An intellectual property right such as a Trademarks or a Patents gives its owner a right to injunctive relief against third parties who manufacture, offer or distribute products that interfere with the scope of protection of the intellectual property right. If a court issues a corresponding prohibition, the question arises as to which actions of the affected party are prohibited and which actions it must actively carry out in order to prevent infringing actions as quickly as possible. The BGH dealt with a case on unfair competition law in which precisely these questions arose.
The German Federal Court of Justice (BGH) had to rule on a case in which a party was provisionally prohibited by the lower court from advertising and/or distributing spirits under the name “RESCUE TROPFEN” or “RESCUE NIGHT SPRAY”.
The successful plaintiff then carried out test purchases and established that she was still able to purchase the relevant products one month after the court order.
These were goods that had been delivered to pharmacies by the convicted party prior to the court order. It had not requested the return of these goods.
The question now arose as to whether the injunction obligation automatically included a duty to require distributors to return infringing products that had already been delivered to them prior to the judgment.
After the ruling, the losing party also advertised products under the names “RESCUE SPRAY” and “RESCUE NIGHT TROPFEN” (instead of the names “RESCUE TROPFEN” and “RESCUE NIGHT SPRAY”, which were literally covered by the ban) – the plaintiff also objected to this.
The further question therefore arose as to whether a prohibition can also cover modified actions that do not correspond identically to the wording of the prohibition.
The BGH found that
“in the absence of any indications to the contrary, the obligation to refrain from an act that has created a continuing state of disturbance must generally be interpreted as meaning that it includes not only the refraining from such acts, but also the taking of possible and reasonable actions to eliminate the state of disturbance.”
A prohibition can therefore imply that actions must be taken that appear necessary to remedy the infringement and are proportionate (i.e. in particular possible and reasonable). According to the BGH, this includes the obligation to recall infringing products from the distribution chain, even if the obligated party has no legal means of enforcing the return.
With regard to the modification of the product names, the BGH states that the prohibition also extends to modifications if these express the characteristic of the infringement. In the present case, the characteristic of the prohibition lay in the name “RESCUE” – but the variation did not change this.
The party obliged by a prohibition must therefore – even if this is not explicitly stated in the judgment – take reasonable and possible actions to avoid future infringements. Furthermore, the prohibition cannot simply be circumvented by making modifications that are no longer literally covered by the prohibition, but in which the characteristic of the infringement is still expressed. It can be assumed that the same principles also apply to prohibition claims under intellectual property law.
Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py