OLG Frankfurt; 2020-10-01; 6 U 76/19
Decision by national courts in the field of European Union law — ECLI:DE:OLGHE:2020:1001.6U76.19.00
Date: 2020-10-01
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82020DE1001(51)_ENG_SUMJURE
JURE summary
JURE summary
The dispute dealt with by the Oberlandesgericht Frankfurt (hereinafter ‘the Court of Appeal’) concerned copyright claims relating to the usage of the sign ‘Clèo’ by a Polish seller (hereinafter ‘the defendant’) who had been delivering perfumes to Germany despite the fact the perfumes with the word mark and the combined word-figurative mark ‘Chloè’ were registered in the German trade mark register for the perfumes of a certain company (hereinafter ‘the plaintiff’).
The plaintiff filed an action with the Landgericht Frankfurt (hereinafter ‘the Court of First Instance’) demanding that the defendant stops the sales of the perfumes ‘Clèo’ in Germany and pays compensation to the plaintiff. The Court of First Instance dismissed the action based on its findings. The plaintiff lodged an appeal against this decision.
The Court of Appeal found the appeal admissible but not justified. The international jurisdiction of German courts followed from Article 7(2) of the Brussels I Regulation (recast) (1) due to the alleged breach of copyright in Germany. In addition, the international jurisdiction of the Court of Appeal could also follow from the claim of the plaintiff that the defendant offered deliveries to Germany.
In order to decide the question regarding the applicable law, the Court of Appeal referred to Article 8(1) of Regulation (EC) No 864/2007 of the Rome II Regulation (2).
According to the principle of lex loci protectionis, the applicable law is the law of the country in which legal protection for the intellectual property is claimed, i.e. the German law in this case. Therefore, the Court of Appeal considered Article 14(2) of the MarkenG (3) and examined whether a) an offer had been made on the webpage of the defendant, b) whether the offer had been directed to German customers, and c) whether delivery to Germany had been conclusively offered. The answers to all questions were negative. The Court of Appeal quoted the Court of Justice of the European Union to that effect that an import to the European Union must be made for the purposes of placing the product on the market. This rule, however, cannot be applied to cases where the goods are being circulated as intra-community supplies (4). For this reason, the Court of Appeal dismissed the appeal and confirmed the decision of the Court of First Instance.
(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.
(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).
(3) Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Act on the Protection of Trade Marks and other Signs).
(4)  Judgment of the Court of Justice of 18 October 2005, Class International BV v Colgate-Palmolive Company and Others, C-405/03, ECLI:EU:C:2005:616, paragraph 34.