BGH; 2017-05-16; X ZR 120/15
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2017:160517UXZR120.15.0
Date: 2017-05-16
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82017DE0516(51)_ENG_SUMJURE
JURE summary
JURE summary
The German Bundesgerichtshof (hereinafter ‘the Supreme Court’) dealt with the question of responsibilities and obligations of a supplier domiciled abroad, who is a supplier of products protected under domestic patent rights, when providing supplies to a customer also domiciled abroad.
The plaintiff (hereinafter ‘the plaintiff’), the owner of an European patent concerning a sealing system for inflatable items, filed an action against a defendant domiciled in Italy (hereinafter ‘the defendant’) claiming that the defendant violated the respective patent through offering and placing on the market tyre repair kits.
The Landgericht Mannheim (hereinafter ‘the Court of First Instance’) ordered the defendant to cease and desist these such actions, provide accounts, recall and remove the respective items from their distribution channels and further ordered the defendant to pay compensation. The Court of First Instance dismissed an additional request for the items to be destroyed.
The defendant filed an appeal against this decision seeking the whole action to be dismissed. The plaintiff, on the other hand, requested that the decision of the Court of First Instance be also extended to supplies concerning third persons domiciled abroad who the defendant knows that also deliver to the domestic territory. The Oberlandesgericht Karlsruhe (hereinafter ‘the Court of Appeal’) dismissed the appeal of the defendant as well as the request of the plaintiff, qualified by the court as a cross-appeal, and permitted the revision of the claim regarding the recall and regarding the claims concerning the supplies to third customers domiciled abroad.
The Supreme Court found that the Court of Appeal was correct to conclude that a supplier of products protected under domestic patent rights is not generally obliged to examine or monitor the further use of the supplied goods by the customer. However, the supplier is obliged to examine the situation if there are concrete indications that the customer may further forward the goods to the domestic territory or to offer the goods there.
In this dispute, there are a concrete indications for a substantial difference between the quantity of the repair kits delivered to Germany by the defendant and the overall quantity of the repair kits present on the German market originating from the defendant. Within the resume appellate proceedings, that Court of Appeal will have to decide whether the defendant could recognize concrete indications that its customers were further delivering the goods to the German market. Should the Court of Appeal find that this was the case it will be obliged to examine further whether the respective rights had been violated by the respective customers domiciled abroad or whether there existed at least a risk of a first-time infringement under Article 139(1)(2) PatG (1). It could be possible for the plaintiff to assert its claims in relation to supplies to customers domiciled abroad if the supplies led to patent infringement or if they give rise to the risk of a first-time infringement.
The applicable law is the law of the Federal Republic of Germany according to Article 8(1) of the Rome II Regulation (2) which stipulates that ‘the law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed’.
(1) Patentgesetz (Patent Act).
(2) Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II).