In two recent decisions, the Düsseldorf Higher Regional Court (decision dated Sep 20, 2021, case no. I-2 W 18/21, published in GRUR-RS 2021, 28744 – Rückrufvollstreckung I and decision dated Sep 24, 2021, case no. I-2 W 19/21, published in GRUR-RS 2021, 28722 – Rückrufvollstreckung II) discussed the requirements for complying with the recall claim.
The Düsseldorf Higher Regional Court stated that two things are necessary to satisfy the recall claim: First – this is nothing new – the infringer must seriously request their commercial customers to return the infringing products. Second – this is new – the infringer must prove to the rights holder that they actually carried out the recall, either by presenting all recall letters sent or by presenting a sample recall letter and a list of all recall addressees.
According to the Court, the infringer’s obligation to disclose all recall addressees is an implicit part of the recall claim, which does not need to be expressly mentioned in the court’s recall order and exists irrespective of whether the rights holder asserted a claim of information (Sec. 140b PatG; Art. 8 Enforcement Directive). The Court reasoned that even though the rights holder could indirectly learn about the recall addressees through the right of information – which includes information on the infringer’s commercial customers –, the rights holder’s right to know all recall addressees and their right of information were two independent claims, which they may assert and enforce independently from each other. Otherwise, the rights holder would always have to sue for both recall and information, just to be able to trace the fulfilment of the recall claim.
It seems that the Court awards the rights holder an independently enforceable claim against the patent infringer to disclose all recall addressees, so that the rights holder can make sure that the infringer fulfilled their recall obligation. In the past, the Court denied the rights holder such a claim, at least in cases where (i) an obligation to disclose all recall addressees was not expressly ordered by the court and (ii) the infringer had also been ordered to give information on commercial customers who received infringing products (decision dated May 26, 2015, case no. 2 W 9/15, published in BeckRS 2016, 5567). Only when parties argued about whether the infringer had already fulfilled their recall obligation or not, the court had required the infringer to disclose all recall addressees in compulsory enforcement or appeal proceedings (Düsseldorf Higher Regional Court, decision dated May 6, 2010, case no. 2 U 98/09, published in BeckRS 2010, 15888).
Moreover, the Court discussed the “seriousness” requirement. It emphasized that the recall must not be worded as a “mere request”. For a “serious” recall, the infringer (i) must communicate the reason for the recall, i.e. the patent infringement, and (ii) must neither indicate nor imply that the return is voluntary, or (iii) if they imply the voluntariness, which is usually permissible, at the same time inform the recall addressees that they infringe the patent themselves by distributing or using the recalled products and, therefore, might have to face legal action from the rights holder if they continue to do so, and that they must “expect discovery” by the rights holder, because the recall obligation requires the infringer to disclose all recall addressees to the rights holder. The infringer may leave out the information about the negative consequences under patent law in outright exceptional cases only, i.e. if the respective recall addressee is already sufficiently aware of it due to their own knowledge. However, even with companies who have an own legal department or patent department, one could neither assume detailed knowledge of patent law, nor that they are represented by or have consulted with a lawyer at the time of the recall request. The infringer must prove otherwise in case of dispute by the rights holder. Here again, the Düsseldorf Higher Regional Court seems to be stricter than before. In its former case law (decision dated May 26, 2015, case no. I-2 W 9/15, published in BeckRS 2016, 5567), it considered recall addressees who constantly deal with patented products, such as commercial purchasers of medical-technical products, to be in the picture about patent law and the consequences thereunder, and placed the burden of proof for a possible lack of sufficient knowledge with the rights holder.
On the subject of the voluntariness of the recalled products’ return, the Court further noted that where commercial customers do not infringe the patent themselves, for example because they are located in a country where no patent protection exists, the infringer must not indicate or imply that the return of the recalled products is voluntary to start with.
The decisions of the Düsseldorf Higher Regional Court make the recall claim to a more effective tool. This is in line with Art. 3 of the Enforcement Directive, according to which measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights shall be effective, proportionate and dissuasive.
