In its judgment of 30 July 2020 (docket no. 29 U 706/19), the OLG Munich (Higher Regional Court of Munich) held that the one-month time limit for bringing an action for restitution does not commence with the service of the decision, but already upon the pronouncement of the last-instance nullity decision in the presence of the infringement defendant and restitution plaintiff.
In the context of an action for restitution, the parties dispute the validity of a trademark infringement judgment by the Regional Court Munich I (LG München I), which awarded the restitution defendant claims for trademark infringement against the restitution plaintiff. The restitution defendant is also the owner of another identical German word mark. By its decision on 18 October 2018, the BPatG dismissed the restitution defendant’s appeal against the partial cancellation of this trademark by the DPMA. The BPatG’s decision was pronounced following the oral proceedings on 18 October 2018. The restitution plaintiff was present at the pronouncement. The BPatG served the decision on 28 January 2019 and the restitution action was filed on 15 February 2019.
The restitution defendant is of the opinion that the action is inadmissible because the restitution plaintiff had already gained knowledge of the alleged reason for restitution through the BPatG’s pronouncement of the immediately final and binding decision on 18 October 2018.
The OLG Munich endorsed the opinion of the restitution defendant. Pursuant to Sections 586 (1), (2) sentence 1, 580 no. 6 of the German Code of Civil Procedure, the action for restitution must be brought before expiry of the emergency period of one month, which commences on the date on which the party became aware of the reason for restitution, but not before the challenged judgment had become final. Provided that it concerns a decision of the court of last instance, the one-month period consequently begins immediately with the pronouncement of the judgement. Since the restitution plaintiff was present at the pronouncement, they already had knowledge of the circumstances justifying a reopening of the case at the time of the pronouncement. The date on which the decision was served is therefore irrelevant, since the decision became final immediately upon its pronouncement pursuant to Sec. 79 (1) sentence 1 German Trade Mark Act, in the absence of the admissibility of an appeal under Sec. 83 Trade Mark Act or one of the serious procedural defects listed in Sec. 83 (3) Trade Mark Act.
Thus, in such cases, infringement defendants are strongly advised not to wait for service of the nullity decision before filing the restitution action.