The First Civil Senate of the Federal Court of Justice (BGH), which is responsible inter alia for trade mark law, today again ruled that an internet auction house can be sued for injunctive relief if sellers offer counterfeit branded products on its platform.
The plaintiffs produce and distribute watches under the "ROLEX" trade mark. They are the owners of corresponding trademarks. On the internet platform "ricardo" operated by the defendant, sellers had offered for sale counterfeit ROLEX watches that were expressly marked as plagiarisms. ROLEX then sued the defendant for injunctive relief.
The Cologne Higher Regional Court had essentially granted the injunction after the Federal Supreme Court had overturned a different decision of the Higher Regional Court in 2004 (BGH, Urt. v. 11.3.2004 - I ZR 304/01, BGHZ 158, 236 - Internet-Versteigerung I).
The Federal Supreme Court has now confirmed the prohibition limited to the specific conduct complained of.
The Federal Supreme Court has upheld its case law on the liability of internet auction houses for trademark infringements. According to this, the liability privilege for host providers regulated in the German Telemedia Act (TMG) only concerns criminal liability and liability for damages, but not injunctive relief. Therefore, the defendant is liable as a "Stoerer" (interferer) because its internet platform enables the offering of counterfeit watches, even if it is not the provider of these watches itself. Such liability first requires that the respective providers of the counterfeit watches have acted in the course of trade, because only then is there a trademark infringement. The defendant must - if it is notified by a trade mark owner of a clearly recognisable infringement - not only immediately block the specific offer, but also in principle take precautions to ensure that no further corresponding trade mark infringements occur. The BGH emphasised that the defendant may not be imposed with unreasonable examination obligations in this way, which would call the entire business model into question. However, the defendant is obliged to take technically possible and reasonable measures to ensure that counterfeit ROLEX watches cannot be offered on the Internet in the first place.
The Federal Supreme Court assumed that the sellers of the counterfeit watches had acted in the course of trade at least in some cases. The defendant internet auction house was aware that there had already been clearly recognisable infringements of the plaintiffs' trade marks by third parties on its internet platform in the past. It should therefore have taken precautions through control measures to prevent further trade mark infringements. Under these circumstances, the defendant would have had to show that it had taken such control measures after becoming aware of the trademark-infringing offers and that the cases complained of could not be prevented even by these measures. The defendant did not comply with this - even after the matter was referred back to the Higher Regional Court by the first appeal judgement in 2004.
Judgment of the Federal Court of Justice of 30 April 2008 - I ZR 73/05 - Internet-Versteigerung III
Previous instances:
Cologne Regional Court, judgment of October 31, 2000 - 33 O 251/00
Cologne Higher Regional Court, judgment of March 18, 2005 - 6 U 12/01 (GRUR 2006, 50)
Source: Press Release No. 87/2008 of the Press Office of the Federal Court of Justice
76125 Karlsruhe, telephone (0721) 159-5013, fax (0721) 159-5501
If you have any questions on this topic, please do not hesitate to contact Goldberg Rechtsanwälte.
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
