Rasierklingeneinheiten, decision of 30 April 2018 – I-15 W 9/18

According to established German case law, a cease and desist order generally may not only include the mere omission of acts, but also the performance of possible and reasonable actions to eliminate a state of disruption. It is however not clear how far this obligation may go.

In this context there have been a few decision from the Federal Court of Justice (“FCJ”) which have been rendered in the area of competition law and trademarks. However, a decision for the area of patent law was missing so far. Even though there is not yet a decision of the FCJ the Higher Regional Court in Düsseldorf has now issued a decision which will shed some light on how this topic should be treated in the area of patent law. In order to better understand the latest developments we want to briefly describe the previous decisions of the FCJ before going into detail of the most recent decision of the Higher Regional Court in Düsseldorf.

The FCJ decided in the decisions “Hot-Sox” (decision of 19 November 2015 – I ZR 109/14), “RESCUE Tropfen” (decision of 29 September 2016 – I ZB 34/15) and “Luftentfeuchter” (decision of 4 May 2017 – I ZR 208/15) that in competition law a cease and desist order – both judicial and contractually agreed – basically not only includes the discontinuation of further sales but also the recall of products delivered in the past. In this way, the injunction debtor is to ensure that products already delivered are not sold on by his customers.

In the decision “Produkte zur Wundversorgung” (decision of 11 October 2017 – I ZB 96/16) relating to trademark law, the FCJ clearly stated that these principles should also apply to intellectual property law. The FCJ explained that in principle, the debtor of a cease and desist order is not responsible for the independent actions of third parties. However, he is obliged to influence third parties whose actions are of economic benefit to him if he must seriously expect an infringement and also has legal and actual possibilities of influencing the conduct of the third parties. Therefore, the FCJ decided that a debtor – in the case of preliminary injunction proceedings – does not have to recall the goods distributed by him from his customers, but he must request his customers not to redistribute the received goods for the time being in view of the preliminary injunction.

The decisions were highly criticized by literature and instance courts. It was eagerly awaited how the patent infringement courts would deal with this question and whether they would agree with the opinion of the FCJ. Recently, one senate of the Higher Regional Court Düsseldorf competent for patent infringement. issued the decision “Rasierklingeneinheiten” on this subject (decision of 30 April 2018 – I-15 W 9/18). Interestingly, the Higher Regional Court Düsseldorf essentially disagrees with the view of the FCJ.

The decision concerned the following facts: The District Court of Düsseldorf prohibited the defendants in preliminary injunction proceedings from offering, placing on the market or importing or possessing patent infringing razor blade units for the aforementioned purposes. These units were sold exclusively to end customers via drugstores and retail chains. The defendants informed their customers of the preliminary injunction and discontinued their own acts of use. Some customers resold the units with modified packaging. The plaintiff then initiated enforcement proceedings and argued that the injunction included the request of the customers to discontinue the distribution and furthermore the offer to take back the infringing products. The District Court of Düsseldorf rejected the request.

The Higher Regional Court Düsseldorf essentially confirmed this decision. The Higher Regional Court Düsseldorf referred to the decision “Produkte zur Wundversorgung” and agreed that a cease and desist order may oblige a debtor to influence third parties within the scope of what is possible and reasonable, insofar as this is necessary to eliminate an ongoing fault state and only in this way the cease and desist order can be complied with.

However, the Higher Regional Court Düsseldorf stated that the requirements are not met in the case at hand. The resale is not attributable to the debtors as the customers are legally and factually independent companies and are not subject to any instructions of the defendants. Therefore, there is no act of permanent infringement or rather ongoing fault state.

Furthermore, the Higher Regional Court Düsseldorf takes the view that a cease and desist order does not give rise to any obligation to retrieve infringing goods located in the downstream distribution chain. Such an obligation is reserved for the recall claim as stipulated by law. The claim for recall cannot be enforced by way of preliminary injunction. The cease and desist order and the recall may not be merged. The requirements are different. In addition, the cease and desist order and the recall are subject to different rules in the enforcement proceedings.

Against this background the Higher Regional Court Düsseldorf is of the opinion that the debtor is not obliged by a preliminary injunction to request his customers not to resell the goods. This request would constitute an act that is not part of the obligation to cease and desist but rather would be equivalent to an immediate recall of the products.

The decision (in German) can be read here.

Reported by Alexander Haertel and Carina Höfer – Kather Augenstein Rechtsanwälte