According to Sec. 140a of the German Patent Act (Patentgesetz – PatG), right holders can demand that counterfeiters recall counterfeit products, i.e. ask their business customers to return the counterfeit products.
In two recent decisions, the Düsseldorf Higher Regional Court (decision of 20 Sept. 2021, case no I-2 W 18/21, published in GRUR-RS 2021, 28744 – Rückrufvollstreckung I and decision of 24 Sept. 2021, case No. I-2 W 19/21, published in GRUR-RS 2021, 28722 – Rückrufvollstreckung II) discussed the requirements to comply with the recall request.
The Düsseldorf Higher Regional Court stated that two things are necessary to satisfy the recall request: firstly – this is not new – the infringer must seriously ask his business customers to return the counterfeit products. Secondly – this is new – the infringer must prove to the rights holder that he has effectively carried out the recall, either by presenting all the recall letters sent or by presenting a sample letter of recall and a list of all. the recipients of the reminder.
According to the court, the infringer’s obligation to disclose all recipients of the recall is an implicit part of the recall request, which does not need to be expressly mentioned in the court’s recall order and exists regardless of whether that the rights holder has made a request for information (Section 140b PatG, Article 8 of the Enforcement Directive). The Court held that although the rights holder could indirectly know the recipients of the recall thanks to the right to information – which includes information on the business customers of the infringer – the right of the rights holder to know all the recipients of the recall. recall and his right to information were two independent claims. , which they can assert and apply independently of each other. Otherwise, the rights holder would still have to sue for both the recall and the information, just to be able to trace the execution of the recall request.
It appears that the court grants the rights holder an independent enforceable action against the patent infringer to disclose all the recipients of the recall, so that the rights holder can ensure that the infringer has fulfilled his recall obligation. In the past, the court has rejected such a request to the rights holder, at least in cases where (i) the obligation to disclose all recipients of the reminder had not been expressly ordered by the court and (ii) the counterfeiter had also been ordered to provide information on commercial customers who had received counterfeit products (decision of May 26, 2015, case no.2 W 9/15, published in BeckRS 2016, 5567). It was only when the parties argued over whether the offender had already fulfilled his recall duty or not, that the court required the offender to disclose all recipients of the recall as part of the process. enforcement or appeal proceedings (Higher Regional Court Düsseldorf, decision of 6 May 2010, case no. 2 U 98/09, published in BeckRS 2010, 15888).
In addition, the Court discussed the requirement of “seriousness”. She stressed that the recall should not be framed as a “simple request”. For a “serious” recall, the infringer (i) must communicate the reason for the recall, i.e. patent infringement, and (ii) must neither indicate nor imply that the return is voluntary, or (iii ) if they involve voluntariness, which is generally allowed, at the same time inform the recipients of the recall that they themselves are infringing the patent by distributing or using the recalled products and, therefore, might have to face legal action by the rights holder if they continue to do so, and that they should “expect to be discovered” by the rights holder, as the recall obligation requires the infringer to disclose all recipients of the reminder to the rights holder. The infringer may only omit information about negative consequences under patent law in purely exceptional cases, i.e. if the recipient of the respective reminder is already sufficiently aware of this due to his own knowledge. However, even with companies that have their own legal or patent departments, it cannot be assumed that they have extensive knowledge of patent law, nor that they are represented by or have consulted with a lawyer at the time of the recall request. The infringer will have to prove the contrary in the event of a dispute by the rights holder. Here again, the Düsseldorf Higher Regional Court appears to be stricter than before. In its previous case law (decision of May 26, 2015, case n ° I-2 W 9/15, published in BeckRS 2016, 5567), it considered the recipients of the recall who constantly deal with patented products, such as commercial buyers of medical products. technical products, to be aware of patent law and its consequences, and placed the burden of proof of a possible lack of sufficient knowledge on the rights holder.
Regarding the voluntary nature of the return of the recalled products, the Court further noted that when commercial customers do not themselves infringe the patent, for example because they are in a country where there is no protection by patent, the infringer must not indicate or imply that the return of the recalled products is initially voluntary.
The view of the Düsseldorf Higher Regional Court on the recall request is good for rights holders, as they turn the recall request into a much more effective remedy. This is in accordance with art. 3 of the Enforcement Directive, according to which the measures, procedures and remedies necessary to ensure respect for intellectual property rights must be effective, proportionate and dissuasive.