In a recent decision, the Austrian Supreme Court had to answer the question whether a defendant can be forced to recall goods from the channels of commerce by means of a preliminary order.
In this dispute, the Appeal Court found that a specific catheter having protective means for a needle infringed a European patent. The defendant argued non-infringement as well as nullity of the patent in suit. However, during the appeal proceedings as in the provisional proceedings in Austria, the Board of Appeals of the EPO found the patent in suit to be valid, the Vienna Appeal Court followed these findings on the validity of the patent in dispute. Accordingly, the Appeal Court granted a preliminary injunction and the defendant was also ordered to recall the infringing catheters from the channels of commerce. Thus, the Vienna Appeal Court found that the defendant who has no power of disposition of the infringing goods anymore cannot remove the infringing goods from the channels of commerce, but he must make a serious endeavour to recall these goods even before a decision on the merits is handed down.
The defendant appealed to the Supreme Court of Austria. The Austrian Supreme Court agreed with the Vienna Appeal Court that the patent is valid and infringed. However, the Supreme Court reversed the findings regarding the recall from the channels of commerce in provisional proceedings. The Supreme Court reasoned its decision that generally by a provisional measure it is not allowed to create a situation that cannot be undone after the end of the provisional proceedings. However, if a recall is finalised, this would create a situation which cannot be undone anymore as the defendant has no right that the former customer will agree to a new contract after the provisional injunction was eventually lifted. Additionally, in its reasoning the Supreme Court referred to the Enforcement Directive where the recall of goods is only referred as a corrective measure in a decision on the merits. However, a recall of goods is not mentioned in Article 9 referring to provisional and precautionary measures.
Thus, the Supreme Court (correctly) concluded that a recall of infringing goods is generally not available in provisional proceedings. These findings are not restricted to patents, but apply to all IP rights.
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