Tenor

On the plaintiff’s appeal, the judgment of the Higher Regional Court of Munich – 6th Civil Senate – of March 23, 2017 is set aside and the further appeal is dismissed insofar as it was decided to the detriment of the plaintiff with regard to the application for payment.

The defendant’s appeal against the judgment of the Regional Court of Munich I – 17th Chamber for Commercial Matters – of June 16, 2016 is dismissed to the extent that it is set aside, subject to the proviso that interest on the payment claim is only payable from February 23, 2016.

The applicant is ordered to pay the costs of the appeal.

By right.

Facts of the case

The defendant sells clothing. In 2016, it sold sweatpants of the brand “R.” to consumers in Germany via the sales platform “amazon.de”. “. On the packaging and the label of the sweatpants, it stated their textile composition as “52% cotton, 40% polyester, 8% acrylic”.

The plaintiff manufactures clothing. It claims that the information on the labels of the jogging pants sold by the defendant violates the provisions of Regulation (EU) No. 1007/2011 on textile fiber names and related labeling and marking of the fiber composition of textile products (Textile Labelling Regulation – TextilKennzVO). According to this regulation, consumers in Germany must be informed about the textile fibers in a product with a textile fiber content of at least 80% using the fiber designations listed in the German version of Annex I of the Textile Labelling Regulation. The designations “Cotton” and “Acrylic” used by the defendant are not mentioned in the German version of this Annex.

The plaintiff applied to the Regional Court to prohibit the defendant, on pain of a more detailed order, from making pants available to consumers in the course of trade in Germany which contain at least 80% by weight of textile components if the textile fibers contained in these pants are not marked in an easily legible, visible and clearly recognizable manner by means of labels or a marking based on the textile fiber designations listed in the German version of Annex I to the Textile Labelling Ordinance.

In addition, the plaintiff has requested that the defendant be ordered to reimburse the lawyer’s fees in the amount of € 1,044.40 net plus interest in the amount of five percentage points above the base interest rate since the pendency of the action, which the plaintiff incurred as a result of the warning letter preceding the action.

The Regional Court granted the action with these motions.

In the appeal instance, in which the defendant pursued its application for dismissal of the action, the plaintiff applied for confirmation of the judgment of the Regional Court with the proviso that the defendant is prohibited from making pants available to consumers in the course of trade in Germany which have a weight proportion of textile components of at least 80% in each case, if the textile fibers contained in these articles of clothing are not designated by the textile fiber designations listed in the German version of Annex I to the Textile Labelling Regulation, in particular if this is done as follows:

The Court of Appeal granted the application for injunctive relief filed by the plaintiff at second instance, omitting the word “in particular” before the words “if this occurs as follows:” and the application for payment in the amount of € 522.20 net plus interest at five percentage points above the prime rate since the defendant’s application to dismiss the action.

Insofar as it rejected the plaintiff’s further application for payment, it allowed the appeal.

With its appeal on points of law, which the defendant requests to be dismissed, the plaintiff continues to pursue its claims which were unsuccessful before the Court of Appeal.

Reasons

I. Despite the “in particular if …” addition added by the plaintiff in the second instance, the Court of Appeal did not consider the application for injunctive relief to be sufficiently specific and therefore limited it in its judgment to the specific form of infringement without the addition “in particular”.

On the merits, it considered the application for injunctive relief to be well-founded from the point of view of a breach of competition law because, although not the use of the term “Cotton”, but the use of the term “Acrylic” constituted a tangible infringement of the Textile Labeling Ordinance and thus the overall challenged labeling was inadmissible. The claim for reimbursement of the warning costs was only half justified because the warning issued by the plaintiff was only justified to the extent that the plaintiff objected to the use of the term “Acrylic”. Insofar as the plaintiff objected to the use of the term “Cotton”, the warning was unjustified because, although there was a violation of the Textile Labeling Regulation, there was no noticeable impairment of the interests of consumers.

Insofar as the appellate senate in this case, in contrast to the 29th Senate of the Higher Regional Court of Munich in the judgment of February 18, 2016 – 29 U 2899/15, juris, denied a tangible infringement within the meaning of Section 3a UWG with regard to the use of the term “Cotton”, the appeal should be allowed in order to ensure uniform case law. However, since the present judgment was only based on this deviation with regard to the claim for reimbursement of warning costs, which was deemed to be partially unfounded, the admission of the appeal was also limited accordingly.

II. The plaintiff’s appeal against this assessment is also admissible insofar as it is directed against the fact that the Court of Appeal partially dismissed the action with the application for injunctive relief filed by the plaintiff at second instance; the restriction of the admission of the appeal by the Court of Appeal to the question of whether the plaintiff can demand reimbursement of its entire warning costs is ineffective (see II 1). The appeal on points of law, which is to be treated as admissible overall, is unfounded insofar as the plaintiff challenges the dismissal of the action with the application for injunctive relief filed in the second instance, which does not relate to the specific form of infringement (see II 2). However, the appeal is successful insofar as the plaintiff continues to pursue the part of its application for payment that was dismissed by the Court of Appeal (see II 3).

1. the restriction of the admission of the appeal by the Court of Appeal is not effective. Thus, the appeal admitted for the plaintiff is to be regarded as admitted in its entirety.

a) An admission of an appeal limited to a factually and legally independent and thus separable part of the overall matter in dispute is permissible and thus effective if the part of the dispute affected by this restriction can be assessed independently of the rest of the matter in dispute in factual and legal terms and no contradiction to the incontestable part of the matter in dispute can arise even after a possible referral of the case back. However, this does not have to be a separate matter in dispute and the affected part of the matter in dispute does not have to be capable of being partially judged at the level of the appellate instance; it is also permissible to limit the permission to appeal to a separable part of a procedural claim (cf. BGH, judgment of March 16, 2017 – I ZR 39/15, GRUR 2017, 702 marginal no. 17 = WRP 2017, 962 – PC mit Festplatte I, mwN; decision of September 21, 2017 – I ZR 230/16, ZUM 2018, 182 marginal no. 10 = MMR 2018, 310; decision of April 10, 2018 – VIII ZR 247/17, WRP 2018, 710 marginal no. 20 f. mwN).

For reasons of legal clarity, the question of whether the restriction of the permission to appeal is effective according to these principles depends on the time of the limited permission to appeal. The question of whether a party can appeal against its conviction must not – retrospectively – depend on whether it or another party has appealed against the decision (BGH, ZUM 2018, 182 para. 12).

b) According to these standards, the Court of Appeal’s restriction of the admission of the appeal to the partial dismissal of the action with the application for payment was not effective.

The Court of Appeal’s restriction of the admissibility of the appeal on points of law created the risk of contradictory decisions at the relevant time when this decision was issued, at least insofar as it was then possible that the plaintiff did not file the appeal on points of law admitted by the Court of Appeal, but that a non-admission complaint by the defendant led to the admission of the appeal on points of law insofar as the Court of Appeal partially granted the application for injunctive relief in the contested judgment. In this case, a contradiction would have arisen between the decision on the application for payment and the decision on the application for injunctive relief if the Court of Appeal had assumed, unlike the Court of Appeal, that the application for injunctive relief was justified because the infringement of the Textile Labelling Regulation in the use of the name “Cotton” significantly impaired the interests of consumers. The risk of contradictory decisions – also as a result of a different assessment by the appellate court – already exists if there is the possibility of a different assessment of mere elements of the judgment that neither become final nor bind the court for the further proceedings pursuant to Section 318 ZPO (BGH, judgment of 23 September 2015 – I ZR 78/14/14). September 2015 – I ZR 78/14, GRUR 2015, 1201 para. 26 = WRP 2015, 1487 – Sparkassen-Rot/Santander-Rot; judgment of November 21, 2017 – VI ZR 436/16, NJW 2018, 623 para. 7, in each case with further references).

2. in its appeal, which is admissible overall, the plaintiff unsuccessfully challenges the fact that the Court of Appeal limited its application for injunctive relief at second instance to the specific form of infringement shown in the three illustrations by deleting the word “in particular” contained therein.

a) The Court of Appeal correctly assumed that the first part of the injunctive relief sought by the plaintiff at second instance (“to refrain from making available to consumers in the course of trade in Germany pants which have a weight proportion of textile components of at least 80% in each case, unless the textile fibers contained in these articles of clothing are identified by means of the textile fiber designations listed in the German version of Annex I to the Textile Labelling Ordinance”) is not sufficiently specific because it is essentially limited to reproducing the wording of this ordinance. Requests for injunctions that merely repeat the wording of a law are generally to be regarded as too vague and therefore inadmissible (BGH, judgment of February 2, 2012 – I ZR 81/10, GRUR 2012, 945 para. 16 = WRP 2012, 1222 – Tribenuronmethyl, mwN).

b) The Court of Appeal further assumed that the addition to the first part of the application for injunctive relief (“in particular if this is done as follows”) could not give the indeterminate application the necessary certainty. The addition merely cites an example case without sufficiently specifying the characteristics of the requested prohibition. The judgment should therefore be limited to the specific form of infringement without the addition of “in particular”, because the plaintiff’s request should be understood to mean that she wishes to have this conduct prohibited in any case. This assessment stands up to legal review.

aa) The part of an application for an injunction introduced with “in particular” can have two functions: On the one hand, it can serve to explain the abstract prohibition requested in the first instance by clarifying by way of example what is to be understood by the form of infringement mentioned in the abstract part of the application. Secondly, the plaintiff can make it clear in this way that the object of his request is not only a comprehensive, abstractly formulated prohibition, but that, if he does not succeed with this, he is in any case seeking an injunction against the specific conduct complained of (established case law; see BGH, GRUR 2012, 945 para. 22 – Tribenuronmethyl; BGH, judgment of November 5, 2015 – I ZR 50/14, GRUR 2016, 705 para. 13 = WRP 2016, 869 – ConText, in each case with further references).

bb) The Court of Appeal rightly assumed that the part of the application for injunctive relief introduced with “in particular” was not suitable in the case in dispute – in accordance with the first function of an application formulated in this way – to clarify by way of example what was to be understood in detail by the form of infringement mentioned in the abstract part of the application, because the abstract characteristics of the requested prohibition were not sufficiently determined even by the exemplary reference to the specific form of infringement. Furthermore, the court did not err in law in assuming that the plaintiff had made it clear with the addition – in accordance with the second function of an application formulated in this way – that it was in any case seeking a prohibition of the specific conduct complained of. It therefore rightly dismissed the application for injunctive relief by deleting the addition insofar as it went beyond the specific form of infringement (see BGH, judgment of January 14, 2016 – I ZR 61/14, GRUR 2016, 516 marginal no. 41 = WRP 2016, 581 – Wir helfen im Trauerfall, mwN).

(3) The plaintiff’s appeal on points of law, however, is well-founded insofar as it is directed against the dismissal of half of the claim for payment; in this respect, it leads to the further granting of the claim. The Court of Appeal’s assessment that the warning issued by the plaintiff was only partially justified does not stand up to legal scrutiny.

a) A warning is justified within the meaning of Section 12 para. 1 sentence 2 UWG if it is justified, i.e. if it is based on a substantive claim for injunctive relief, and if it is also effective and necessary to show the debtor of the injunction a way to indemnify the injunction creditor without recourse to the courts (BGH, judgment of January 21, 2010 – I ZR 47/09, GRUR 2010, 354 para. 8 = WRP 2010, 525 – Kräutertee; judgment of May 19, 2010 – I ZR 140/08, GRUR 2010, 1120 para. 16 = WRP 2010, 1495 – Vollmachtnachweis; judgment of July 19, 2012 – I ZR 199/10, GRUR 2013, 307 para. 28 = WRP 2013, 329 – Unbedenkliche Mehrfachabmahnung; cf. further – on Section 97a (1) UrhG aF – BGH, judgment of November 24, 2016 – I ZR 220/15, GRUR 2017, 617 marginal no. 10 = WRP 2017, 705 – WLAN-Schlüssel, mwN).

b) The Court of Appeal assumed that the claim for reimbursement of warning costs was only half justified because the warning issued by the plaintiff was only half justified. The warning was only justified insofar as the plaintiff objected to the use of the term “Acrylic”. Insofar as the plaintiff objected to the use of the term “Cotton”, the warning was unjustified because, although there was a violation of the Textile Labeling Ordinance, there was no noticeable impairment of the interests of consumers. In contrast, the fact that the pre-formulated cease-and-desist declaration sent to the defendant with the warning was too broad was harmless, as the formulation of the cease-and-desist declaration was in principle a matter for the party obliged to cease and desist. This assessment does not stand up to scrutiny.

c) However, the Court of Appeal did not err in law in assuming that the use of the designation “Cotton” violates the Textile Labeling Regulation, but does not significantly affect the interests of consumers.

aa) The Court of Appeal assumed that the provisions of the Textile Labelling Ordinance relevant in the dispute were market conduct regulations serving to protect consumers within the meaning of Section 3a UWG. The labeling of the pants marketed by the defendant with the designation “Cotton” violates Art. 5 para. 1 TextilKennzVO, according to which only the textile fiber designations in Annex I of the regulation are to be used to describe the fiber compositions on labels and markings of textile products, and Art. 16 para. 3 Textile Marking Regulation, according to which the labeling or marking must be in the official language of the Member State in whose territory the textile products are made available to the consumer. The term “Cotton” is not listed in Annex I of the Textile Labelling Regulation; rather, the term “cotton” should have been used in accordance with point 5 of this Annex I. This assessment does not reveal any error of law and is not challenged by the appeal.

bb) The Court of Appeal further assumed that the use of the fiber designation “Cotton” did not appreciably impair the interests of consumers within the meaning of Section 3a UWG (also already OLG Munich [6th Civil Senate], GRUR-RR 2017, 11, 16 = WRP 2017, 250 [juris para. 80 to 87]; aA OLG Munich [29th Civil Senate], judgment of February 18, 2016 – 29 U 2899/15, juris para. 28). The term “cotton” has become established in German colloquial language as a descriptive term for cotton. Since the average consumer addressed therefore understands this term as cotton without further ado, the infringement of the Textile Labelling Regulation associated with its use is not likely to cause the average consumer to make a commercial decision that would otherwise not have been made. Nothing to the contrary follows from the case law of the Federal Court of Justice, according to which, in cases in which consumers are deprived of information which Union law classifies as essential, the requirement of perceptibility is also to be regarded as fulfilled. The use of the fiber name “Cotton” would not deprive the targeted consumer of any material information, since he understands this name without further ado in the sense of “cotton”.

cc) The appeal, on the other hand, argues that the information on the fabric composition of garments is information that concerns advertising and thus commercial communication and may not be withheld from the consumer under the EU Textile Labeling Regulation. Such information is required under Art. 7 para. 5 of Directive 2005/29/EC on unfair commercial practices and Section 5a para. 4 UWG as material within the meaning of Art. 7 para. 1 of Directive 2005/29/EC and Section 5a para. 2 UWG. According to the case law of the Federal Court of Justice, if information is withheld that Union law classifies as material, this means that the requirement of tangibility pursuant to Section 3a UWG is fulfilled. The appeal is therefore unsuccessful.

(1) The Senate has, however, under the validity of Section 5a para. 2 UWG (old version), the Senate assumed on various occasions that the requirement of appreciability pursuant to sec. 3 para. 1 and 2 sentence 1 UWG aF was fulfilled without further ado if the consumer was deprived of information which Union law classifies as material. However, it did not uphold this under the amended Section 5a para. 2 UWG, which was amended with effect from December 10, 2015. The requirements of the unfairness offense regulated there, that the consumer needs the material information withheld from him “depending on the circumstances, in order to make an informed decision” and “the withholding of which is likely to induce the consumer to take a transactional decision that he would not have taken otherwise”, are, according to Section 5a para. 2 sentence 1 nos. 1 and 2 UWG constitute additional constituent elements which must be examined independently as such (see BGH, judgment of March 2, 2017 – I ZR 41/16, GRUR 2017, 922 marginal no. 31 = WRP 2017, 1081 – Komplettküchen; judgment of October 5, 2017 – I ZR 232, I ZR 41/16, GRUR 2017, 922 marginal no. 31 = WRP 2017, 1081 – Komplettküchen; judgment of October 2017 – I ZR 232/16, GRUR 2018, 438 para. 36 = WRP 2018, 420 – Energieausweis; judgment of October 18, 2017 – I ZR 84/16, GRUR 2018, 324 para. 24 = WRP 2018, 324 – Kraftfahrzeugwerbung).

(2) Nothing to the contrary applies to the requirement of perceptibility within the meaning of Section 3a UWG. If the infringement of a market conduct regulation consists in withholding material information from the consumer, this infringement is only appreciable within the meaning of Section 3a UWG if, depending on the circumstances, the consumer needs the withheld material information to make an informed decision and its withholding is likely to induce the consumer to take a transactional decision that he would not have taken otherwise.

(3) However, the trader who claims that the consumer – in deviation from the normal case – does not need essential information withheld from him for a purchase decision and that the withholding of this information cannot cause the consumer to make a different purchase decision, has a secondary burden of proof in this respect. The consumer will generally require material information to make an informed purchase decision. Likewise, unless there are special circumstances in the specific case, it can generally be assumed that the withholding of material information that the consumer needs under the circumstances to make an informed decision is likely to cause the consumer to make a transactional decision that they would not have made if the information had been provided (BGH, GRUR 2017, 922 para. 32 to 34 – Komplettküchen).

(4) According to these standards, the assessment of the Court of Appeal proves to be free of legal error. According to the findings made, the term “Cotton” has become established in the German colloquial language as a descriptive indication for “cotton”. The members of the Court of Appeal belong to the relevant public. For their findings, they also referred to decisions of the Federal Court of Justice (judgment of September 27, 1995 – I ZR 199/93, GRUR 1996, 68, 69 – COTTON LINE [juris para. 20]) and the Federal Patent Court (decision of March 2, 2004 – 27 W [pat] 254/03, juris para. 10). The assessment made there that the term “Cotton” is a descriptive indication for “cotton” and belongs to the German colloquial language is not limited to trademark law, but is generally valid. In addition, the Court of Appeal referred to the Duden dictionary. If the average consumer understands the term “cotton” as “Baumwolle” without further ado, he does not need this information in German to make an informed purchase. Withholding this information is therefore not likely to cause him to make a commercial decision that he would not have made if the term “cotton” had been used.

d) However, the Court of Appeal wrongly assumed that a warning is always only partially justified and therefore only leads to a claim for reimbursement of part of the expenses required for it if it has been used to object to certain conduct from several points of view and it does not prove to be correct from all of these points of view.

aa) However, the Court of Appeal correctly assumed that the warning was not partially unjustified because the pre-formulated cease-and-desist declaration sent to the defendant with the warning was too broad. A warning is only justified if it shows the debtor how to behave in order to avoid a lawsuit. Accordingly, the warning must contain a request to submit a cease-and-desist declaration with a penalty clause. However, it is harmless if the creditor demands more than he is entitled to with his proposed declaration of submission, as it is up to the debtor to make the declaration required to eliminate the risk of repetition on the basis of the warning (BGH, judgment of November 16, 2006, GRUR 2007, 607 marginal no. 24 = WRP 2007, 775 – Telephone advertising for “individual contracts”).

bb) However, the warning is also not partially unjustified because the claim for injunctive relief, which the plaintiff asserted with the warning with regard to the use of the designations “Acrylic” and “Cotton” on the defendant’s disputed labels on the basis of §§ 3, 3a UWG in conjunction with the provisions of the Textile Labeling Ordinance, is only justified with regard to the simultaneous use of the designation “Acrylic” in the absence of a noticeable impairment of the interests of consumers through the use of the designation “Cotton”.

(1) If the creditor objects in a warning letter to a specifically described behavior (such as a certain advertisement) which he objects to as anti-competitive from several points of view, the costs incurred for the warning letter are already fully reimbursable if the claim proves to be justified from one of the aforementioned points of view. In such a constellation, the warning – irrespective of which aspect justifies the claim – has proven to be objectively useful and suitable for settling the dispute. If the warning notice is justified according to one of the aforementioned aspects, it is therefore not a partially justified warning notice for which costs are only to be reimbursed to the extent of the partially justified claim for injunctive relief (for a warning notice based on several trademark rights, see BGH, judgment of April 28, 2016 – I ZR 254/14, GRUR 2016, 1301 marginal no. 66 f. = WRP 2016, 1510 – Kinderstube).

(2) A different assessment may be made if the creditor makes the individual complaints the subject of separate attacks. This may be the case, for example, if the plaintiff asserts separate claims for injunctive relief with regard to various advertising statements in an advertisement. In such a case, the warning is only justified and the costs of the warning are only to be reimbursed to a competitor to the extent that the individual complaints are justified. The amount of the claim for compensation is then to be determined according to the ratio of the object values attributable to the individual infringements, whereby the amount of the shares is determined according to the ratio of the object values attributable to the individual infringements (BGH, judgment of December 10, 2009 – I ZR 149/07, GRUR 2010, 744 para. 50 and 52 = WRP 2010, 1023 – Sondernewsletter; judgment of March 11, 2010 – I ZR 27/08, GRUR 2010, 935 para. 41 = WRP 2010, 1249 – Telephone advertising after change of company).

(3) The question of whether a creditor who objects in a warning letter to a specifically described conduct which he objects to as anti-competitive from several points of view makes the individual objections the subject of separate attacks must be answered by interpreting the warning letter. A declaration of submission attached to the warning letter and pre-formulated by the creditor can be used to interpret the warning letter. This is not precluded by the fact that it is generally up to the debtor to formulate the declaration of submission. This does not change the fact that the creditor’s pre-formulated declaration of submission expresses the aim of his warning and can therefore be used to interpret it.

(4) According to these standards, the plaintiff can demand reimbursement in full from the defendant for the warning costs it incurred in the dispute. With its warning letter, the plaintiff objected to the use of the statement “52% Cotton, 40% Polyester, 8% Acrylic” on the packaging and labels of the jogging pants offered by the defendant for violation of the Textile Labeling Ordinance with reference to the specific form of infringement. Accordingly, it sought an injunction against the use of this statement as a whole and not, for example, an injunction against the use of the statement “cotton” on the one hand and the use of the statement “acrylic” on the other. Thus, the warning – irrespective of the fact that only the use of the indication “Acrylic” justifies the claim – has proven to be objectively useful and suitable for settling the dispute. Its costs are therefore to be reimbursed in full.

e) However, the Court of Appeal rightly assumed that the claim for interest asserted by the plaintiff was not already justified from the time the action became pending, but only from the time at which the defendant requested the dismissal of the action, because it was only at this time that it seriously and definitively refused to fulfill the claim (BGH, judgment of February 6, 2013 – I ZR 106/11, GRUR 2013, 925 para. 59 = WRP 2013, 1198 – VOODOO; judgment of July 9, 2015

– I ZR 224/13, GRUR 2015, 1021 para. 34 = WRP 2015, 1214 – Headphone labeling, in each case with further references).

III. Accordingly, on the plaintiff’s appeal, the judgment on appeal is to be set aside, with the further appeal being dismissed, insofar as a decision has been made to the detriment of the plaintiff with regard to the application for payment. To the extent of the annulment, the defendant’s appeal against the judgment of the Regional Court must be dismissed with the proviso that the interest on the payment claim is only to be paid from February 23, 2016. There is just as little reason to change the decision on costs made by the court of appeal as there is to charge the defendant with part of the costs of the appeal (see Section 92 (2) no. 1 ZPO).

Chef Schaffert Löffler Feddersen Schmaltz

Lower courts:

Munich Regional Court I, decision of 16.06.2016 – 17 HKO 1614/16 –

OLG Munich, decision of 23.03.2017 – 6 U 3385/16 –