With In our Update 1/2011 we already reported about the groundbreaking decision “Pralinenform II” by the German Federal Court of Justice (file no. I ZR 17/05). In this decision, the Federal Court of Justice denied among others the danger of first infringement with regard to a trademark infringement when merely exhibiting a product at a trade fair in Germany and hence also denied a respective injunctive relief. This decision was surprising as at that point in time, the general opinion was that the presentation of a product which infringes a protective right implies that the product is offered and that there-fore, the exhibitor takes the risk of an injunctive relief.
In 2011, we already pointed out that this decision which was made in a trademark matter could easily be transferred to other protective rights such as patents and designs, too.
In a decision dated October 23, 2014, the Federal Court of Justice now confirmed its afore-mentioned line in connection with a competition dispute:
In the respective matter, the plaintiff requested among others an injunctive relief against the defendant due to the presentation of an imitated product (biscuit product) at a trade fair in Germany. In the second instance, the injunctive relief was conceded to the plaintiff as the presentation of the mentioned product would at least contain the danger of offering it in Germany. This was reasoned by the circumstance that the purpose of presentation at a trade fair was in the end typically the sale of the product to interested domestic visitors of the trade fair.
In its appeal decision, the Federal Court of Justice set aside the appeal judgement and rejected the lawsuit. According to the Federal Court of Justice, here the danger of advertising, offering, distributing and launching for domestic consumers is not given to justify an injunctive relief: the Court assumed that such a danger does not yet prevail from the presentation of a product at an international trade fair which is accessible to expert visitors only.
Due to this decision, the conclusion manifests that in future for enforcing an interim injunction for infringements of protective rights in connection with a trade fair, photographic documentation alone will no longer be sufficient for proving that there is a danger of offering an infringing product. To prove such a danger, it will rather be necessary to verify an “actual” offer, e.g. a targeted distribution of brochures or or-der lists or a concrete reference to possibilities of ordering.
Sabine Kritzenthaler (Attorney-at-Law)
Decision of the Federal Court of Justice dated October 23, 2014 – I ZR 133/13 – Keksstangen
