Bundesgerichtshof; 2020-10-07; BGH I ZR 137/19
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2020:071020UIZR137.19.0
Date: 2020-10-07
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82020DE1007(51)_ENG_SUMJURE
JURE summary
JURE summary
A market leader in the area of manually operated filling systems domiciled in Germany (hereinafter ‘the plaintiff’) filed an action against a competitor (hereinafter ‘the defendant’) seeking a cease and desist order, the provision of information and accounts and compensation.
The plaintiff was s seller of wrapping paper including the suitable dispensers which also served to hold the inserted paper rolls. At the same time, the plaintiff was the owner of the respective Community design and the European patent for this dispenser.
The defendant had been selling a similar competitive product and filed an application to declare the design subject to the action to be null and void.
Within the proceedings conducted at the Landgericht Düsseldorf (hereinafter ‘the Court of First Instance’), the defendant acknowledged the cease and desist claim of the plaintiff. By a partial acknowledgement and decision, the Court of First Instance upheld the plaintiff’s action and rejected the action of the defendant.
Based on the appeal of the defendant, the Oberlandesgericht Düsseldorf (hereinafter ‘the Court of Appeal’) found the action of the plaintiff to be unjustified and the counteraction of the defendant justified, citing that the respective design was characterised by six features that were solely of technical nature. The presentation of the paper dispenser in the advertisement did not allow for any other interpretation.
The revision filed by the plaintiff with the Bundesgerichtshof (hereinafter ‘the Supreme Court’) was successful.
The international jurisdiction of the German courts followed from Article 82(4)(b) of the Council Regulation (EC) No 6/2002 (1) in connection with Article 68(1) first sentence of the Brussels I Regulation (recast) (2).
According the to the Supreme Court, the Court of Appeal had not properly considered the possibility that the individual features of the disputed product could also have been of visual nature. The fact that the patent application laid open to public did not mention any visual but only technical aspects of the product could not serve as the basis for the assumption that the specific features of the product were only of technical nature. On the contrary, it was needed to examine whether there had been any visual unique aspects beyond the patent application laid open to public.
The Supreme Court annulled the decision of the Court of Appeal and referred the case back for a new hearing and decision to the Court of Appeal.
(1) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.
(2) 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.