In the case “Indischer Weihrauch” (Indian Incense), the Higher Regional Court of Munich ruled on a restitution claim in trade mark law in its decision of 30 July 2020. The decision is printed in GRUR-RS 2020, 21517.
The restitution claim is governed by Sections 580 et seq. ZPO. If the action for restitution is admissible and well-founded, this results in a final judgment that has already been passed being set aside again. In this case, the defendant/appellant for restitution has a claim in particular that the plaintiff/respondent for restitution must return to him any payments based on the annulled judgment (e.g. damages and reimbursement of costs) in corresponding application of Section 717 (3) ZPO according to the provisions on the return of unjust enrichment.
An action for restitution in trade mark law is rather rare. In the subject indexes of the relevant commentaries on trade mark law, the keyword “restitution claim” is not even mentioned.
In patent law, on the other hand, an action for restitution occurs from time to time, namely if the patent in suit is revoked in opposition proceedings or declared invalid in nullity proceedings after the infringement judgement has become final. In such a case, the defendant may file an action for restitution by analogous application of Section 580 No. 6 ZPO. The action for restitution must be brought within an emergency period of one month. This non-extendable period begins on the day on which the party became aware of the reason for restitution (revocation or destruction of the IP right), but not before the decision which led to the destruction of the IP right has become final. After the expiry of five years from the date on which the judgement challenged in the restitution action becomes final, restitution actions are inadmissible, Section 586 of the Code of Civil Procedure.
In the above-mentioned decision “Indischer Weihrauch” (Indian Incense), the Higher Regional Court of Munich assumed without further ado that an action for restitution is also possible in trade mark law by applying § 580 no. 6 ZPO mutatis mutandis. However, the Higher Regional Court of Munich already dismissed the restitution action as inadmissible due to the failure to observe the time limit for filing an action of one month pursuant to Section 586 ZPO.
In the case decided, the Federal Patent Court had confirmed the partial cancellation ordered by the German Patent and Trade Mark Office of an action brought by the plaintiff for the goods “incense” as well as for the goods applied for in Class 5 by order of 18 October 2018. The applicant/restitution defendant’s trade mark was apparently a descriptive indication for these goods. Accordingly, it was an application for invalidity due to absolute grounds for refusal under Section 50 MarkenG. Based on the decision of the Federal Patent Court of 18 October 2018, the effects of the challenged trade mark were thus deemed not to have occurred from the outset, Section 52(2) MarkenG. The Federal Patent Court did not allow the appeal on points of law. The representatives of the restitution claimant were present when the decision was pronounced on the same day (18.10.2018). They thus became aware of the decision of the Federal Patent Court on that day. This reasoned decision was served on 28.1.2019. The restitution claim was filed in a written statement dated 15 February 2019.
The Higher Regional Court of Munich ruled that the representatives of the restitution claimant had already become aware of the reason for restitution due to their personal presence by the delivery of the order of the Federal Patent Court of 18 October 2018 on the same day. The time limit for filing the restitution action thus began on 18 October 2018 and expired on 18 November 2018. The restitution claim of 15 February 2019 was therefore received by the court after the end of the time limit and was accordingly inadmissible.
In the case, there was also the peculiarity that the restitution plaintiff/defendant had been convicted in the challenged judgment on the basis of another trade mark of the plaintiff, which, however, was word-for-word identical to the plaintiff’s trade mark then finally challenged with the application for revocation. However, the plaintiff’s trade mark, on which the defendant’s conviction for trade mark infringement was based, could no longer be challenged because of the 10-year period pursuant to Section 50 para. 2 sentence 2 Trade Mark Act had already expired. The restitution claimant had thus attacked a different trade mark of the restitution defendant than the one on which the conviction for trade mark infringement was based. The Higher Regional Court of Munich did not need to decide whether an action for restitution was ultimately justified in such a case, because in the opinion of the Senate, as explained, the action for restitution was already to be rejected as inadmissible. According to the author, the restitution claim would also have been unfounded because the conviction for trade mark infringement was based on a different trade mark.
Accordingly, an action for restitution in trade mark law is possible in principle. If, after a final conviction for trade mark infringement, the trade mark is declared revoked or invalid, the defendant may bring an action for restitution. In this case, the above-mentioned time limits must be observed with regard to admissibility. With regard to the merits, it will also depend in particular on the point in time at which the effects of an attack against the trade mark occur. In the case of an application for revocation under Section 49 Trade Mark Law, the effects take effect at the time the application is filed or the action is brought, Section 52 para.1 sentence 1 Trade Mark Law. In contrast, in the case of a successful invalidity attack, the trade mark had no effects from the beginning, Section 52 para. 2 Trade Mark Law.
