OLG Nürnberg; 2022-11-29; 3 U 493/22
Decision by national courts in the field of European Union law — ECLI:DE:OLGNUER:2022:1129.3U493.22.00
Date: 2022-11-29
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82022DE1129(51)_ENG_SUMJURE
JURE summary
JURE summary
An owner of German trade marks protecting diving equipment (hereinafter ‘the plaintiff’) brought an action against the Spanish operator of a German website (hereinafter ‘the defendant’) for the infringement of a trade mark.
Using the plaintiff's trade marks, the defendant advertised or offered diving accessories via its website and a trading platform. In some cases, product photos were used that show goods with the plaintiff's trade marks.
The Landgericht Nürnberg-Fürth (hereinafter ‘the Court of First Instance’), seised pursuant to Article 7(2) of the Brussels I Regulation (recast) (1), recognised the plaintiff's claim only in part and ordered the defendant to refrain from offering and advertising diving accessories in the course of commercial business under the signs in question in Germany without the plaintiff's consent, subject to the imposition of a fine or further penalties. The plaintiff had not been able to prove that the defendant had affixed the trade marks in question to diving accessories or their presentation or the packaging itself or had manufactured, distributed or otherwise placed diving accessories on the market under these trade marks.
The plaintiff's appeal to the Oberlandesgericht Nürnberg (hereinafter ‘the Court of Appeal’) was partially successful.
Unlike in copyright law, where the individual exploitation rights constitute independent acts, in trade mark law, the realisation of one of the modalities of action listed in Article 14(3) of the MarkenG (2) results in the prohibition being extended to all acts of exploitation listed in this provision.
The claim for injunctive relief based on the risk of repetition extends beyond the infringing acts of ‘offering’ and ‘advertising’ recognised by the defendant to the essentially similar modalities of ‘distributing’ and ‘owning’. The acts of realisation of assets ‘attach’ and ‘produce’ are not attributable to the act of the defendant as a mere trader from the point of view of the risk of first occurrence.
The damage that has already occurred or will occur in the future is to be assessed.
On appeal by the plaintiff, the Court of Appeal amended the judgment of the Court of First Instance by inserting the words ‘and to distribute or possess for the aforementioned purpose’ after the words ‘to advertise’.
(1) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast).
(2) Gesetz über den Schutz von Marken und sonstigen Kennzeichen vom 25. Oktober 1994 (Act on the Protection of Trade Marks and Other Signs of 25 October 1994).