Aluminiumdielen – Higher Regional Court Karlsruhe decision 18.07.2023 – 6 W 30/23

In its decision of 18 July 2023, the Higher Regional Court Karlsruhe dealt both with enforcement under Section 888 of the German Code of Civil Procedure (ZPO) and with the question of whether an infringing object is still within the channels of distribution if it is located with a trader who is not a dealer.

The case

The present case was an appeal against a decision of the Regional Court Mannheim (order of 19 May 2023, docket 2 O 86/21 ZV II). In this decision, the Regional Court Mannheim ruled that the debtors had to recall or definitively remove from distribution channels („zurückzurufen oder endgültig aus den Vertriebswegen zu entfernen“) the outdoor aluminium floorboards („Outdoor-Aluminiumdielen“) in question. The debtors defended themselves against this with the argument that there were no more products in the distribution channels and that a recall was therefore impossible. They justify this with the fact that all products placed on the market have already been installed and have thus become the property of the end users.

The decision

In the order, the Regional Court of Karlsruhe, in addition to the admissibility of the application, first states that an order to recall or remove is to be enforced according to Section 888 ZPO. The Chamber justifies this by stating that the wording of the judgment “or” allows the debtors to choose between the two options. Since at least the recall is a non-justifiable act within the meaning of Section 888 ZPO, enforcement – irrespective of the justifiability of the further option – is to be enforced according to Section 888 ZPO. According to the Chamber, it is irrelevant whether the optionally ordered Removal from distribution channels also constitutes a non-justifiable act or is to be enforced as a non-justifiable act from Section 887ZPO.

With regard to the substantive issues of the decision, Section 140a (3) sentence 1 German Patent Act must be observed in the present case. Pursuant to Section 140a (3) sentence 1 German Patent Act, infringers whose inventions are used contrary to Sections 9 to 13 German Patent Act may demand that the infringing party recalls the products or permanently removes them from distribution channels.

With regard to the question of when an infringing object is still in the distribution channels, the Higher Regional Court Karlsruhe focuses on the concept of the private end consumer in the present decision. The Chamber clarifies that an infringing object is still in the channels of distribution („in den Vertriebswegen“) even if the customer is a trader who is not a dealer. The Higher Regional Court of Karlsruhe justifies this decision by stating that it is conceivable that an object is later sold in the course of a commercial act and that a patent-infringing act is thereby carried out. In the present case, the Chamber argues that the property in which the outdoor aluminium floor („Outdoor-Aluminiumdielen“) was installed could later be sold by the trader as a commercial act. Due to these circumstances, the court concludes that a resale of the floorboards is not sufficiently excluded. The debtors’ objection that the products had already been installed at the buyers’ premises did not justify a different decision in the court’s view either. The court justified this by stating that the recall pursuant to Section 140a (3) sentence 1 German Patent Act is merely a demand on the debtor to return the delivered products to the buyer; it has no effect on the debtor whether the buyers actually comply with the demand or not. The debtor has fulfilled his legal obligation if he has issued the demand. The recall is not precluded by the fact that a removal with a single distribution of the floorboards is very unlikely.

In its earlier case law, the Regional Court Mannheim had taken a different view. In its decision of 10 December 2013, docket 2 O 180/12, it stated that the end buyers/end users are not part of the distribution channel. It should be the same whether they use the object commercially or not. Objects that are with private or commercial buyers are no longer within the distribution channels if the buyers are to be classified as end users („Endabnehmer“).

The Higher Regional Court Karlsruhe based its decision, inter alia, on earlier decisions of the Higher Regional Court Düsseldorf. The decisions of the Higher Regional Court Düsseldorf also come to the conclusion that objects are in principle still in the distribution channel if they are with a commercial buyer. Here, too, the court states that it makes no difference whether the commercial buyer is to be classified as an end user or not.
In its decision of 15 July 2021 – 15 U 42/20, the Higher Regional Court Düsseldorf justified its decision by stating that a commercial end user generally infringes a patent if he commercially uses the infringing product. In this case, he owns the infringing product for the purpose of use pursuant to Sec. 9 Sentence 2 No. 1 German Patent Act.
In its decision of 13 August 2020 – 2 U 10/19, the Higher Regional Court Düsseldorf also came to the conclusion that a product is still”in the distribution channels („in den Vertriebswegen“) even if it is held by a commercial end user. In the case at hand, the parties were arguing about spark plugs in a gas engine and here, too, the court argued that it is not unlikely that the engine equipped with the spark plugs will be sold second-hand and that the patent-infringing spark plugs will thus also be used commercially. In addition, the Higher Regional Court Düsseldorf stated that a product is only not in the channels of distribution („in den Vertriebswegen“) if it can be ruled out that it will be further distributed at a later point in time.

The Higher Regional Court Karlsruhe takes up the aforementioned arguments of the Higher Regional Court Düsseldorf and applies them to its own case.

With the present ruling, the Higher Regional Court Karlsruhe thus follows the existing case law of the Düsseldorf Higher Regional Court.