The plaintiff is the owner of the following word/figurative marks, registered with the German Patent and Trademark Office (Office) for, among other, „diving apparatus, diving suits, diving gloves”:
The defendant, based in Spain, advertised and offered diving accessories using the plaintiff’s trademarks via its website and the amazon.de trading platform. The defendant stored the goods in Spain. One of the products offered was a trim bag, which the plaintiff ordered on a trial basis. The plaintiff’s trademarks were neither printed on the product nor on its packaging.
Following an unsuccessful warning, the plaintiff brought an action for infringement and requested that the defendant be ordered to refrain from using the above-mentioned trademarks in the course of trade in the Federal Republic of Germany for diving accessories without the consent of the trademark owner, in particular from affixing the trademarks to diving accessories or their packaging or packaging, from offering, manufacturing, distributing or otherwise marketing diving accessories under this trademark, from advertising them or from possessing them for the aforementioned purposes. Furthermore, the plaintiff applied for a declaration of liability for damages, disclosure of information and reimbursement of warning costs.
The defendant had recognised the claim to the extent that the plaintiff had requested that it be ordered to refrain from offering or advertising diving accessories under the trademarks and to the extent that the plaintiff – in relation to these acts – had requested the provision of information and a declaration of liability for damages.
The Court of First Instance had accordingly sentenced the defendant and dismissed the further claim. On the plaintiff’s appeal, the Court of Appeal added the following to the defendant’s injunction: “and to distribute or possess for the aforementioned purpose”. The Court of Appeal argue that the claim for injunctive relief extends beyond the infringing acts of “advertising” and “offering” – recognised by the defendant – to the acts of “distributing” and “possessing”, which are identical in essence. In this respect, the principle must be assumed that all modalities of action under Section 14 (3) MarkenG are identical in essence and that if only one of the modalities of action is realised, the presumption of the risk of repetition also extends to the others.
This was not precluded by the fact that the defendant was domiciled in Spain and exercised its possession there.
With the appeal, the defendant seeks the restoration of the judgement of the Court of First Instance.
The BGH initially affirms the international jurisdiction of the German courts and the applicability of German law. The use of the sign objected to by the plaintiff has the necessary commercially relevant domestic connection.
The BGH confirms that the plaintiff is also entitled to injunctive relief against the distribution.
However, insofar as the plaintiff is also seeking an injunction against the possession of diving accessories, there are questions regarding the interpretation of EU law that require clarification.
The BGH assumes that the concept of possession is to be interpreted autonomously and uniformly throughout the EU. Under German law, the concept of possession is broad.
The BGH therefore referred the following questions on the interpretation of EU law to the ECJ.
The BGH states that the fulfilment of the “unauthorised possession of goods” pursuant to Section 14 (3) No. 2 MarkenG, requires the objective element of possession of the trademark infringing goods and the subjective element of intentional possession with the aim of placing the goods on the market, including the offer. Since the scope of protection of a domestic trademark is limited to the territory of the Federal Republic of Germany, the intention must be to offer or place on the market goods infringing the trademark in Germany.
The fact that other language versions of Directive (EU) 2015/2436 often use the term “storage” instead of “possession” tends to favour the view that direct access to the goods is required for possession within the meaning of Article 10(3)(b) of Directive (EU) 2015/2436 and that the person who hands over the goods to the carrier or freight forwarder loses possession upon handover because “storage” ends at this point in time.
On the other hand, European Union law allows the actions of a logistics service provider or carrier engaged by a trader to be attributed to that trader if they lead to an infringement of a national IP right. Thus, the ECJ has held a trader responsible not only for every act carried out by him, but also for acts carried out on his behalf, if the trader in question had the aim of offering and distributing infringing products in the protected country and could not have been unaware of the behaviour of that third party (see ECJ, judgment of 21 June 2012, C-5/11 – Donner). However, the “Donner” decision dealt with copyright and did not address the question of attribution of ownership.
The territorial principle could preclude the right of the proprietor of a national trademark to prohibit a person abroad from possessing goods infringing the trademark for the purpose of offering the goods for sale or placing them on the market in the country of protection.
The fact that other language versions of Directive (EU) 2015/2436 often use the term “storage” instead of “possession” not only speaks in favour of the need for a uniform interpretation of the term, but also in favour of the fact that direct access to the goods is required for possession and that the person who hands over the goods to a forwarding agent or carrier loses possession upon handover because his “storage” ends at this point in time.
The answers to the questions referred will contribute to the liability of (partial) acts of trademark infringement carried out in cross-border online trade.
