How far do recall claims reach?

As already reported in the March 2007 issue, in the author’s opinion Austria has not fully implemented Art. 10 of the Enforcement Directive. In particular, Austrian law does not provide for a measure to recall infringing goods from the channels of commerce. When implementing the Enforcement Directive to Austrian national law, the legislator considered that corresponding corrective measures already existed in the Austrian IP Acts as – with respect to patents – Art. 148 of the Austrian Patents Act generally provides for that the infringer has to eliminate the unlawful situation.

However, the decisive difference between national Austrian law and Art. 10 of the Enforcement Directive recently became clear in a decision of the Supreme Court. In this case, the patentee requested that all infringing goods have to be called back from the channels of commerce by the infringer. The Austrian Supreme Court stated that such a recall claim falls under Art. 148 of the Austrian Patents Act, and therefore it is a basic condition for applying this measure that the infringing goods are (still) in the infringer’s power of disposition, which includes all goods which are still on stock with the reseller and where the delivered goods are subject to a reservation of title. However, if the goods were handed over to a third party, and the third party had already paid the purchase price for acquiring property of the infringing goods, the goods were no longer in the power of disposition of the infringer anymore, and therefore cannot be recalled.

This is in clear contrast to how the recall provision of Art. 10 of the Enforcement Directive is discussed in German literature and construed by German courts. According to the German position, the recall provision is precisely provided for in the Enforcement Directive in order to provide some measures against goods, which are not in the power of disposition of the infringer anymore. According, to German (lower) courts’ decisions, the infringer has an obligation to call back any infringing goods which were already sold to resellers or further traders. However, from the end consumer infringing goods need not to be recalled.

As the due date for implementing the Enforcement Directive has already expired for a long time, individuals should be able to directly claim the enforceability of Art. 10 of the Enforcement Directive before national courts. However, the Austrian Supreme Court has not asked the European Court of Justice for a preliminary ruling on the question how far the recall provision goes.

Accordingly, we will have to wait for another national court to ask the ECJ to construe Art. 10 of the Enforcement Directive, especially whether infringing goods not being in the power of disposition of the infringer anymore are also covered by the recall provision.

Dr. Rainer Beetz, LL.M.

01.02.2010