In an appeal on grounds of infringement of the right to be heard, the BGH allowed the appeal. The German Federal Supreme Court thus continued the previous case law, in particular with regard to the right to be heard in appeal proceedings before the BPatG.
The start: Radiator design and its disclosure
Originally, this case before the Federal Patent Court was about a radiator design. The owner is Mert Radiator GmbH (Germany), which passed the design on to the company T… in Turkey for production even before the IP right application was filed and had it delivered to Germany. A third party filed an action for revocation against this radiator design: both Mert Radiator and T had already supplied radiators in conformity with the design to various companies before the filing date – a clear case of design disclosure even before the grace period, the applicant argued.
However, the BPatG had dismissed the invalidity action, with interesting comments on § 5 DesignG – we reported. Acts of disclosure to only two companies did not have the broad effect required for a disclosure under § 5 Design Act, the BPatG had ruled, pointing out the special features for communications in the context of business relationships with regard to design disclosure.
BGH: Right to be heard
However, this was not the subject of the applicant’s appeal to the Federal Court of Justice. Rather, the applicant claimed that its right to be heard had been violated in the proceedings before the BpatG (GG Art. 103 (1), § 23 (5) sentence 2 DesignG, § 100 (3) No. 3 PatG).
A successful appeal, the BGH upheld the plaintiff and in its decision continued the previous case law regarding the right to be heard.
As in previous important case decisions (e.g. BGH MetroLinien of 2013, I ZB 91/11), the BGH not only explained the principles arising from Article 103(1) of the German Constitution, but also explained them, in particular, in relation to proceedings before the Federal Patent Court when the latter is prevented from reaching its decision solely due to the passage of time since the appeal was filed.
Principle of the right to be heard
The principle of the right to be heard in Germany is clear: Article 103 (1) of the German Basic Law (dt: Grundgesetz, GG) guarantees the parties to court proceedings the opportunity to comment on the facts underlying a court decision before the decision is taken. However, the Federal Patent Court is in principle not obliged to set deadlines for the parties to comment in written appeal proceedings or to notify them of an intended date for taking a decision.
At least with regard to patent proceedings (keyword “Injunction gap”), this is presumably going to change at the BPatG for the German modernised Patent Act entered into force in August 2021. This is because the German Patent Modernisation Act introduced a new time limit (§ 83 German Patent law) within which the BPatG must issue its reference decision to the infringement court: this must be done within 6 months. In addition, the BPatG will be authorised to disregard arguments of the parties received after the deadline for the reference decision in patent proceedings.
BGH case Radiator design: reasonable period of time required
But here we are back to design and trade mark law. According to BGH, the requirement to respect the right to be heard only requires that the parties to the proceedings have the opportunity to comment on the arguments of the opposing party within the meaning of § 78 (2) MarkenG. However, as the Federal Supreme Court explained in the Radiator design decision, this in turn requires that the parties have a reasonable period of time to present their case.
The matter becomes complicated in appeal proceedings before the BPatG, as the Federal Patent Court is prevented from making its decision solely on the basis of the lapse of time since the appeal was filed, if the appellant has requested to be given the opportunity to state the grounds of appeal and the Federal Patent Court, according to the circumstances, intends to comply with this request. In such a case, the Federal Supreme Court ruled that the appellant may generally assume that it will have the opportunity to substantiate his appeal before a decision of the Federal Patent Court. The BGH itself described this guiding principle from the Radiator design decision as a continuation of its own case law (BGH, GRUR-RR 2008, 457, 458 – Tramadol and BGH, GRUR 2013, 1276 nos. 16 to 18 – MetroLinien).
One-sided conversations can easily violate the right to be heard
The BGH also pointed out that one-sided conversations (this also applies to telephone conversations in particular) between a party and a member of the court then could easily violate the right to be heard if not all parties to the proceedings are informed of the content of the conversation. This was also the case in the radiator design case.
The Federal Patent Court had not responded to the applicant’s request to be informed by when the statement of grounds of appeal could be filed, the applicant and petitioner claimed. On the other hand, the BPatG had replied to the design owner’s three requests without, in turn, informing the applicant of the requests and the Federal Patent Court’s replies. And the BPatG had also not informed the applicant that it would decide without waiting for the statement of grounds of appeal announced in the written pleadings.
The Federal Court of Justice therefore ruled that there had been a violation of the right to be heard and to a fair hearing and allowed the applicant’s appeal (denial of the right to be heard (§ 23 (5), second sentence, Design Act, § 100 (3) No. 3, Patent Act). This is also important in order to observe the principle of procedural equality of arms. The question of whether the complaint raised is valid is not relevant for the admissibility of this appeal, the BGH added.
Moreover, the BGH said that it could not be ruled out that the Federal Patent Court would have arrived at a different assessment if it had taken into account the circumstances presented by the appeal and would therefore possibly not have decided that acts of disclosure on the part of T. outside the grace period of § 6 sentence 1 Design Act were not apparent.
Therefore, the decision of the BPatG of 17.09.2020 – 30 W (pat) 802/18 denying the invalidity action against the radiator design was set aside by the BGH and referred back to the BPatG for a new hearing.
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Design taken from the DPMA register