Munich/Hamburg, 12 December 2018/2 October 2019: As intervenient, the Italian producer of hair cosmetics H.S.A. Hair Styling Applications S.p.A. based in Bisuschio, Italy, has defended the request for preliminary injunction against dm-Drogeriemarkt GmbH & Co. KG on the basis of a registered utility model at the Regional Court of Hamburg. With the preliminary injunction, IP Full Asset Ltd., Hong Kong, proprietor of the utility model DE 20 2017 004 939 U1 for a hair-strengthening agent, wanted to stop distribution of the H.S.A. product, a kit of two formulations for the reduction of hair damage caused by chemical treatment such as dying or bleaching (ref.: 327 O 315/18).
H.S.A. entered the inunction proceedings against dm group as intervenient and at the same time filed a cancellation request against the utility model in dispute at the German Patent and Trademark Office.
In the Oral Proceedings on 1 November 2018, the Chamber with presiding judge Zöllner stated that the issuance of a preliminary injunction on the basis of an unexamined utility model was basically possible. However, the presence of an unambiguous case of infringement as well as a most probable validity of the protective right is a prerequisite thereof.
In the present case, the Chamber negated a clear act of infringement, inter alia since the main claim of the utility model contained a functional feature, which would have required interpretation and gone beyond the scope of the proceedings. The Chamber, however, particularly emphasized the doubt about the validity of the utility model, which arose from the reasoning of the cancellation request filed by H.S.A. In the cancellation request, H.S.A. had without a gap shown an obvious prior use of the utility model in Germany. The Chamber thus doubted the novelty of the utility model. With the Chamber’s decision of 15 November 2018, the request for preliminary injunction was rejected.
The first instance decision became legally valid
In the Oral Proceedings on 12 September 2019, IP Full Asset has withdrawn the appeal against the decision by the Regional Court of Hamburg. The Federal High Court has not indicated any reasons that the first instance decision was erroneous. Thus, a substantial decision will not be issued and the first instance decision of 15 November 2018, according to which the request for preliminary injunction was rejected, becomes legally valid.
In the injunction and cancellation proceedings, H.S.A. is advised and represented by a team of patent attorneys and attorneys at law of the Munich patent law firm Weickmann & Weickmann under the lead of the partners Dr Hans Weickmann (patent law) and Dr Udo Herberth. dm group was represented by Kuentzle Rechtsanwälte in Karlsruhe and initially HFP Patentanwälte – Herzog Fiesser & Partner in Munich. Patent attorney Dr. Gerold Fiesser is now part of Mathys & Squire LLP. The opposing party was advised by Dr. Meyer-Dulheuer & Partners in Frankfurt.
Representatives of H.S.A. Hair Styling Applications S.p.A.
Weickmann & Weickmann PartmbB, München
Dr. Hans Weickmann, Patentanwalt, Partner (Federführung)
Dr. Udo Herberth, Rechtsanwalt, Partner
Representatives of dm-Drogeriemarkt GmbH & Co. KG
Kuentzle Rechtsanwälte Partnerschaft mbB, Karlsruhe
Dr. Oliver Bludovsky, Rechtsanwalt
Mathys & Squire LLP, München
Dr. Gerold Fiesser, Patentanwalt
Representatives IP Full Asset Ltd.
Dr. Meyer-Dulheuer & Partners LLP, Frankfurt am Main
A. Hempel, Rechtsanwältin
Dr. Gilles Reiss-Hürlimann, Patentanwalt
Dipl.-Chem., Dr. rer. nat. Hans Weickmann, Patent Attorney, Partner
Weickmann & Weickmann, Patent- und Rechtsanwälte PartmbB, München
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Dr. Udo W. Herberth, LL.M. (Univ. of Georgia, USA), Attorney at Law, Partner Weickmann & Weickmann, Patent- und Rechtsanwälte PartmbB, München Tel.: +49 (89) 455630 | E-Mail: firstname.lastname@example.org
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