Case studies on cross-border injunctions Pascal Böhner, BARDEHLE PAGENBERG Partnerschaft mbB, Attorney-at-Law I. Obtaining injunctions abroad Case 1: Cupcake wars Case 2: Nintendo/BigBen Case 3: Coty / B.O Zacobi (IT) Case 4: Condenser for air conditioning unit II. Injunctions against intermediaries III. Precautionary measures/Preliminary injunctions IV. Scope of injunction BGH, judgment of 11 October 2017 - I ZB 96/16 Requirements for compliance with injunction orders --> Liability to cease and desist = Liability for removal???

1. Pascal Böhner
Rechtsanwalt
Intellectual Property Litigation and the
Fight against Counterfeiting in the EU
Case studies on cross-border
injunctions
Trier 20. April 2018 1

2. I. Obtaining injunctions abroad
II. Injunctions against intermediaries
III. Precautionary measures/Preliminary injunctions
IV. Scope of injunction
AGENDA
20.04.2018 2

3. I. Obtaining injunctions abroad
II. Injunctions against intermediaries
III. Precautionary measures/Preliminary injunctions
IV. Scope of injunction
AGENDA
320.04.2018

4. Case 1: The Cupcake wars
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• Owner based in Germany owns a EUTM for cakes
• Manufacturing of infringing products in non-EU country, by
non-EU company
• Delivery to UK; sales (only!) in UK supermarkets
• Manufacturer sued in Germany
I. OBTAINING INJUNCTIONS ABROAD

5. • Competence of German Court?
• EU-wide injunction?
• EU-wide claims for information, damages etc?
I. OBTAINING INJUNCTIONS ABROAD
Case 1: Cupcake wars
720.04.2018

6. Nintendo/BigBen (ECJ, 27 Sept. 2017 -
C-24/16, C-25/16)
I. OBTAINING INJUNCTIONS ABROAD
820.04.2018

7. Case background
• Nintendo based in Japan; owns RCDs
• BigBen France manufactures infringing products
• Delivers these products to its German subsidiary
• Both BigBen FR and DE are sued in Germany for RCD
infringement
I. OBTAINING INJUNCTIONS ABROAD
Case 2: Nintendo/BigBen
920.04.2018

8. • Competence of German Court?
• BigBen France
• BigBen Germany
• EU-wide injunction?
• BigBen France
• BigBen Germany
• EU-wide claims for information, damages etc?
• BigBen France
• BigBen Germany
I. OBTAINING INJUNCTIONS ABROAD
Case 2: Nintendo/BigBen
1120.04.2018

9. Case 3:
Coty / B.O Zacobi (IT) –
BGH, 9. Nov. 2017, I ZR 164/16
I. OBTAINING INJUNCTIONS ABROAD
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10. • Plaintiff owns number of EUTMs and IR designating EU (Davidoff,
Joop!, Wolfgang Joop, Jil Sander, Nikos, J.Lo/Jennifer Lopez,
Vivienne Westwood, Calvin Klein, Lancaster, Chloé, Cerruti) and IR
designating Germany (Covet)
• Defendant runs website (.it TLD), available also in German,
containing contact details, but no delivery to Germany
• German company (not involved in proceedings) purchases via e-
mail
• Delivery by freight forwarder from Italy to Germany
I. OBTAINING INJUNCTIONS ABROAD
Case 3: Coty / B.O Zacobi (IT)
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11. 20.04.2018 14

12.  Competence of German courts against Italian
company?
Art. 125 (5) EUTMR: Proceedings (…) may also be brought in the courts of the
Member State in which the act of infringement has been committed or
threatened, or in which an act referred to in Article 11(2) has been committed.
I. OBTAINING INJUNCTIONS ABROAD
Case 3: Coty / B.O Zacobi (IT)
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13. • „Place of infringing act“???
➢ In multi-state infringement cases
• Not each infringing act per se
• Global assessment
• Place of infringing act for offering goods on a website is the
place of the upload, not place of receipt/download;
• purchasing via e-mail: place from which e-mail is sent, not
received
I. OBTAINING INJUNCTIONS ABROAD
Case 3: Coty / B.O Zacobi (IT)
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14.  NO Competence of German courts
• At least under Art 125 (5) EUTMR
• They should have done the „Nintendo way“ (Joint defendants)
• Infringement of German TM?
I. OBTAINING INJUNCTIONS ABROAD
Case 3: Coty / B.O Zacobi (IT)
20.04.2018 17

15. Case 4: Condenser for air conditioning
unit (facts simplified)
20.04.2018 18
• Owner owns a DE patent on a condenser
• Supplier manufactures patented condensers in CH
• Swiss supplier supplies to manufacturer in IT;
manufacturer installs condensers in cars
• Manufacturer distributes cars in Europe, including DE
I. OBTAINING INJUNCTIONS ABROAD

16. 20.04.2018 19
I. OBTAINING INJUNCTIONS ABROAD

17. Case 4: Condenser for air conditioning
unit (facts completely simplified)
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• Owner owns a DE patent on a condenser cheese
• Supplier manufactures patented condensers cheese in CH
• Swiss supplier supplies to manufacturer in IT;
manufacturer installs condensers in cars puts cheese on
pizza
• Manufacturer distributes cars Pizza Margherita in Europe,
including DE
I. OBTAINING INJUNCTIONS ABROAD

18. 20.04.2018 21

19.  Does supplier infringe owner’s patent in Germany?
• Yes.
• Supplier knew owner’s patent
• Supplier knew that manufacturer would put the products on the German market
• Supplier nevertheless supplied manufacturer
Supplier consciously and deliberately caused (assisted in) putting
on the market in DE
Supplier is liable for manufacturer’s putting on the market in
Germany
I. OBTAINING INJUNCTIONS ABROAD
Case 4: Condenser for air conditioning unit
20.04.2018 22

20. I. Obtaining injunctions abroad
II. Injunctions against intermediaries
III. Precautionary measures/Preliminary injunctions
IV. Scope of injunction
AGENDA
20.04.2018 23

21. Liability of intermediaries in accordance with Art. 9(1)(a)
and Art. 11 Directive 2004/48
• Perpetrator – direct or indirect infringer
• Participant – instigator, accomplice
• Störer (Breach of Duty of Care/Accessory liability)
“anyone who – without being the perpetrator or accomplice – in any
way wilfully contributes to the infringement with adequate causation,
however only in so far as
• it is legally possible to prevent the act?
• reasonable inspection obligations have been met (i.e.
identifiable with reasonable efforts)
II. Injunctions against intermediaries
A. GENERAL BACKGROUND
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22. • Freight forwarders etc.
• Liable from the time of knowing that products infringe IP rights,
in particular after notice by owner
• From then on, they must refrain from doing anything that leads
to import, and hence, infringement of rights
• Press companies (advertisements)
• Only applies to blatant infringements that are easy to identify by
publishers or editors
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II. Injunctions against intermediaries
B. IP Rights

23. • Online service providers (eBay, Google etc.)
• Reasonable monitoring efforts to prevent infringements of
rights
• From the time of knowing about the infringement (notice),
online service providers must not only block the offer
concerned, but they must also take efforts to avoid, where
possible, similar trademark infringements in the future
(BGH GRUR 2004, 860, 864 – Internet-Versteigerung I)
• Reasonable efforts (-) if filtering software fails to detect
infringements (BGH GRUR 2007, 708 – Internet-
Versteigerung II)
20.04.2018 26
B. IP Rights

24. • Common business practices under competition law
• Anyone who has created a serious likelihood that interests protected under
laws against unfair competition will be liable for infringements of third parties
due to the failure to comply with common business practices or Breach of Duty
of Care
• Role as guarantor – Obligation to prevent or limit the risk as
far as possible and reasonable (BGH, GRUR 2007, 890,
Jugendgefährdende Medien bei ebay, para. 36)
• Common business practices/Duty of Care seen as monitoring obligation in
practice
• Balancing of interests: not all offers, but “notice and take-down”
• Unclear: Are there proactive monitoring obligations (take down without notice)
II. Injunctions against intermediaries
C. UNFAIR COMPETITION LAW
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25. COMMON BUSINESS PRACTICES – LIABILITY IN
THE REAL WORLD
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26. Applicability to “real platforms”?
• BGH “Bahnhofs-Verkaufsstellen” (BGH GRUR 1995, 601 ff.):
anyone who tolerates unfair practices by lessees without making
use of provisions in the lease agreement to prevent such
infringements of rights acts in breach of unfair competition law.
• Lessor/trade fair company makes a direct profit because of the
anticompetitive practices of the lessees – as do internet auction
sites for each successful auction.
• In accordance with the rulings of Germany’s Federal Court of
Justice (BGH), this creates the obligation to prevent and eliminate
infringements of rights
• So far as legally possible (domiciliary right, exhibition terms and
conditions) and reasonable
II. Injunctions against intermediaries
20.04.2018 29

27. 20.04.2018 30

28. Applicability to “real platforms”?
ECJ, judgment of 07. July 2016, Case C-494/15 – DELTA CENTER
• Principles on liability of online service providers apply to offline
trading, respectively
• Requirements set forth on online intermediaries have to be
complied with by offline intermediaries, i.e. those
• who support infringing acts of third parties,
• have been notified
• could take reasonable efforts to prevent infringement
➢ Need to become active
II. Injunctions against intermediaries
20.04.2018 31

29. I. Obtaining injunctions abroad
II. Injunctions against intermediaries
III. Precautionary measures/Preliminary injunctions
IV. Scope of injunction
AGENDA
20.04.2018 32

30. • Available in cases of urgency
• Rule of thumb: only within 1 month as of knowledge of infringement
(depends on court’s practice)
• Typical case: trade show, new marketing campaign
• Infringement and validity must be reasonably clear
• Plaintiff must be entitled and able to raise the claims (registered as
owner)
• Weighing of interests
• Timing: ex parte within hours / days; inter partes within weeks
IV. PRECAUTIONARY MEASURES AND INJUNCTIONS ON THE MERIT
20.04.2018 33
Preliminary injunctions

31. Scope
• Only injunction, to some extent information, securing of
destruction (custody); no damages, no recall (however: see
“Scope of injunction below)
• Summary procedure; preliminary effect
• Liability for damages if injunction is enforced and later lifted
Defense measures
• “Protective brief” in advance
• Appeal and / or procedure on the merits
• Note: NIDA would not protect against P.I.
IV. PRECAUTIONARY MEASURES AND INJUNCTIONS ON THE MERIT
Preliminary Injunctions
20.04.2018 34

32. Problem: design around after first instance infringement
 P.i. request or request penalty for contempt of court?
Solution/Argument:
urgency deadline revives if
1. penalty request was filed within 1 month deadline as of
knowledge of infringing situation, and
2. p.i. request is filed within 1 month after penalty request has
been dismissed
IV. PRECAUTIONARY MEASURES AND INJUNCTIONS ON THE MERIT
Preliminary Injunctions - Urgency
20.04.2018 35

33. • Standard practice
• In clear cases, decisions are rendered ex parte
• If the court has doubts: they will call you!
• Either you can provide further evidence and work on
deficiencies
• Or the court gives you a chance to withdraw the p.i. request,
and Defendant will not be notified
• If the decision is rendered ex parte, it has to be formally served
to Defendant by Plaintiff (not the court)
IV. PRECAUTIONARY MEASURES AND INJUNCTIONS ON THE MERIT
Preliminary Injunctions
20.04.2018 36

34. I. Obtaining injunctions abroad
II. Burden of proof
III. Injunctions against intermediaries
IV. Precautionary measures/Preliminary injunctions
V. Scope of injunction
AGENDA
20.04.2018 37

35. BGH, judgment of 11 October 2017 - I ZB 96/16
Requirements for compliance with injunction orders
Liability to cease and desist = Liability for removal???
V. SCOPE OF INJUNCTION
20.04.2018 38

36. • TM infringement; Preliminary injunction order issued and served (=
fully in effect)
• Products “posted in quarantine” and notified as “out of sale”
• No recall of products which had been already delivered to
(commercial) customers
• No information to customers on existence of the PI order
• Test purchase: wholesaler (not involved in proceedings) delivered
infringing products obtained from the defendant
➢ What does „cease and desist“ comprise???
V. SCOPE OF INJUNCTION
Case background
20.04.2018 39

37. ➢ What does „cease and desist“ comprise?
➢ Mere omission/stopping of acts or active measures?
➢ What acts to be taken?
➢ Conflict with recall obilgation?
V. SCOPE OF INJUNCTION
Key questions
20.04.2018 40

38. • NO measures taken to prevent further distribution of infringing product
sold by the defendant to the wholesaler, after service of PI
• Not only stop or omit further distribution, but also actively take action to
prevent the distribution of the infringing products
• The term “omitting”, is not what it means in the common language (!);
interpretation of the court order to define which practices (such as
actively taking action) are covered by the cease and desist order
• In case of ongoing infringements, “omission” comprises obligation to
execute feasible and reasonable actions to remove the impairment of
the rights holder
V. SCOPE OF INJUNCTION
Non-Compliance with injunction order?
20.04.2018 41

39. • Omission is more than mere inactivity, if defendant can comply only
by eliminating the impairment. That is the case where not removing
has the same effects as continuing infringement. (However: why is
third party sale continuation of own infringement???)
• Even if no continued action, obligation to take action if the defendant
can only comply with his obligations to omit/cease and desist by
taking further measures. If infringing products are already sold, the
obligation to cease and desist includes not only a termination of sale
but typically also a recall of products previously delivered products.
• Whether or not rights against the third party (to recall) exist, is
irrelevant; the actual possibility of taking influence is enough
• No conflict/ barrier effect of the specific provisions for removal and
recall
V. SCOPE OF INJUNCTION
20.04.2018 42

40. Thank you!
20.04.2018 43
Pascal Böhner
pascal.boehner@bardehle.de

41. BARDEHLE.COM
BARDEHLE PAGENBERG
Partnerschaft mbB
Prinzregentenplatz 7
81675 München
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20.04.2018