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In-Depth Information
whether, and if so to what extent, that is what Art 11 requires. As to what Art 11
required, Arnold J applied three decisions of the Bundesgerichtshof, concerned
with Internet auctions in which the defendant provided an online auction-style
service, offering for sale imitation 'ROLEX' watches explicitly described as
such.
36
In these cases the Bundesgerichtshof held that the Rolex applicant
companies would be entitled to an order requiring the defendant to take
reasonable measures, such as filtering, to prevent further infringements, but
could not be required to take steps which would jeopardise its entire business
model. Arnold J referred to an extra-judicial explanation of this case by Prof Dr
Joachim Bornkamm, the President of the First Civil Chamber and a party to
the decision (Bornkamm, 2007). In his paper Judge Bornkamm explained that
German courts may grant orders against a third person whom it is reasonable to
burden with a duty to examine goods he has to carry in regard to possible trade
mark infringements. Although there can be no
ex ante
examination of any
infringing content of the vendors may want to put up for sale, a duty to react in
the case of infringement would, however, be reasonable once a clear infringe-
ment has been shown by the right holder. In this case the host provider should
indeed be obliged to remove the infringing object from the platform and to
install measures in order to prevent a repetition of such an infringement.
iii. Alternative measures
Article 12 of the Enforcement Directive provides that Member States may
provide that, in appropriate cases and at the request of the person liable to be
subject to the measures provided for in this section, the competent judicial
authorities may order pecuniary compensation to be paid to the injured party
instead of applying the measures provided for in this section if that person acted
unintentionally and without negligence, if execution of the measures in ques-
tion would cause him/her disproportionate harm and if pecuniary compen-
sation to the injured party appears reasonably satisfactory.
7.64
iv. Damages
Compensatory damages
Article 13(1) of the Enforcement Directive provides that Member States shall
ensure that the competent judicial authorities, on application of the injured
party, order the infringer who knowingly, or with reasonable grounds to know,
engaged in an infringing activity, to pay the right holder damages appropriate to
the actual prejudice suffered by him/her as a result of the infringement.
7.65
36
Case I ZR 304/01
Internet Auction I
(reported in English at [2006] ECC 9, [2005] ETMR 25 and [2005] IIC
573), Case I ZR 35/04
Internet Auction II
(reported in English at [2007] ETMR 70) and Case I ZR 73/05
Internet Auction III
.
