A licensee has licensed a utility model (UM) and know-how (KH) for an oxygen-enriched
beverage. In addition, a gas mixing equipment was supplied by the licensor mainly for
counting the drinks for calculating the license fee. Shortly after the equipment was
successfully installed at the licensee's facility, problems occurred and the licensee
decided to exchange the licensor's equipment with new equipment from a different
supplier. After some negotiations, the licensee terminated the license contract.
Licensor sued for payment of minimum royalties for two years which were already due.
Licensee denied the basis for such payment because he argued that the UM was invalid and
that the KH was of no value and was not used.
The OGH upheld the decision of the first and the second instance that royalties must
be paid by the licensee. The court found that a licensee enjoys the protection of the
license until the formal invalidation of the licensed right. The licensee does not have
to fear claims for injunction by the licensor; the licensee can also claim injunctive
relief against third parties (at least, if made effective by the licensor). This status
of the licensee justifies the interpretation of the license contract that the royalties
are owed until formal invalidation of the UM. The invalidation of a UM has therefore
effect only for the future for any claims out of a license contract.
Moreover, the OGH held that in a combined UM and KH license, the KH is an independent
contract subject which has an economic value, indicating that - regardless whether the
KH was used by the licensee - at least part of the minimum royalties are due even if the
UM is finally terminated.
Dr. Daniel Alge