No infringement through exposition abroad

The Austrian Supreme Court (OGH 4 Ob 140/13m) had to deal with the question whether the offer for sale at international expositions in foreign countries (Germany, Turkey) is an infringement of an Austrian patent.

The Supreme Court reasoned that it follows from the principle of territoriality in IP law that an IP right can only be infringed in the territory of that state in which the specific IP right is valid. But this does not exclude that certain acts done abroad cannot infringe an IP right at home on the basis of their effects at home.

It is established in trade mark law that an advertisement in the internet also targeting customers at home will be an infringement. But this cannot be transferred indiscriminately on other cases since it is a characteristic of the internet that it can also be acceded at home. But also this alone does not suffice for trade mark infringement. The targeting of the home country needs to contain an additional referral to that home country in order to be infringing.

Offers at exhibitions abroad lack the accessibility from home as objective basis for an infringement. It is therefore already a question whether the targeting of the home country for itself, e.g. by directly offering import into the home country, is an infringement by offering from the viewpoint of Austrian IP law or is at all relevant from the viewpoint of Austrian national law.

Although this is an important legal question, it was not relevant for the present case. The lower courts could not ascertain that the defendants have done any acts specifically directed to Austria at these expositions. The mere possibility, however, that also customers from countries where the patent is in force would inform themselves on the allegedly infringing objects accounts for a far less (potential) relation to the home country than the accessibility of the internet. This alone can therefore not be seen as an infringement of an Austrian patent.

Facit: If the patentee had wanted to hinder the offering of infringing goods also at exhibitions abroad because of their potential effect on Austrian customers, he should have sought national or European patent protection also in these countries.

DI Helmut Sonn