Plant variety rights

Decision of the Regional Court of Düsseldorf – 2a O 122/15 – Trademark infringement

|Gert Würtenberger|

With its decision of 18 May 2016 in an action on trademark infringement the Regional Court of Düsseldorf (LG Düsseldorf) held that the trademark rights are not exhausted and thus infringed in a case where a trademark registered for plants has been used in further distribution for a different size of bundling of plants than laid down in the provisions of the license agreement. While the Claimant had given a trademark license to its licensee for the distribution of plants in a bundling of 5 plants, it had caught the Claimant’s attention that plants under the licensed trademark had been distributed to a commune in a bundling of 10 plants. Whether subject bundling of 10 plants originated from the licensed propagation or whether it also included plants derived from a non-licensed propagation could not be further investigated. It is not unusual in the subject industry to apply original labels to plants originating from a non-licensed production or on larger distribution packages, constituting a mixture of licensed and non-licensed products in order to pretend that the distributed goods are all legally propagated plants.

Since the distribution of plants in a bundling of 10 plants was contrary to the provisions laid out in the license and distribution agreement and thus indicated that the plants distributed with an original label were (partly) non-licensed products, the Applicant requested the plant trading company to furnish proof regarding the source of the products bearing the Claimant’s trademark. The trading company failed to provide such evidence.

Since the Claimant established that it allowed its licensees to distribute plants of a specific quality in bundling of 5- and not in bundling of 10 plants, the Court held that a trademark infringement was given in a case where plants had been distributed in a bundling of 10, irrespective of whether the subject plants originated from a licensed or non-licensed propagation. In this context the Court considered the case law regarding the packaging of pharmaceutical products to be applicable in analogy. As a change of the size of the bundling of plants could result in a deterioration of the plants, the Court held that the trademark owner had a legitimate interest in opposing the use of its trademark for a larger bundling of plants than those permitted under the license agreement. A trademark is therefore infringed, if the trademark has been used for the bundling of plants other than the one foreseen under the license agreement, irrespective of whether the person/company arranging the different bundling of plants knew that the licensor only allows the use of its trademark for a specific size of bundling of plants.

In addition, the Court held that if it is established that a product had been branded unlawfully, the trademark owner also has the right to be informed about the names and addresses of the prior distributors, which has to be established by corresponding documents of distribution as well as invoices.

The decision is under appeal of the Defendant.

Published on 21 Jun 2016