch, i.e. in a sealed condition from the customs authority of an EU Member State to a customs authority of another Member State do not infringe the trademark rights during transit of a third Member State, if the goods do not leave the external method of dispatch in that state, i.e. are not being put on the market there. The present case concerns the production of jeans in Poland, which were supposed to be transported to Ireland via an external method of dispatch, i.e. in a sealed truck and which are protected by trademark in Germany. The question was whether the transit through Germany constitutes an infringement of trademark rights.

According to the decision of the European Court of Justice, no infringement of a protected trademark occurs, if the goods are being transported via an external method of dispatch and are not tangent to the corresponding member state. It is not sufficient, if there is only a danger that the goods won't reach their destination.

Guidelines of the European Court of Justice:

1. Article 5, paragraphs 1 and 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the proprietor of a trade mark can prohibit the transit through a Member State in which that mark is protected (the Federal Republic of Germany in the present case) of goods bearing the trade mark and placed under the external transit procedure, whose destination is another Member State where the mark is not so protected (Ireland in the present case), only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that Member State of transit.

2. It is in that regard, in principle, irrelevant whether goods whose destination is a Member State come from an associated State or a third country, or whether those goods have been manufactured in the country of origin lawfully or in infringement of the existing trade mark rights of the proprietor in that country.

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