Trademarks

• Author: International Law Group

The Polo/Lauren Company, L.P., has its registered office in New York and holds several verbal and pictorial trademarks which it has registered in Austria and which are recognized worldwide. Relying on Regulation (EC) No. 3295/94, the EC's "anti-piracy" regulation, Polo/Lauren asked the Austrian customs authorities to detain a batch of allegedly counterfeit Polo T-shirts bearing its trademarks. The Arnoldstein customs office responded by temporarily detaining 633 Polo T-shirts in a Linz warehouse. PT. Dwidua Langgeng Pratama International Freight Forwarders (Dwidua), an Indonesian company, was the consignor and the consignee was Olympic-SC, a Polish company.

Filing in the Landgericht Linz, Polo/Lauren obtained an order that barred Dwidua from selling the counterfeit goods and that allowed Polo/Lauren to destroy the detained T-shirts and send the bill to Dwidua. In the course of an appeal, the Oberster Gerichtshof (Austrian Supreme Court) was uncertain on whether Regulation (EC) No. 3295/94 applied where a customs office of a Member State detains goods bearing the trademark of a company from a non-member nation which have been imported from a non-member country on its way to another non-member state. The Court stayed its proceedings and referred this legal question to the European Court of Justice (ECJ) under Article 234 [formerly Article 177].

The ECJ upholds the use of the Regulation in the instant context. The Council based the Regulation in particular on Article 113 of the EC Treaty (now Article 133 EC) dealing with the Common Commercial Policy. According to its preamble, the Regulation seeks to prevent, as far as possible, the insertion of counterfeit and pirated goods into the internal market and to adopt measures to deal effectively with unlawful trade in such goods. It also takes into account the terms of the GATT agreement on trade-related intellectual property (TRIPS) issues, including trade in counterfeit goods. It is immaterial whether the trademark holder's registered office lies within or without the EC.

"In view of the foregoing considerations, the answer to the national court's question must be that Article 1 of the Regulation is to be interpreted as...