The German Federal Supreme Court has clarified that a cease and desist order includes an obligation on the Defendant to request the return of infringing products
Different German Higher Regional Courts have disagreed on this, but by a decision of 29 September 2016, published on 10 January 2017, the German Federal Supreme Court has now confirmed that, in the absence of any indication to the contrary, a cease and desist order is to be interpreted to mean that the obligations not only include the obligation to refrain from distributing the infringing products in the future but also the obligation to take action, if possible and reasonable, to remove what the courts called the “status of disturbance”. In this case, the German Federal Supreme Court considered it possible and reasonable for the Defendant to request the customers to return the infringing products, even if they had no legal claim against the customers to recall the products.
The prerequisite is the continued “status of disturbance” – which is regularly the case when infringing products have been sold and are available on the market. The obligation to refrain from distributing the infringing products also implies an obligation to request the return of these products if that is the only way the cease and desist order can be fulfilled. However, steps to be taken to remove the existence of “disturbance” must be possible and reasonable.
The German Federal Supreme Court also stated that the claim for cease and desist and the claim for a recall of products exist independently of each other.
The decision of the German Federal Supreme Court is clearly advantageous for trade mark owners. Only the claim not to infringe has to be asserted and the trade mark owner can wait to see if the Defendant recalls or requests the return of the infringing products. If this does not happen, the Claimant can apply to the Court that the Defendant should pay a fine. For Defendants, the decision of the German Federal Supreme Court therefore raises a number of practical questions, such as whether, as a precautionary measure, the infringing products should always be recalled, even if it is not known whether the trade mark owner also wants products to be recalled or not.
Ref: I ZB 34/15