BGH; 2018-07-26; I ZR 226/14
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2018:260718UIZR226.14.0
Date: 2018-07-26
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82018DE0726(52)_ENG_SUMJURE
JURE summary
JURE summary
The manufacturer of Porsche vehicles based in Germany (hereinafter 'the plaintiff') sought injunctive relief, damages and the disclosure of information in an action brought against a manufacturer of rims based in Italy (hereinafter 'the defendant'). The plaintiff also brought action against the managing director of the defendant (the defendant and the second defendant together hereinafter referred to as 'the defendants').
The defendant infringed the applicant's Community design (hereinafter 'the design patent') with its four different models of light alloy wheels which it offered on its website www.wspitaly.com, which was available on the internet in Germany. It also offered the rims concerned in colours and wheel sizes which did not correspond to the original products.
The defendants claimed that they were spare parts for the repair of damaged Porsche vehicles and were therefore not covered by the protection of the design under Article 110(1) paragraph 1 of Council Regulation (EC) No 6/2002 (1).
The Landgericht Stuttgart (hereinafter 'the Court of First Instance') upheld the action.
The Oberlandesgericht Stuttgart (hereinafter 'the Court of Appeal') dismissed the defendant's appeal.
The defendant's appeal before the Bundesgerichtshof (hereinafter 'the Supreme Court’) was directed against the decision of the Court of Appeal. However, the appeal was held to be unfounded.
The Court of Appeal did not act in law in assuming that the application of the protective barrier (2) is excluded pursuant to Article 110(1)  of the Council Regulation (EC) No 6/2002.
The Court of Justice of the European Union (CJEU) made such a preliminary decision (3) on the questions of the Senate regarding this legal dispute that the repair clause is not limited to the shape-related components of a complex product. Repair with the aim of giving the product its original appearance also applies to the rims.
Since the rims do not correspond in colour and size to the original part, the original appearance is not maintained and these rims do not fall under the protective barrier.
The defendant also failed to comply with their due diligence obligations which it should have exercises as a manufacturer and supplier of spare parts and which relate to compliance by downstream users with the conditions laid down in Article 110(1) of the Council Regulation (EC) No 6/2002  . It should inform, with a clear and visible reference on the product, on its packaging, in catalogues or in sales documents, that a taste pattern has been included in the rims and these should be used solely for the purpose of enabling the complex product to be repaired. The designations ’WPS Italy' and  ‘Not O.E.M.’ do not meet the requirements of the CJEU. It is only an indication of origin, but not a reference to the protection situation under design law.
On the German version of the defendant's website there was an indication in English only that the rims offered were replicated or similarly constructed retrofit wheels intended exclusively for repair. In the German-speaking area an English reference was not held as sufficient.
The Supreme Court rejected the defendant's appeal.
(1) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.
(2) Deviation from the protective purpose of the Community design.
(3) Judgment of the Court of 20 December 2017, Acacia Srl against Pneusgarda Srl and Audi AG and Acacia Srl and Rolando D'Amato against Dr. Ing. h.c.F. Porsche AG, C-397/16 and C-435/16, ECLI:EU:C:2017:992.