Effects of the Federal Court of Justice (BGH) case law on recall obligations based on a claim for injunctive relief
At the end of 2019, the Federal Court of Justice confirmed its case law in its decision of 17 October 2019 (Ref. I ZB 19/19), according to which an obligation to desist also includes an obligation to recall (see FCJ, GRUR 2016, 720 – Hot Sox; FCJ, GRUR 2017, 208 marginal no. 24 – recall of RESCUE products; FCJ, GRUR 2018, 292 – products for wound care). The order was based on an appeal against an order of the Düsseldorf Higher Regional Court (decision of 14 February 2019 – 20 W 26/18).
According to the decision of the Federal Court of Justice, a debtor of an injunction must – if he has the opportunity to do so – influence third parties whose activities are of economic benefit to him and in respect of whom he must seriously expect – possibly further – infringements. This case law is applicable to all claims for injunctive relief in the field of IP law, including those from a declaration of cease and desist.
1. No restriction to trade mark or competition law
The BGH decisions mentioned above have so far only concerned claims for cease-and-desist based on trademark or competition law. However, the considerations made by the FCJ are also transferable to other cease and desist claims relevant to intellectual property rights. This is because they concern the claim to cease and desist as such and do not involve considerations which concern trademark or competition law only.
One of these general considerations is that in the case of an act which has created a persistent state of disturbance, the injunction prohibiting the act must, in the absence of any indications to the contrary, generally be interpreted as meaning that the debtor is obliged not only to cease and desist from such acts but also to take possible and reasonable steps to rectify the state of disturbance (see FCJ, GRUR 2018, 292, marginal 19).
According to the FCJ, none of the special statutory regulations governing the right to recall the product preclude this. The FCJ expressly mentions the regulations of Sec. 98 II Copyright Act, Sec. 18 II Trade Mark Act, Sec. 43 II Design Act, Sec. 24a II GebrMG, Sec. 37a II SortG and also Sec. 140a III PatG (see FCJ, GRUR 2018, 292, marginal 29). According to the FCJ, none of these regulations have a blocking effect with regard to the obligation to recall covered by the injunction. The naming of all these regulations also indicates that the case law is transferable to other areas of intellectual property law – such as patent law. However, it remains to be seen how the case law of the lower instance courts will react in this regard. In an earlier decision, the Düsseldorf Higher Regional Court already denied recall obligations based on a claim to cease and desist (see Düsseldorf Higher Regional Court, decision of 30 April 2018 – I-15 W 9/18).
2. No restriction to principal proceedings
The FCJ clarifies (see FCJ in GRUR-RS 2019, 35646, marginals 16 to 21) that the same applies to a cease and desist title in preliminary injunction proceedings. The concerns of the previous instance that the assertion of an obligation to recall in preliminary injunction proceedings could lead to an inadmissible anticipation of the principal matter are sufficiently taken into account by the fact that the debtor is, if necessary, merely obliged to take measures which secure the creditor’s defence claims without finally satisfying him in these claims. This included the demand to the customers not to resell the received goods for the time being with regard to the interim injunction.
3. Impact on cease-and-desist declaration
Even if the FCJ referred to judicial cease and desist titles so far, these considerations should also be transferable to cease and desist declarations. For, as mentioned above, the above-mentioned considerations concern the claim for injunctive relief as such. With regard to the question of which legal consequences are linked to this injunction, a judicial title is subject to interpretation in the same way as a cease-and-desist declaration (see also Bösling in GRUR-Prax 2016, 259; Sakowski in GRUR 2017, 355). It can therefore be assumed that even declarations of cease and desist, in the absence of any indications, are in principle to be interpreted in such a way that the party obliged to cease and desist is subject to a duty to recall.
Such an interpretative result could probably be avoided by explicitly excluding the obligation to recall in the declaration to cease and desist. However, this results in the risk that this would not eliminate the risk of repetition and that the holder of the IP right could file a lawsuit even if a (“limited”) cease and desist declaration were issued (see also Sakowski in GRUR 2017, 355 and NJW 2016, 3623). Whether this danger can be avoided by the parties mutually agreeing on such an exclusion of the obligation to recall probably depends on the individual case.
In principle, a debtor can waive his right. However, such an agreement only applies inter partes. Thus, if there are further debtors, such as further IP right holders or in the case of various acts of infringement under competition law, these further debtors will most likely not be relieved of the risk of repetition with respect to these debtors. In order to be on the safe side, each case should therefore be assessed individually, if one wants to avoid an obligation to recall by means of a cease and desist declaration to be made.
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