IP infringement at trade shows
That is because trade shows are important for allowing manufacturers to meet potential international customers from an entire industry sector, regardless of whether those customers are from the country hosting the show.
When a trade show takes place in Germany, IP right owners regularly try to enforce their rights and prevent exhibitors from showing certain products. They may seek help from civil courts or criminal law enforcement authorities (police or customs officers), as I have previously discussed in WIPR.
In the past, German courts have treated exhibitions of products at trade shows as ‘offers’; this was one of the prerequisites for treating some exhibitions as IP-infringing. A right owner simply had to establish in court that a certain product had been ‘shown’ at a trade show. The court assumed that the exhibition was made for soliciting contractual offers from customers at the show who were interested in buying the product.
In 2010, the I senate of the German Federal Supreme Court—the section in charge of trademark, design and unfair competition matters—held that simply referring to the exhibition of a product at a trade show in Germany was not sufficient to establish an ‘offer’ or the imminent prospect of an offer. Instead, a plaintiff had to show that the product had in fact been ‘offered’ to an actual customer in Germany.
The case, Pralinenform II, concerned the presentation at the International Sweets Fair in Cologne, a trade show that traditionally only welcomes business people, of a praline good that was protected by a trademark. The Pralinenform II decision was subject to a remarkable amount of criticism. The court was accused of being naïve in thinking that exhibitors did not act for the express purpose of soliciting offers from potential customers. This had always been enough to establish ‘offers’ in all areas of IP law in Germany.
"The court was accused of being naïve in thinking that exhibitors did not act for the express purpose of soliciting offers from potential customers."
Leading judges for patent infringement matters in Germany publicly said the decision of the I senate was wrong and that it would not be applied to patent infringement cases (which are dealt with by a different senate at the Federal Supreme Court, the X senate).
The X senate of the Federal Supreme Court has not had the opportunity to decide a case where this legal question is relevant. However, some district courts covering patent infringement, such as Mannheim, have followed the I senate and held that in patent matters the mere exhibition of products at trade shows in Germany does not suffice to establish an ‘offer’.
In a further decision, Keksstangen (cookie bars), handed down in October 2014, the I senate expressly affirmed its decision in Pralinenform II. In its press release (the grounds of the decision have not been published yet), the court re-emphasised that merely presenting a certain product at a trade show in Germany does not amount to an ‘offer’ or an imminent prospect of an offer or advertising required for injunctive relief.
The circumstances of the presentation at the show in the Keksstangen case are similar to those in Pralinenform II. Although the plaintiff’s claim was based on unfair competition—not trademark—law, the requirements for injunctive relief are the same. A ‘danger of repetition’ or an ‘imminent danger of first infringement’ are required for both categories of claims.
Nonetheless, the exact formulation of the grounds in the Keksstangen decision will probably contain some details that will concern many lawyers and judges alike when called upon to decide whether a particular exhibition at a German trade show will merit IP enforcement.
Jens Künzel is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de
