In matters of infringement of a cease-and-desist order the question often arises of whether this new action still falls under the wording of an existing injunction, or rather forms the grounds for a new infringement, which can then be countered by a warning and/or an application for the issue of an interim injunction.
According to established case law, the effect of a final declaration extends as far as the scope of the prohibition of a cease-and-desist order, which the obligor has recognised as a definitive ruling. The prohibition of an injunction extends beyond actions identical to those forbidden to include variations which are in essence similar and in which the characteristic features of the specific form of infringement are expressed (established case law, cf. GRUR 2010, 855 - Folienrollos (Roller blinds), margin note 17).
The Federal Court of Justice distanced itself from this case law in a decision of 7 April 2011 (GRUR 2011, 742, file ref.: I ZR 34/09 - Leistungspakete im Preisvergleich (price comparisons of service packages)). The facts were as follows: the defendant, a provider of Internet and cable TV services advertised in the advertising supplement of a regional newspaper its offer of a service package (consisting of an Internet connection, an Internet flat rate, a telephone connection and a telephone flat rate), stating in order to attract attention that it was "50% cheaper" than specified comparable offers from purely Internet service providers . In much less conspicuous small print at the side it stated that the offer required a cable TV connection to be applied for first, for which further TV connection fees would be charged. The advertised price also did not include the monthly fee for using the cable connection.
In a preceding parallel case, the claimant had already successfully put a stop to another advert by the defendant, by which the defendant was prohibited from advertising, in a specific manner, telephone and/or Internet services implemented on the basis of a paid-for "iesy cable connection", if carried out as in the Annexes specifically referred to.
Two of the disputed issues in this legal dispute were whether the new claim was obstructed by the impediment of the conflicting res judicata, and whether the claim lacked a right of action. Both were rejected by the FCJ.
The FCJ referred to the fact that the new advert was not covered by the substance of the preceding, parallel injunction case before the Frankfurt...