Higher Regional Court Düsseldorf – No Fulfilment of a claim for information and accounting by way of depositing the information

In the context of a decision of 29 April 2020 (docket no. I-2 W 9/20) concerning an immediate appeal against a court order for coercive measures, the Higher Regional Court Düsseldorf had to deal with the question whether patent infringers can meet the claim for information and accounting by depositing the owed information (i) with a notary’s office of their choice or (ii) with the depository of the district court.

The Higher Regional Court Düsseldorf denies this and thus follows the Regional Court Düsseldorf, which in this respect had rightly affirmed the requirements of sec. 888 German Code of Civil Procedure and imposed a coercive penalty payment.

In its introduction, the Higher Regional Court Düsseldorf first states that the scope of the claim for information and accounting and the fulfilment of this claim depended purely formally on the operative part (“Tenor”), whereby the reasoning of the decision is to be considered for its interpretation. Substantive considerations did not play a role in the enforcement proceedings.

On this basis, the Higher Regional Court Düsseldorf found that the debtors had not fulfilled the claim for information and accounting by depositing the documents.

Regarding the deposit of the documents with the notary’s office, the Higher Regional Court Düsseldorf states that the debtors owed the creditor information and accounting in accordance with the operative part of the decision. According to the Higher Regional Court Düsseldorf, “a provision of information to third parties may only fulfil the creditor’s claim in accordance with sec. 362 para. 2 in conjunction with sec. 185 para. 1 German Civil Code if the creditor as the party entitled to receive information has consented. Here, the creditor had neither consented to the deposit nor subsequently approved it.

With regard to the deposit of the documents with the depository of the district court, the Higher Regional Court Düsseldorf states that the debtors had no reason for deposit under sec. 372 German Civil Code. A creditor’s default of acceptance was ruled out because the debtors had not actually offered the owed information to the creditor under sec. 294 German Civil Code. Contrary to the operative part of the decision, the debtors had only promised information and accounting if the creditor signed a confidentiality agreement subject to penalty before.

The protection of secrecy asserted as allegedly necessary by the debtors was a substantive objection which was to be considered in the main proceedings (“Erkenntnisverfahren”) but not in the enforcement proceedings. According to the Higher Regional Court Düsseldorf, only in case “that the facts establishing a trade secret only occur after the conclusion of the oral proceedings, the debtors had a corresponding legal remedy in form of the action raising an objection to the claim being enforced in the sense of sec. 767 German Code of Civil Procedure”.

Finally, the debtors could neither claim the objection of impossibility under sec. 275 German Civil Code. Although it corresponds to prevailing case-law and literature that this objection was to be taken into account in enforcement proceedings, because sec. 888  German Code of Civil Procedure had a function to bend somebody’s will (Beugefunktion) in the case of possible actions, but not a punishing function in case of impossible actions. However, the debtors could easily provide information and render accounts. In this respect, they did not claim impossibility, but unreasonableness of information and accounting.

Dr. Benjamin Pesch

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