Tenor
- The defendant’s appeal against the judgment of the 33rd Civil Chamber of the Regional Court of Cologne – 33 O 102/15 – delivered on September 18, 2018 is dismissed.
- The defendant shall bear the costs of the appeal proceedings.
- This judgment and the aforementioned judgment of the Regional Court of Cologne, insofar as the action has not been withdrawn, are provisionally enforceable. This applies with regard to the obligation to cease and desist only against the provision of security in the amount of € 10,000. The defendant can avert enforcement in other respects by providing security amounting to 110% of the amount to be enforced, unless the plaintiff provides security amounting to 110% of the amount to be enforced in each case prior to enforcement.
- The appeal is not permitted.
Reasons
I.
The parties are in dispute – after the plaintiff partially withdrew the action – over the question of whether the defendant must point out the absence of a safety membrane in an offer.
The plaintiff is a company active in the development, manufacture and distribution of devices and consumables in the field of permanent makeup (abbreviated to PMU). The object of permanent makeup is the cosmetic tattooing of the human skin (in particular the face), through which special color pigments are permanently applied to or under the skin using special needles.
The PMU devices required for tattooing consist of a hand-held device and the necessary accessories (in particular needles and needle nozzles). These accessories are usually attached to the hand-held device in several individual parts.
In 2001, the plaintiff developed the first needle module system in which PMU needles and a needle nozzle are combined in a disposable module, the so-called hygiene module. This module has a special internal protective membrane made of rubber, which is intended to prevent the backflow of wound fluids and impurities and thus contamination of the handpiece, which the defendant has denied with ignorance.
The plaintiff’s hygiene modules are designed as follows:
The two modules are technically identical.
The plaintiff sells its hygiene modules both itself and through various cooperation partners, some of which offer these modules under the plaintiff’s brands and others under their own brands. For details, reference is made to the websites of these providers submitted as attachments (cf. p. 119 et seq. of the file).
The defendant operates an online store at www.s.-shop.com, where it offers various products from the fields of cosmetics, permanent make-up and tattooing. In the past, its product range also included the PMU hygiene module shown in application I (see below). It advertised this with the statement: “Needle modules are hygienically sealed. This means that no liquid can flow back into the pen” (see Annex K 5, p. 37 et seq. of the file). The defendant’s PMU modules do not have a safety membrane.
In a letter from a lawyer dated February 5, 2015, the plaintiff sent the defendant a warning letter due to the sale of these PMU modules and the use of the advertising statement shown and requested that it submit a cease-and-desist declaration with penalty clause and pay the warning costs by February 19, 2015. For details, reference is made to the warning letter dated February 5, 2015 (Annex K 8, p. 43 et seq. of the file).
With regard to the advertising statement, the defendant subsequently issued a cease-and-desist declaration with a penalty clause. It rejected further claims.
The plaintiff was of the opinion that it was entitled to injunctive relief against the defendant under Sections 8, 3, 5 para. 1 sentence 2 no. 1, § 5a UWG. It claimed that its hygiene module was hygienically sealed due to the integrated safety membrane, thereby preventing the backflow of wound fluids and impurities. This module is widely used and known on the market. In contrast, the defendant’s product is not hygienically sealed, so that there is a risk that liquid introduced into the module could flow back into the device during use and contaminate it.
It was of the opinion that hygiene, sterility and safety are of considerable importance in the PMU sector. Its hygiene module therefore enjoys a special reputation due to its safety membrane. Due to the wide distribution of its products, the public trusts that a needle module, which – as in the case of the defendant’s module – is optically (almost) identical, also has a safety membrane.
The presence of a safety membrane therefore qualifies as an essential characteristic within the meaning of Section 5 para. 1 sentence 2 no. 1 UWG. Accordingly, concealing the fact that the defendant’s product – unlike the plaintiff’s original – does not have a safety membrane is misleading.
The plaintiff originally filed a claim against the defendant for injunctive relief against the distribution of the PMU modules at issue due to a violation of Section 4 No. 3a, b UWG, information, damages and reimbursement of warning costs.
In its written submission dated September 7, 2015, it also filed an auxiliary application in which it objected to the sale of these modules without an explanatory note on the lack of a safety membrane. It then withdrew the originally asserted claim for injunctive relief in a statement dated 02.03.2016.
Finally, the plaintiff applied for
I. to order the defendant to refrain from offering, advertising or marketing permanent makeup modules of the type shown below in the course of trade without the plaintiff’s consent and/or having these acts carried out by third parties, subject to a fine of up to € 250,000 to be fixed for each case of infringement, or imprisonment for up to six months:
without expressly pointing out that they do not have a safety membrane to prevent the backflow of liquids and impurities;
II. order the defendant to provide the plaintiff with information on the scope of the infringement committed in paragraph I., namely the names and addresses of the manufacturers, suppliers and other previous owners, the goods and the commercial customers and sales outlets for whom they were intended, as well as the quantity of the goods of the type referred to in paragraph I. delivered, received and ordered, the prices paid and received for the goods in question and the profits made on the sale of the products;
III. declare that the defendant is obliged to compensate the plaintiff for all damages which the plaintiff has suffered and will suffer in the future as a result of the acts described in section I above.
IV. order the defendant to pay the plaintiff € 1,531.90 plus interest in the amount of interest in the amount of 5 percentage points above the respective base interest rate since 20.02.2015.
The defendant has applied,
dismiss the action.
The defendant was of the opinion that it was not relevant for the public whether a PMU module had a safety membrane or not. This was not a quality feature for him. The user does not purchase the plaintiff’s hygiene module because of its sealing, but because he can work well with it. Therefore, he does not trust that a PMU module has a safety membrane.
The defendant has claimed that its products were destroyed during the expert’s examination.
After taking evidence, the Regional Court upheld the action to the extent that it was still pending and ordered the plaintiff to pay 1/3 of the costs of the proceedings and the defendant 2/3.
The plaintiff is entitled to the injunctive relief asserted against the defendant under Sections 3, 5a para. 2 sentence 1, § 8 UWG, because the defendant unfairly withheld material information within the meaning of § 5a para. 2 sentence 1 UWG, namely the absence of the safety membrane.
The fact that a PMU module has a hygienic seal constitutes material information for the public. On the websites of the plaintiff and the websites of third-party suppliers, some of which sold the plaintiff’s module under their own brands, reference is made to this feature, which the defendant also advertised in the module it offered.
In the present case, the defendant withheld information from consumers that its PMU modules did not have sufficient hygienic sealing. The inadequate sealing of the defendant’s modules is evident from the expert opinion obtained, which the Chamber sets out in more detail. There is a considerable risk of diseases being transmitted when using the defendant’s module.
Due to the almost identical appearance of the defendant’s PMU modules, the public will assume that they have the same safety standards as the plaintiff’s modules. This feature is also known to the public because the plaintiff’s products are widely used on the market. The defendant had not effectively disputed this. Against this background, a relevant misconception about essential features of the module within the meaning of Section 5a para. 2 UWG must be assumed.
The asserted ancillary claims are justified pursuant to Section 9 UWG and Section 242 BGB. The plaintiff also has a claim against the defendant for reimbursement of its warning costs in the amount of € 1,531.90 under Section 12 para. 1 sentence 2 UWG because the warning was justified. The claim for interest follows from §§ 286 para. 1, 288 BGB.
This judgment, to which reference is made pursuant to Section 540 para. 1 No. 1 ZPO is referred to, the defendant appeals. The Regional Court failed to take into account that the defendant never claimed the existence of a safety membrane in its module. However, the Regional Court obviously based its decision on this. It overlooked the differences in the respective form in which the modules were advertised. The plaintiff alone had advertised that no diseases could have been transmitted and that its module had a safety membrane. The defendant had not made such an advertisement. Nevertheless, the Regional Court treated the statements of the plaintiff and the defendant in the same way, which was incorrect.
However, the plaintiff was also not entitled to injunctive relief because the defendant had issued a declaration to cease and desist with regard to the specific statements it had made. Therefore, the risk of repetition had ceased to exist, which the Regional Court had not discussed.
It remains unclear on what legal basis the defendant could be obliged to provide information about the absence of the safety membrane, especially since the defendant did not advertise with a special safety concept and the defendant’s device was also sealed – albeit worse than the plaintiff’s device. For this reason, the defendant’s advertising statement was not false.
Contrary to the opinion of the Regional Court, the requirements of Section 5a para. 2 sentence 1 UWG were not fulfilled. Therefore, the subsequent claims do not exist either.
The Regional Court had not sufficiently weighed up all the circumstances of the individual case. Thus, the difference between the plaintiff’s and the defendant’s advertising had to be taken into account at this point. No identical device with identical advertising had been offered. The fact that the defendant’s appliance was hygienically sealed must also be taken into account.
The information about the sealing was also not essential. Here, too, the Regional Court had failed to carry out the necessary consideration.
It is an error of law that the Regional Court did not provide any information about the public understanding on which it based its decision. In this respect, it was necessary to focus on the user of the PMU modules and thus on a particular group of recipients. This group recognizes that the safety membrane is missing.
The defendant was also not obliged to provide the requested information because its module had also been sealed – at least for a certain period of time.
Finally, the plaintiff had to bear the costs of the legal dispute as a whole, since the action was unfounded. In any event, the proportion of costs to be borne by the defendant had been incorrectly determined.
The defendant claims,
the judgment of the Regional Court of Cologne dated 18.09.2018, ref. 33 O 102/15 and dismiss the action.
The plaintiff – in each case with the consent of the defendant – partially withdrew the request for information (request no. II) and the request for payment of the warning costs in the amount of 25% plus pro rata interest (request no. IV).
The applicant also requests the Court to
dismiss the appeal.
The plaintiff defends the contested judgment, insofar as it has not withdrawn the action, by repeating and expanding on its submissions at first instance.
II.
The defendant’s admissible appeal, in particular the appeal lodged in due form and time, is not well-founded after the plaintiff partially withdrew the action. The Regional Court rightly and correctly assumed that the claim for injunctive relief asserted by the plaintiff is justified.
1. contrary to the defendant’s view, the plaintiff’s claim for injunctive relief against the defendant arises from § 8 para. 1, 3 no. 1, §§ 3, 5a para. 1 UWG.
a) The plaintiff is a competitor pursuant to § 8 para. 3 no. 1, § 2 para. 1 No. 3 UWG to assert the claims brought in the proceedings. Both parties sell, among other things, instruments for tattooing permanent make-up, so that the defendant’s sales can hinder the plaintiff’s sales.
b) In the context of the advertising on which the dispute is based, the defendant offered the PMU modules shown in the claim under I, so that the defendant also carried out a commercial act within the meaning of § 2 para. 1 No. 1 UWG. This is undisputed.
c) The defendant’s commercial act was unfair pursuant to Sections 3, 5a para. 1 UWG, so that the plaintiff is entitled to injunctive relief pursuant to § 8 para. 1 sentence 1 UWG.
aa) Whether, in addition to the provision of § 5 para. 1 UWG, the provision of § 5a para. 2 sentence 1 UWG is applicable can be left open against this background. However, this appears doubtful because the defendant’s advertising is not directed at consumers. Rather, the advertising is primarily aimed at entrepreneurs who offer their customers a treatment with permanent make-up.
bb) Pursuant to § 5a para. 1 UWG, the concealment of a fact may also be misleading. When assessing whether this is the case, its significance for the commercial decision according to public opinion and the suitability of the concealment to influence the decision must be taken into account. This misleading effect can also be justified under EU law in relation to other market participants (see BGH, judgment of 16.11.2017 – I ZR 160/16, GRUR 2018, 429 – Knochenzement II)
According to the case law of the Federal Court of Justice, misleading concealment of facts is to be assumed if the concealed fact is of particular importance in the opinion of the public, so that the concealment is likely to mislead the public in a relevant manner, i.e. to influence its decision. This case law developed on § 5 para. 2 UWG 2004 is transferable to the now applicable Section 5a para. 1 UWG. Misleading by omission pursuant to Section 5a para. 1 UWG presupposes the breach of a duty of disclosure. However, the entrepreneur has no general duty to inform about facts that may be of importance for the business decision of the targeted public. He is not generally obliged to point out less advantageous or even negative characteristics of his own offer. The decisive factor for the question of an obligation to provide information is the extent to which the targeted public is dependent on being informed of the fact and the trader can reasonably be expected to provide clarification. If the market participant does not even think about the fact in question because it is not important for his business decision, there is no misleading by omission (see BGH, GRUR 2018, 429 – Knochenzement II, with numerous further references).
cc) According to these principles, the Regional Court rightly assumed that the information that the module marketed by the defendant does not have a safety membrane to prevent the backflow of liquids and impurities constitutes material information within the meaning of Section 5a para. 1 UWG. When deciding whether to purchase the defendant’s module, the relevant public will assume that the module marketed by the defendant has a safety membrane.
Contrary to the view of the defendant, the Regional Court rightly based its decision on this understanding of the traffic. Reference can be made to the correct statements in the contested decision.
Contrary to the view of the appeal, it is not relevant in this context that the defendant has not claimed the existence of a safety membrane and that the advertising of the plaintiff and the defendant show considerable differences. However, the defendant correctly assumes that the form of the advertising of the respective modules of the plaintiff and the defendant show considerable differences. For example, the plaintiff expressly emphasizes the safety membrane and its function, while the defendant merely describes the product in general terms as safe (cf. p. 38 of the file).
However, the Regional Court did not focus on this advertising by the defendant. Rather, the Regional Court assumed that the public would also assume for other reasons that the module marketed by the defendant – like the module marketed by the plaintiff – had a safety membrane.
The Regional Court assumed that the relevant public is familiar with the modules as manufactured by the plaintiff. The defendant does not challenge this factual finding of the Regional Court in its appeal. There are also no indications, either for legal or factual reasons, to doubt the factual finding. Furthermore, the Regional Court assumed that the public is aware that the module marketed by the plaintiff – irrespective of whether it is marketed under the plaintiff’s trademark or under the trademark of a third party – has a safety membrane that prevents liquid and germs from flowing back out of the module. The Regional Court also based this assumption on the manner in which the plaintiff advertised the product and the fact that the product was known in this form. The defendant does not challenge this assumption either. Nor is it otherwise objectionable.
Next, the Regional Court assumed that the public would also assume, based on the external identity of the parties’ modules, that the defendant’s module had the same safety standards as the plaintiff’s module, namely a safety membrane that prevents the liquids from flowing back.
This finding is therefore not based on the defendant’s advertising of its module, but on the assumption that the public is familiar with the plaintiff’s module and its safety standards and expects the same from a visually almost identical module.
Against this background, the Regional Court did not disregard the defendant’s advertising and in particular the differences to the plaintiff’s advertising. However, it based its factual findings with regard to the public’s understanding on the familiarity of the plaintiff’s standards and the assumption that the public would also assume an identical safety standard based on the visual appearance.
In this context, the relevant public is in particular the beauticians who purchase the defendant’s modules and then use them to treat their customers. This is not objectionable and is also assumed by the defendant. Since this group of persons – as explained above – is familiar with the products of the plaintiff and its partner companies, the relevant public will draw the conclusion that a safety membrane is present. This is based on the almost visually identical design of the products and the fact that there are no indications of a different design of the products. The defendant has also not presented any such indications.
The Senate can assess this understanding of the public itself because no particular expertise of the public addressed is to be expected and the Senate, as a Senate experienced in competition matters, is in a position to assess the understanding of the public, in particular of smaller cosmeticians, due to the many years of experience of the members of the Senate.
The targeted public is reliant on the information evident from the operative part. If it assumes a certain design on the basis of the visual appearance, it can only obtain knowledge of the actual different design of the modules by means of an explanatory notice. This knowledge is of immense importance for the cosmeticians addressed. This is because, as the expert opinion obtained by the Regional Court shows, there is a considerable risk with the defendant’s modules that liquid and thus germs will flow back into the handpiece, which cannot be disinfected. This poses a considerable risk to the health of all patients who are treated by the beautician in question.
The defendant cannot object that its module is also protected, even if this protection is weaker than that of the plaintiff’s module. This is because the expert has established – which the plaintiff also emphasizes – that a leakage has already occurred after 330 strokes, which can occur after a few seconds with a number of 50 to 150 strokes per second. The health risk for the respective customers is therefore immense, which, not least because of the threat of liability risks, also justifies a considerable interest on the part of the cosmeticians.
Due to the considerable health risk and the potential to mislead due to the visual identity, the target public is therefore dependent on the information in order to make an informed business decision.
Finally, the defendant can reasonably be expected to provide the information. In view of the great importance of the information and the fact that the deception is due to the visually almost identical design of the products, no interests of the defendant worthy of protection are apparent to refrain from providing the information.
d) The mandatory risk of infringement for the injunctive relief in the form of the risk of repetition is indicated by the first infringement. Contrary to the view of the defendant, the declaration to cease and desist submitted by it does not lead to the risk of repetition ceasing to exist.
The defendant has undertaken to refrain from making the statement “Needle modules are hygienically packaged. This means that no liquid can flow back into the pen.” (cf. p. 60 of the file). Even if the defendant refrains from making this specific statement in its advertising in the future, it can continue to market the module it sells without the reference shown in the operative part of the contested decision. According to the above explanations, the risk of deception exists precisely in the distribution without the reference, without the advertising statement, which the defendant has undertaken to refrain from, being relevant.
2. insofar as the defendant objects to the claim for information, there is no need for a decision since the plaintiff has withdrawn the action in this respect with the defendant’s consent.
3. the claim for damages exists because the unlawful advertising may also have caused damage that can only be quantified by taking into account the scope of the advertising. The question of how the damage can be calculated is not relevant to the claim for a declaratory judgment.
4. 75% of the claim for payment of the warning costs is justified, so that the appeal is unsuccessful following the partial withdrawal. The warning was justifiably directed against two types of conduct, each of which was to be refrained from. However, the warning went too far:
The warning was directed against the use of the statement “Needle modules are hygienically sealed. This means that no liquid can flow back into the pen”. In this respect, the claim for injunctive relief asserted in the warning and the claim for payment of the warning costs existed.
Insofar as the warning was directed against a violation of Section 4 No. 9 UWG aF, the warning was too far-reaching, however, because there was no claim in this respect due to the lack of competitive character of the plaintiff’s products. There was only a claim in relation to misleading information, which, however, was already the subject of the warning, which was expressly based on Section 5 para. 1 UWG. The warning was partially justified here, so that the costs are to be reimbursed proportionately (see Bornkamm in Köhler/Bornkamm/Feddersen, UWG, 37th edition, § 12 para. 1.122). The portion of the warning that was unsuccessful is estimated at 25%.
5. the decision on costs with regard to the costs of the first instance is not to be amended. The Regional Court calculated the costs according to the additional cost method, which is not objectionable. Due to the degression, this leads to the corresponding quota being charged to the defendant.
The costs of the appeal are to be borne in full by the defendant, Section 97 ZPO. Insofar as the plaintiff has partially withdrawn the action, this does not lead to a different result according to the legal concept of § 92 Para. 2 No. 1 ZPO does not lead to a different result.
6 The appeal is not admissible. The requirements of section 543 para. 2 ZPO are not met. The case is neither of fundamental importance nor is the appeal admissible for the further development of the law or to ensure uniform case law. Rather, the decision is based on the aforementioned case law of the Federal Court of Justice and an assessment of the individual case.
4. the amount in dispute for the appeal proceedings is set at € 25,000.