From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 17 January 2017

BGH: to cease means to recall

We would like to bring the attention of our German Readers a recent decision (published 13 January 2017) of the Federal Court of Justice (Bundesgerichtshof, BGH) with far-reaching implications for practitioners. In essence, the BGH held that any prohibition to distribute a product entails an obligation to actively recall any products already on the shelves, endorsing the view expressed by the Oberlandesgericht Munich in 2013. The same dispute has already led to a  judgment of the ECJ on 23 November 2016 (not related to the enforcement of the order).


Plaintiff had obtained an injunction based on unfair competition law (UWG) against the mareting and distribution of alcoholic beverages under the signs "RESCUE DROPS" and "RESCUE NIGHT SPRAY" ("es zu unterlassen, im geschäftlichen Verkehr als Spirituosen gekennzeichnete Produkte unter der Bezeichnung „RESCUE TROPFEN“ und/oder „RESCUE NIGHT SPRAY“ zu bewerben und/oder zu vertreiben"). By its wording, the order only entails an obligation to cease and desist, and not any obligation to actively recall any products. The order became provisionally enforceable.

Defendant failed to recall any products already sold to retailers (primarily pharmacies). Plaintiff argued that this violated the order - and prevailed. The BGH held that in a case where the continued presence of the products on the shelves of retailers creates a continued disturbance ("fortdauernder Störungszustand"), the obligation to cease and desist includes the obligation to remove the continued disturbance, although generally, an obligation to cease (Unterlassungspflicht) must be distinguished from an obligation to remove (Beseitigungspflicht). It was further irrelevant that the buyers of the products were not obliged to comply with any request for a recall of the products (since they have become the legal owners of the products). The key reasoning is in paras. 24-27 of the decision for those who read German.

While the injunction in this case was based on unfair competition law, it is hard to see that the outcome would have been any different for a prohibition based on trade mark, copyright or patent law. In essence, any obligation to cease distribution of a product in Germany in the future also entails the obligation to recall products already distributed (and not yet used up). Failure to do so makes the Defendant liable to pay the administrative fine imposed by the order in case of non-compliance - in the case at hand, EUR 15,000 for the omission of recalling the products.

9 comments:

Anonymous said...

IPKAT has kind lost its mojo with brexit... (and no I am not one of them just facing reality now).

Just saying but the EU/UK IP situation as it develops is the only real one for most UK readers.

The relevance of national decisions of courts of EU MS will decrease. I know there are other readers but still.

Now WTO blogs had better smarten up their act as that is where it will all be happening for UK readers in time. A lot of time.

Kant said...

Au contrarire. With a hard brexit separating UK IP from decisions of EU MS, advisors in the UK will need to follow"foreign" decisions more closely in order to advise their clients properly.

Anonymous said...

@Anonymous - so what is changing in the UK IP situation that is so stunning that it merits reams of blog posts? For European patent attorneys the impact of Brexit will be small and after Brexit, sorry to say but I doubt Britain will be a key focus or market for the majority. Despite being both UK and EP qualified most of my work comes from Europe and the rest of the world as I suspect it does for the majority of UK/EP patent practitioners. If you're not happy with the IPKAT, I recommend that you set up your own blog. I'm sure you will have a ton of content - let us know when it's up and there's something of note to report that sends ripples beyond the white cliffs of Dover.

Anonymous said...

Interesting point raised in the previous comment. Are there any statistics re. readership of IPKAT by country?

JoaoPereiraMarques said...

I beg to disagree the previous commentator, and also apologize for going off-topic as he/she did, but I feel I should say something from my own non-UK perspective: the IPKAT has long ago reached far, far away, very far indeed, and is now distant from being a UK-focused media (despite a very large percentage of its posts relating to the UK, perhaps due to the location of most of its participants). But it thinks internationally and allows for a collective critical mass to be created and actively stimulated on a regular basis. It has enriched itself and enriched others and perhaps that was the key to becoming one of the most popular IP websites around, and also consistently being so for a such long time now. The Brexit issue should only entice UK readers and participants to bring more (useful) content to the table, not to complaint about how great they could be having it. The times they are a'changing... (https://www.youtube.com/watch?v=gHMBs5yZDEc)

Mark Schweizer said...

The decision of the BGH in this case is indeed relevant only for German practitioners. Therefore "to the attention of our German readers". Other decisions of Member State courts will remain relevant for UK practitioners even after Brexit. I am Swiss, and Switzerland is not a EU Member State. It would be terribly naive for me not to follow the developments in EU law and in important EU jurisdictions. As a previous commentator said, our clients are internationally active, we need to be, too.

Secondly, as JoaoPereiraMarques mentioned, IPKat has a very international readership. Here are the top ten countries by page views for last month:

USA 41%
UK 13%
China 12%
Germany 9%
Russia 9%
France 6%
NL 5%
Norway 3%
Irlande 2%
Turkey 1%

As you can see, we have about as many visitors from China as we have from the UK, and Germany and Russia are not far behind the UK.

Anonymous said...

I think the readership stats sort of prove the point made by the first anonymous. Why is an IP blog which used to be so focused on EU copyright and to a lesser extent EU trade marks (and which can get people going on th emere mention of whether the UPC is a good thing or a bad thing)visited by 41% US?

Recently, the blog itself has started to miss a lot of EU news before the Court, developments in the Commission; and the Council and EP on files. Much info had come from interested UK lobbyists/lawyers/policy advisers who still are the most active and numerous in Brussels.Some are jumping ship or simply not updating as they used to.

Anonymous said...




Wow your combined EU readership is far less than that of a referendum outcome

35% EU compared to 41 % US;

If you add Norway, it becomes 38% EEA. (That three percent might just be one person who regularly checks the blog).

Where are our friends, Italy, number four, soon to be number three in patents in the EU for the UPC? Or Spain which along with Italy sends an increasing number of preliminary references on copyright, trade marks and designs. There are six very difficult ones pending.

UKIPKAT Now! said...

@Anonymous (17 January 2017 at 10:24) - well said, when is the rebranding to UKIPKat coming?! Blot out the face of Merpel and replace it with the yellow toothed maw of Nigel Farage laughing all the way to the bank as he continues to suck his MEP Euro-salary from the unwitting Brexiteers!

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':