Go to Database Directory || Go to CISG Table of Contents

Reproduced with the permission of 4 Vindobona Journal of International Commercial Law and Arbitration, Issue 1 (2000) 30-61

Warranty for Intellectual Property Rights
in the International Sale of Goods

Christian Rauda and Guillaume Etier [*]

The Convention on Contracts for the International Sale of Goods (CISG) provides in Art. 42 a rule for the seller's liability for a third party's intellectual property rights. Considering the vast number of patents and trademarks "linked" to goods being the subject of international transactions, it is surprising that amongst the over five hundred published decisions regarding the CISG, only two cases deal with Art. 42. A close examination of Art. 42 CISG leads to the conclusion that this provision does not meet the requirements for a rule governing the warranty for third parties' intellectual property rights. A rewritten version of an Art 42 CISG de lege ferenda is proposed at the end of this article.

Introduction
Liability under Art. 42 CISG

Limitations of the seller's warranty Warranty in the country of resale or use Warranty in the seller's country
Exclusion of the seller's warranty


INTRODUCTION

A German technology firm S, sells computers bearing the trademark Powerplay to the Swiss enterprise B. S does not know that Powerplay is the trade name of the widely known British firm, T, which did not register the name in Switzerland however has been using it there for a long time already.

After having discovered T's right, B asks S to take the merchandise back, although T does not make a claim against B nor S. Quid?

An incident of this kind seems likely to happen often if one bears in mind the vast number of patents and trademarks "linked" to goods being the subject of international transactions.[1]

Surprisingly, amongst the over five hundred published decisions [2] which were made on the basis of the Convention on Contracts for the International Sale of Goods [page 30] (CISG), only two cases deal with the seller's responsibility for third party intellectual property rights according to Art. 42. Why are there so few decisions on this subject?

Firstly, this analysis concerns itself with the definition of industrial and intellectual property rights. Secondly, the conditions for invoking Art. 42 CISG and its objective and subjective limitations are examined. Finally, situations when the seller's liability is excluded are analysed. In addressing these issues, it will be explained why Art. 42 CISG is so rarely applied and which modifications ought to be made. As a conclusion of this article, an amended version of Art. 42 CISG is suggested.

As in most of the legal systems in the world,[3] under the CISG the seller has the obligation to deliver the goods in a way that no third party may limit the buyer in using or selling the goods by claiming a right against him.[4]

Before being incorporated into the CISG in 1980, a warranty for third party rights in the international sale of goods was contained in Art. 52 of the Uniform Law of International Sales (ULIS). In the CISG, there are two different types of liability for third party rights: a general warranty (Art. 41 CISG), in the case where a third party claims a property right or any other right not mentioned in Art. 42 CISG, and the special warranty for third party intellectual property rights. The latter is much more restricted than the warranties of Art. 52 ULIS [5] and Art. 41 CISG.[page 31]

LIABILITY UNDER ART. 42 CISG

A Third Party's Intellectual Property Right

Definition

B would have a claim against S if S had an obligation to deliver the computers under a different trademark. According to Art. 42 CISG, the seller has to deliver the goods free from any rights or claims based on industrial property or other intellectual property rights. It is therefore necessary to find out if the trade name Powerplay falls within this definition.

Neither the notion of industrial property or intellectual property is defined in the CISG. In contrast to the project of 1978 which contained the wording industrial or intellectual property (Art. 40), the final version shows the formulation "industrial or other intellectual property".[6]

Hence, the CISG underlines that industrial property is subordinate to intellectual property. The formulation "industrial property" -- although being superfluous in the strict sense -- was employed for reasons of clarity due to the fact that in some countries the notion of intellectual property is not yet known.[7] Thus, it suffices to provide a definition of intellectual property rights.

During the process of elaborating the CISG, the definition of intellectual property was not discussed.

According to Art. 7(1) CISG, interpretations of Art. 42 CISG must take the international character of the Convention into account.

However, this gives rise to one problem: Due to the fact that intellectual property rights are on principle of national character (principle of territoriality), the legislator of each country has the power to choose the classification of a right [page 32] as, e.g., a patent or a copyright. Consequently, intellectual property systems vary considerably from state to state.[8]

Nevertheless, this statement requires to be moderated as a result of the multiple international treaties in the domain which play an important role in the light of Art. 7(1) CISG: The Paris Convention for the Protection of Industrial Property (1967), the Universal Convention of Copyright (1971) and the Berne Convention for the Protection of Literary and Artistic Works (1971).

Moreover, the Secretariat's Commentary refers to Art. 2(viii) of the Convention of the World Intellectual Property Organization of 14 July 1967 (WIPO).[9] This rule is very important for finding the definition of intellectual property law in the sense of the CISG for the words "industrial or other intellectual property". These terms were introduced by the Finnish deputy during the deliberations on Art. 42 CISG, are rooted in a proposition of the WIPO on the project of Art. 42 CISG (at the time being Art. 40 of the New York project).[10]

The four Conventions mentioned above codify the international community's consensus to intellectual property rights. The WIPO's definition is the most extensive definition comprising all of the other three treaties' notions.

Hence, intellectual property covers all the rights which owe their existence to an activity of human mind in the fields of industry, science, literature and art (Art. 2(viii) of the WIPO Convention).

In order to establish whether the WIPO's definition should be used within the framework of Art. 42 CISG, it is necessary to examine its compatibility with the article's function.

On the one hand, Art. 42 CISG aims at guaranteeing the buyer the unconditional use of the merchandise.[11] It is therefore possible that similar rights which are not comprised in the WIPO's definition require to be part of the definition for [page 33] intellectual property rights within the context of Art. 42 CISG. Examples of these are names and personality rights.

On the other hand, in limiting the seller's responsibility, the United Nations Commission on International Trade Law (UNCITRAL) stresses that the seller must be able to apprehend the scope of their responsibility.[12] Thus, it is foreseeable that restrictions could be required, e.g., that the third party's right should be registered in order to set off the seller's liability.

Names and personality rights

Does the definition of intellectual property rights also comprise names and personality rights? This is doubtful [13] due to the fact that these rights do not protect an intellectual activity (with the exception of the trade name which is already contained in the WIPO's definition).

The question of how to differentiate between the general legal defects (Art. 41 CISG) and defects bound with intellectual property (Art. 42 CISG) has been very controversial.[14] The Geneva project work group (1976) decided not to create a different rule for the responsibility for defects founded on intangible assets (Art. 7(2) of the Geneva project).[15] In 1977, in the Vienna project (Art. 25), the concept of differentiating between a general responsibility and the special case of eviction was considered again.[16] In 1980, a Nigerian request to create a uniform rule was unsuccessful.[17]

In the final version of the CISG, the rules governing the general warranty (Art. 41 CISG) are strictly separated from the warranty for intellectual property rights (Art. 42 CISG). This separation is expressly indicated in the second phrase of [page 34] Art. 41 I CISG. According to the principle singularia non sunt extendenda, Art. 42 CISG must be interpreted restrictively. Hence, names and personality rights do not fall under the notion of intellectual property in the sense of Art. 42 CISG [18] As Art. 42 CISG is the more specific rule, an analogy is not possible [19] because the seller's liability for names and personality rights is already contained in the general rule of Art. 41 CISG.

Limitation of the WIPO's definition by formal criteria

The trade name Powerplay is a result of an intellectual activity. Hence, this name which belongs to T is on principle an intellectual property right in the sense of Art. 42 CISG. However, is the seller liable, although Powerplay is not registered in Switzerland?

Despite the fact that the tenor of Art. 42 CISG does not reveal any limitations, the history of this rule shows that the UNCITRAL's mission was to restrict the seller's responsibility.[20] Hence, we may consider that the seller's warranty is limited to registered rights. However, this reasoning is not prudent; in fact, the seller's liability for non-registered rights is, compared to the rights which are registered, already restricted regarding the duties which are incumbent on them. Consequently, the registration is not a condition for invoking Art. 42 CISG.

The level of creativity cannot serve as a criterion either, since in several parts of the world, intellectual property rights are granted without the level of creativity having been examined.[21] Only through the course of litigation it is clear whether the level was sufficient or not. Before a legal procedure, one could never be sure whether, e.g., a utility model falls within the definition of intellectual property in the sense of Art. 42 CISG or not.[page 35]

Consequently, the trade name Powerplay which is not registered, is contained within the definition of intellectual property in the context of Art. 42 CISG.

Therefore, intellectual property rights within the framework of the CISG (Art. 42) can be defined as being:

All rights protecting an intellectual activity which a pecuniary value, which are attached to a good and which are able to infringe the use or the resale of the merchandise.[22] Unfair competition rights such as prohibiting the exploitation of illegally obtained know-how [23] are also part of the definition.[24]

There are no formal requirements, which means that the seller is also liable for rights which have not been registered.[25] Names, personality rights and similar rights are not -- not even by analogy -- comprised in the field of application of Art. 42 CISG.

Claims

Does the third party have to claim its right?

Does the fact that T has not invoked its right exclude the seller's warranty?

According to the wording of Art. 42 CISG, the goods have to be free from any "right or claim" of a third party. Reading this rule, one is tempted to believe that the objective existence of a right suffices to set off the liability. Regarding the [page 36] aim of Art. 42 CISG, one may however take into account that the term "right" suggests that somebody invokes the same.[26]

In fact, a warranty is not necessary in the case where nobody invokes their rights, since in this hypothesis the buyer is not restricted in their freedom to dispose of the goods.[27] If, after a certain time, the third party decides to invoke their right, the buyer could still file a [com]plaint against seller asking for damages.[28] Hence, a priori, a liability for rights which have not been invoked does not seem reasonable.

Nevertheless, the hypothetical [com]plaint of a third party is like the Sword of Damocles hanging over the buyer's head. One cannot demand that they modify the goods knowing that the third party could file a [com]plaint against them, obliging them to destruct the altered merchandise.[29]

Moreover, considering the risk of the seller's insolvency, it is evident that the buyer cannot be expected to bear the burden that the third party may or may not invoke their right sometime in the future. Hence, the fact that an intellectual property right exists suffices for being a limitation to the buyer for disposing of the goods. Therefore, it is justified that the seller is liable in such a case, even if the third party does not make a claim.[30]

The existence of T's right implies a restriction of B's property right. S is therefore responsible for the merchandise being free from third party rights even though T does not invoke its right.

Frivolous claims

The Swiss vendor S sells refrigerators to B, an American firm. T, a competitor of B, intends to implicate the latter in a costly procedure by [page 37] means of claiming to be the rightful owner of a patent concerning the refrigerators which is not the case. May A invoke Art. 42 CISG against his contracting party?

Does this unfounded claim fall within the field of application of Art. 42 CISG?

In the case where the third party makes a claim which lacks any legal base, the scope of the seller's responsibility is controversial. The terms droit and prétention (French version) and derecho and pretensión (Spanish version) standing next to each other disclose that the second of the terms does not suggest legal security,[31] however represents a kind of request. Consequently, the seller would be liable even for unfounded claims or claims which only aim at damaging the buyer.[32] For these reasons, the Secretariat's Commentary opposes such a great responsibility.

How can this problem be solved? To exclude liability in these cases [33] it could be demanded that the third party's claim has to have a minimum of seriousness [34] or that the third party must act in good faith.[35]

Nevertheless, there are many reasons leading to the conclusion that even frivolous claims suffice to set off the warranty of Art. 42 CISG.[36] The aim of this article is to avoid the buyer having to face a third party's claim.[37] Fighting [page 38] against any type of claim, unfounded or not, is costly and time-consuming, especially if these claims are made in court.[38]

In practice, it is difficult for the buyer to evaluate if a claim is frivolous or not and if they should or should not stop selling or working on the goods. The same situation occurs if the third party makes a claim based on a foreign legal system.[39] For these reasons, one may demand the seller to take care of the defence. This would be relatively easy for him considering that, in most cases, they know more about the goods than the buyer.[40]

Consequently, the vendor is liable for any third party claim.

One cannot expect B to be confronted with T's frivolous claim. Hence, B can successfully invoke Art. 42 CISG, in the case where S knew or could not have been unaware of this claim.

Infringement of the third party's right by the use of the goods

Protection of a fabrication process

S and B conclude a contract concerning the sale of a machine. After the delivery, T (who is owner of a patent covering the machine's working process ) approaches B and makes a claim. B believes that S is liable. Quid?

According to Art. 42 CISG, the buyer should have the exclusive right to possess and to use the merchandise in any possible way.[41] This is not the case if the third party has the possibility of prohibiting the use of the supplied goods by the means of invoking their patent which covers the process of fabrication. A [page 39] machine which works according to such a patented process is of no value to the buyer. Therefore, the seller is liable in these cases.[42]

T has the right to prevent B from using the merchandise. Hence, B is "disturbed" in his use of the machine. Consequently, S is responsible according to Art. 42 CISG for the patent weighing upon the machine.

Warranty for products derived from the goods sold?

A intends to manufacture the drug Alvacid, whose chemical formula is kept secret. In order to realise this project, A buys from S a machine which is not only capable of manufacturing this drug, but also other pharmaceutical products. Between the conclusion of the contract and the delivery of the machine, T becomes the holder of a patent for the formula of Alvacid.

Is S liable?

According to the formulation of Art. 42 CISG the goods have to be delivered free from any intellectual property right. This may suggest that only the goods themselves and not any products which may be derived from these goods must be delivered free from any rights.[43] Indeed the seller owes the buyer other than the quiet possession also the undisturbed use of the goods. However, it is necessary but we have to take into account that the buyer alone decides how they employ the goods.[44] In order to avoid an unreasonable scope for the seller's liability, there is in some cases a strong need for restricting the warranty.

If a machine can only manufacture products which are protected by intellectual property rights, the seller is always liable, assuming, of course, that they knew or could have been aware of the right,[45] regarding the common use of the machine.

If the buyer has access to use the machine either in an infringing or in a non-infringing way, it must be established whether the seller can -- on the basis of the contract -- foresee that the goods will be used in an infringing way.[46] The seller [page 40] is also liable for any type of use if the buyer informed them that the machine will be used in a certain manner.

Since S did not know that B intended to manufacture Alvacid and the machine is also capable of manufacturing other pharmaceutical products which are not protected, S is not liable.

Decisive Moment for the Warranty

S sells B printers which work according to a new impression procedure which S keeps secret. The delivery of the goods will be in 6 months. Before the conclusion of the contract, S learns that T seeks to file a patent for the special impression process, but does not inform B. T becomes the rightful holder of the patent before S delivers the goods. T files a claim against B with the aim of preventing them from using the printers. Is S liable for an intellectual property right which emerged after the conclusion of the contract between S and B?

Conclusion of the contract or delivery?

One may take the view that the seller's warranty commences at the moment of the conclusion of the contract.[47] It seems unfair that the seller must bear the risk of a third party acquiring a right between the conclusion of the contract and the delivery.

However, if this opinion is followed, the seller would owe a warranty for third party rights which lose their effect between the conclusion of the contract and the delivery, e.g., by reaching the end of their period of protection or by declaration of invalidity. The seller would therefore be obliged to be liable although the buyer received "proper" goods.[48] Moreover, it may happen that the seller knows that a third party is going to acquire a right between the conclusion of the contract and the delivery. As the third party may approach the buyer, it suffices that they made an application for an intellectual property right, even if the right [page 41] is granted after the delivery of the goods.[49] There are no reasons to release the seller from his liability in these cases. Hence, the reasoning which holds that the warranty commences at the moment of the conclusion of the contract, seems erroneous.

Thus, the time of delivery is the moment to be considered when examining if any third party's intellectual property rights exist.[50] This conclusion also corresponds with the wording of Art. 42 CISG according to which the seller has the obligation to deliver the merchandise free from any rights. This becomes clear if the logic of Art. 42 CISG is considered, since between the conclusion of the contract and the delivery there is still time for the seller to neutralise third party's rights, e.g., by obtaining a licence from the right holder or by filing a claim of invalidity.[51]

The seller is therefore liable for all the rights which exist at the time of delivery.

T obtained the patent before the delivery. Hence, S is liable.

Liability for claims made after the delivery

Does the seller also guarantee for claims made after the delivery of the goods? In most cases, a third party is not aware of an infringement of its rights before the delivery of the merchandise. Hence, most claims are made after the delivery.

Two interests must be considered: the buyer's intent to use the goods in a certain way and the seller's interest not to answer to claims without a time limitation. Weighing these contradictory interests, one may find a solution which consists of imposing on the seller a warranty for claims whose foundations can be found before the delivery.[52] Furthermore, if one did not limit the liability in some way, the seller could never be sure if they had fulfilled their obligation to deliver the goods free from any rights.[53] Hence, according to this proposition, after the [page 42] delivery the seller would only be liable for such claims which could have been made before the delivery.[54]

One problem occurs nevertheless: What about the unfounded claims? Applying the criteria of foundation mentioned above, the seller would never be liable for such claims made after the delivery. However, excluding the responsibility for the most of the unfounded claims contradicts the CISG's aim to also impose a liability on the seller in these cases (see above p. 37). Hence, the solution proposed above is not adequate.

The seller has to answer to all claims whether or not they have a foundation and whether or not they are made before or after the delivery of the goods. However, in most cases, the seller will not know the existence of such claims at the time of the conclusion of the contract which result in the fact that his responsibility is excluded.

LIMITATIONS OF THE SELLER'S WARRANTY

Art. 42 CISG restricts the seller's warranty by two means: First of all, the seller should have known of third party's intellectual property rights and secondly, the seller is only liable if those rights are founded on the law of a State having a certain link with the sale, i.e., State expressly stated in paragraph 1(a) and (b) of Art. 42 CISG.

Contrary to internal sales, in the case of an international sale transaction, it is very difficult to know if something is charged with an intellectual property right. In certain States, the registers are still in a stage of development and it is nearly impossible to know the legal situation around the globe. Furthermore, contrary to real rights, intellectual property rights can arise everywhere at different moments. Intellectual property rights are governed by the principles of territoriality and ubiquity. Consequently, each country may issue intellectual property rights, without them having the slightest extraterritorial effect. From [page 43] these factors flows the uncertainty of immaterial rights which leads to the seller's legitimate interest to limit their warranty.[55]

It is therefore necessary to intervene and to limit the seller's liability from the point of view of the seller's knowledge and from the perspective of the link that the sale has with certain States.

Subjective limitations

Considering the uncertainty of intellectual property rights mentioned above, the CISG limits the seller's liability to the rights or claims of a third party, of which at the time of the conclusion of the contract, the seller knew or could not have been unaware . . . (Art. 42 (1) CISG). This sentence at first sight seems to pose some interpretation problems: exactly what is the intended meaning of the term "could not have been unaware"? Does the seller have a subordinate obligation to inquire for any rights in the State contemplated by the parties?

A seller S, a small trader established in Switzerland, sells shoes of the trademark SNIKE to B who is established in China. SNIKE is registered in the Chinese trademark register. S did not make any efforts to check the register for possible collisions.

S did not know anything of the registration of SNIKE. May S argue that they could remain unaware of the trademark's existence, implying that S was not subject to check the Chinese registry? Quid if S is a professional of the Chinese sportswear trade?

To know and not to be allowed to be unaware: a tautology?

In an attempt to understand these terms that quite obviously have convergent meanings, we must first of all refer to their common meaning. The first of these terms, knowledge, does not summon any particular explanation. Therefore, if the seller knows that a right exists in the contemplated country, they can alert the buyer to this fact and avoid all problems.[page 44]

A lot of discussion, however, evolves around the expression "could not have been unaware": even though most authors agree that it is not a pleonasm of knowledge, they interpret it differently. Only the learned author Shinn seems to think that its signification is tautological.[56] This author invokes Great Britain's interpretative declaration that suggested erasing these terms from the Convention in support of the argument. In contrast the majority of other authors interpret the term as having a different meaning as "knowledge"; One author considers the term as an alternative (subjective) way for the buyer to prove the seller's fault (contrasting the "objective" way of proving the knowledge),[57] another author interprets "could not have been unaware" an element of fault,[58] and for another author the term means "gross negligence".[59]

The three latter authors go in the right direction without deepening the explanation of their arguments as much as they could have: indeed, "could not have been unaware" is a means of proof and perhaps it also includes an element of fault, even negligence; in our opinion it implies even more, i.e., an action: it is a latent cognisance, something one could know if one was to undertake an activity: while the knowledge in the strict sense calls upon what one knows, "could not have been unaware" requires some work. This duty consists of inquiring a legal situation and informing the buyer of what was discovered. This is necessary to ensure a contract between the parties of good faith (Art. 8(2) CISG). The inquiry is therefore a subordinate obligation. Moreover, why would the drafters of the CISG have used two different expressions if their aim was to express the same thing? Consequently, it seems evident that the two terms do not overlap.

The seller's subordinate obligations

The subordinate obligations mentioned above are essential.[60] If they did not exist, the seller could always claim that they did not know of the intellectual [page 45] property right in question; without an obligation or moral duty to inquire, Art. 42 CISG would lose all its legal impact.

However, in contrast to the authors' point of view, a few dissident opinions deny the existence of such obligations supporting their arguments with the different linguistic versions and the history of the CISG.[61] It is true that neither the Spanish no hubiera podido ignorar nor the English (could not have been unaware) nor the French ne pas pouvoir ignorer version help us to shed light upon this problem: these texts use vague expressions and none imposes any particular obligation, however, the interpretation should not end at the words' literal meaning.

The seller's interest to make inquiries is actually enormous as they risk being "punished" with damages that can amount to very high sums. It is for this reason that one must go further and impose an obligation on the buyer in particular cases. The interests of the two protagonists (that of the buyer wanting a clear legal situation in the country contemplated and that of the seller not to be challenged as warrantor) may lead to an obligation for the seller and thus the seller could only avoid this in some particular situations.

Do these obligations depend on the identity of the party who takes the initiative of the contract? No, this would imply that the buyer is equally bound by these subordinate obligations.[62] It seems unthinkable to impose such a task on the buyer because otherwise, in most cases, the seller's liability would be excluded for they could have been unaware of the eviction of their co-contractor.

In brief, only the seller will assume these duties; otherwise, Art. 42 CISG would lose all significance.

Scope of the seller's obligation to make inquiries

The scope of the seller's duties must be further specified as all sellers do not have the same extent of obligation. The scope depends on whether and how the intellectual property right is published in the States contemplated, on the seller's [page 46] personal qualities (professional or small trader) and on the country where the goods will be resold or used.

The case of published rights

In most States, patents and trademarks are subject to registration. They are therefore subject to publicity providing the public with information about existing intangible rights. In the case of a third party right being published, the seller's obligation to inquire is therefore unconditional: they have to consult the registers in the countries contemplated. Although the seller may rely on the information received from their contractual representative, they cannot escape this duty.[63]

S should therefore have checked if the trademark SNIKE was registered in China. The fact that the language in this country is different to their own is not relevant. S could have mandated a professional (a trader who has a good knowledge in this scope or a lawyer) to fulfil his duty.

Do all sellers have the same kind of duty? Definitely not: if the seller is a professional in the field, he shall have to carry out extensive researches as to the existence of intellectual property rights, whatever the contemplated country may be. In the converse case, all will depend on the circumstances. In the case of a small trader, one cannot demand a similar perseverance as to somebody who is used to international trade in a large scale. Moreover, the duty is contingent upon the contemplated country: in countries bordering the seller's country, the requirements will more rigorous than in contemplated States which are at the other end of the world or where the research methods are more difficult. Of course, the "era of the Internet" facilitates the seller's research. In the future, there will therefore not be any difference anymore between neighbouring countries and the rest of the world. However, to date the Internet is not widespread enough throughout the globe to do without this difference.

If S is a professional of the Chinese market, he will be unconditionally required to inquire for the existence of a protection of the trademark SNIKE in China and to obtain accurate information. If S is a small trader, we can at the most ask him to call a lawyer or the SNIKE representative in Switzerland. If he fulfils this duty, he could have been unaware of the trademark. He has, however, the obligation to inform B as to his findings. [page 47]

The case of rights which are not published or not publishable

All authors in favour of the obligation to inquire deny the same for intangible rights that have not been registered, such as the know-how, packaging or royalties.[64]

It seems obvious to release the seller from this obligation when the rights are not publishable. It would actually be paradoxical to hold the seller responsible if they do not carry out their duty, whereas if they had done so, they would not have found anything in the national registers.

However, can we be so categorical and exclude all duties of inquiry if the rights have not been published, but may have been? In general, this seems too much to demand the seller to obtain information in this case. Actually, all reasoning would be made in a retrospective manner: in the case of legal proceedings between the two parties, it is examined whether an intellectual property right is registered or not; if a right is published, one could conclude that the seller had an obligation to inquire and therefore assumes liability had the seller not done so. In the converse case of a non-published right, the seller would not have had the same duty and therefore would not be held liable.

This is the rule for all countries because the registration rules may change from one State to another and therefore, a right not published here could be registered elsewhere. (For example: US copyrights exist without publication, but benefit from a better protection if they are subject to registration as this is a condition to act when claiming damages).[65]

The obligation to inform the buyer

The seller's obligation to inform the buyer regarding rights born prior to the conclusion of the contract flows from his duty to inquire.

Whatever the qualities of the seller or the contemplated country are, the seller must always inform their co-contractor of their findings. Of course, in our case, S did not even make any inquiries. Hence, despite S's duty, they did not communicate anything to B.[page 48]

What about rights born after the conclusion of the contract? According to the Convention's text, the seller is responsible for rights of which they could have known until the moment of the conclusion. Consequently, at first sight, the seller is not liable for rights born after the conclusion of the contract. The seller has, moreover, no direct interest to inform the buyer.[66] However, as the parties owe each other to act reasonably, the seller's information would have helped the buyer to change their disposal regarding the goods and to avoid damages.

Time of the knowledge of the third party's rights

As seen before, Art. 42 CISG limits the seller's warranty "to rights and claims that he knew or could not have been unaware of at the time of the conclusion of the contract". Literally, the seller's knowledge is prejudicial until the conclusion of the contract.

Nevertheless, two authors do not follow the clear text of the Convention [67] by stating that the knowledge is prejudicial until the delivery of the goods. This interpretation goes too far because it extends the seller's warranty beyond the intention of the drafters of the CISG. This also prevents an international harmonisation of the rule. In certain countries [68] where the risk transfer occurs at the contract's conclusion, Art. 42 CISG is honoured. However, in other States, the transfer only occurs upon the delivery of the goods and this would twist around the Convention's aim of limiting the seller's liability.

It is therefore better to follow the clear text of Art. 42 CISG: after the conclusion, the risks are transferred onto the buyer, if, of course, the seller did not know of the possible eviction at the time of the conclusion.

Objective limitation: the principle of territoriality

It is necessary to note that knowledge of the rights is only relevant if they are founded on the law of certain States: that of resale, use, or that where the buyer has his place of business (Art. 42 (1)(a) and (b) CISG). The objective and [page 49] subjective limitations are therefore intrinsically linked: we cannot reproach the seller for knowing that an intangible right exists in a certain country if this country had never been contemplated by the parties at the time of the conclusion of the contract.

What is the foundation of such geographic restrictions? The ULIS (Art. 52) did not limit the seller's liability according to territorial factors.[69] However, intellectual property rights are completely dispersed among different States on which their protection depends. In order to protect an invention, a separate patent has to be issued in each country. As a result, a patent is strictly confined to the territory of the State which awarded it. It would consequently not be reasonable to require that the seller guarantees the free circulation of these goods in all the States of the world, but it would make more sense to limit his liability to certain States with a very direct link with the buyer's intention of how to use the products. By restricting the number of States in this way, one is led to an adaptation of the principle of universality which governs rights in rem.[70]

B and S agree on the sale of cars bearing the trademark "PC". The cars shall be delivered to Italy. The buyer explains orally to the co-contractor that they intend to market the goods in the place of delivery and in two other countries, Greece and Turkey. B would also like to resell part of the cars in Austria, where B believes that they can obtain a good price for them. However, after the conclusion of the contract, B decides to use part of the merchandise in France, which they omitted to tell the seller.

What is the validity of the clause agreed orally? Can the parties foresee several countries of use or resale? Quid if the buyer had foreseen no country at the time of the contract's conclusion, and quid in the case of an "extra-country" of use, added after the conclusion of the contract?

WARRANTY IN THE COUNTRY OF RESALE OR USE

The text of Art. 42(1)(a) CISG is clear: if the parties have contemplated a country of use (i.e., of sale or of marketing) or of resale (the buyer resells the goods in another country), the seller will only be liable if intellectual property rights founded on the law of those States can evict the buyer. This provision [page 50] is analogous to Art. 35(2)(b) CISG which provides, with regards to the material conformity of the goods, that all special use of the merchandise should be brought to the knowledge of the seller, as should the country of resale or use be contemplated by the parties. Both cases take into consideration the buyer's interest, since it is up to them to choose what they will do with the goods.

However, an important question in this area is to know if the alternative conjunction "or", placed between the terms "resold" and "otherwise used", has to be interpreted as being cumulative. At first sight, this may seem absurd, but it is this solution which seems to be the fairest in practice: if we translate it as an alternative, we would force the parties to conclude several contracts, one for resale and the other for use, to reach the same result. Considering the parties' contractual liberty, it would be pointless to interpret the word "or" as being exclusive if the parties have contemplated resale and use.

If several countries are contemplated the scope of the seller's obligation is increased. However, international sales contracts often contain clauses forbidding the re-exportation of the goods, which limits the seller's liability.[71] It is therefore entirely possible for the parties to foresee a country of resale as well as a country of use and to make exclusions.

Meaning of the term "contemplated"

This term chosen by the CISG's drafters is not very effective: it is vague and requires interpretation. Each author who analysed the subject gave their own version of this term which does not facilitate its comprehension.

The only point on which the authors agree is that it is not necessary to contemplate a country in a written contract.[72] This is entirely correct for the term "contemplate" does not itself call upon any specific clause. However, in practice, this would be the most appropriate solution since it would facilitate the proof if a lawsuit arose between the parties.

In order to find out the meaning of the term, it is necessary to examine it more precisely. A simple eventuality that a good will be resold or used here or there does not suffice. One may argue that the possibility of use or resale must at least [page 51] have been taken into consideration.[73] However, this explanation remains equally as abstract and vague. In brief, the parties must come to an agreement, whether it be written or oral.

The oral clause of the parties poses no problems: the seller and the buyer have taken into consideration that the cars "PC" will be marketed in certain countries. There is no formal problem here.

However, one must go one step further.

May the seller and the buyer tacitly contemplate a State by conclusive acts? Yes, if the circumstances are sufficiently obvious, e.g., if the seller knows that their co-contractor only does business in Japan, they will be allowed to think, that this is the contemplated country. From the buyer's field of activity the aimed country may be inferred. This could also result from previous deals between buyer and seller.[74] There is no need to foresee in each new contract what are the countries if past experiences show precisely the buyer's intentions. However, of course, all changes should be signalled to the seller.

If the buyer requests the delivery to a certain country, does this mean that they intend to use the goods in this country? May the seller consider this as the contemplated country? The request of the delivery to a precise area is only an indication which should be corroborated by the buyer or by the nature of the goods themselves.[75] Although one may draw conclusions from the country of delivery, is it possible that the buyer could, for reason of convenience, want the goods to be delivered in a certain country before reselling or using them elsewhere.[page 52]

The parties contemplated a country at the "time of the conclusion of the contract"

The text of Art. 42 CISG is perfectly clear: all changes of the destination of the goods subsequent to the conclusion of the contract cannot be subject to the seller's liability.[76]

The fact that the buyer decides after the conclusion of the contract to resell the cars in France has no effect upon the seller's liability. Only the countries contemplated at the time of the conclusion of the contract are taken into consideration for determining the extent of the seller's warranty.

A limitation to only one State of resale or use?

The conclusion has already been reached that resale and use are to be seen as cumulative possibilities for which the seller may be held responsible. This allows us to analyse the word 'State' used in the singular form in Art. 42 CISG.

It can be argued that only one country can be taken into account if one follows the strict principle of territoriality of immaterial rights. This point of view also takes the aim of Art. 42 CISG into consideration which is to restrict the seller's liability in the case of infringement.[77] Of course there is a need to limit the seller's liability, but the principle of contractual liberty allows the parties to conclude as many contracts as they desire and therefore to foresee, in several different documents, as many destination countries as there are contracts. This confirms our interpretation: if the seller and the buyer intend contemplating a certain number of countries of marketing, and if this is clearly contemplated, the task must be simplified by allowing them to do so in one single contract. Moreover, one has to keep in mind that the seller can always exclude his liability if this goes too far for him.[78]

One author who does not agree with the 'multiplicity of States', makes an interesting and important distinction: he differentiates between sovereign States and sub-entity territories, e.g., the American States.[79]. This is a valid argument [page 53] because if the protection of intellectual property rights is founded only on the law of some territorial entities which have been contemplated for the use of the goods, it would be useless to ask the seller to inquire in all of sub-entities.

The buyer can consequently commercialise the PC cars in Italy, in Greece, in Turkey, and resell part of them in Austria. The only precondition is that the parties have contemplated all of the States mentioned at the conclusion of the contract.

Subsidiary warranty in the State where the buyer has his place of business

In the hypothesis where the parties have not contemplated any country at the conclusion of the contract (neither in written form nor orally nor by conclusive acts), the only country which can be considered when determining the seller's liability is the one where the buyer has his place of business (Art. 42(1)(b) CISG).

Paragraphs (a) and (b) of Art. 42(1) CISG are never cumulative: the country of the buyer's place of business only intervenes subsidiarily, if the parties have not foreseen anything or in case of doubt.

The question of the branch

If the buyer has several places of business situated in different countries, Art. 10 CISG intervenes and provides that "the place of business is that which has the closest relationship to the contract and its performance, having regard to the circumstances known to or contemplated by the parties at any time before or at the conclusion of the contract". Consequently, only one country can be the country of the contract.

We may also recall that this subsidiary warranty equally leads to all the seller's subordinate obligations mentioned above. Otherwise, Art. 42 CISG would remain useless.[page 54]

A warranty in countries of transit?

A priori, the transit through one or several States is not, concerning the goods, a putting into circulation. However, this does not prevent a third party from having an intangible right on the goods transported and to exercise the same in the countries which are crossed.

The text of the CISG remains silent on this subject. This blank may be explained by the fact that in almost all the national legislation, e.g., a patent holder cannot exercise his rights over merchandise transported across the country.[80]

However, one may imagine cases where the final manufacturing process or the packaging of the goods are effected during the transit: these acts correspond to a putting into circulation which, if they infringe the rights of a third party, can result in the seizure of the goods.[81] In this case, the liability will depend on which party who took the initiative of these acts.

If it is the buyer who gave instructions to the seller or if the buyer themselves carried out the acts infringing the use of the goods, they will be liable. If it is the seller who took the initiative, the seller is liable as to a hypothetical action from the third party or their co-contractor.

WARRANTY IN THE SELLER'S COUNTRY

Obviously, each party must know the legal situation in its own country. But we have to avoid hitting this snag: the buyer is not at all interested in knowing the situation of immaterial rights in the seller's country, unless that country had been contemplated as a country of resale or use.

EXCLUSION OF THE SELLER'S WARRANTY

The buyer's knowledge

A German seller S concludes a contract with a Swiss buyer B concerning grocery products. On the packaging, a big orange M is printed. Neither the seller nor the buyer know that there is a risk of confusion with the [page 55] products of a big and well-known grocery store M. After the delivery, M brings an action against B for damages. Is S liable?

On principle, the conditions for a warranty in accordance with Art. 42(1) CISG are fulfilled. However, maybe the seller's liability is excluded pursuant to Art. 42(2)(a) CISG.

Same significance as for the seller?

In contrast to the ULIS which excluded the seller's warranty only in the case where the buyer knew the third party's right, Art. 42(2)(a) CISG specifies that the seller is also freed from their warranty in the case in which the buyer could not have been unaware of the right in question.

An analysis of the term could not have been unaware in the context of the seller's obligation has revealed that the seller has the duty to make inquiries (see above). Does the contracting party have the same obligation? On principle, the use of the same words in each of the two paragraphs of Art. 42 CISG suggests a positive answer. However, if the buyer had the same obligation as the seller to make inquiries, the latter would always be released from their liability since each time they knew or could not have been unaware of a right or claim, they could always claim that the buyer should also have known the right's existence.[82] In order to avoid this paradoxical situation, it is necessary to consider different standards for the seller and buyer with regard to what they have to be aware.[83]

To what does the buyer have to be aware?

One would demand too much of the buyer by asking him to search the intellectual property registers.[84] However, what are the buyer's obligations?

The aim of Art. 42(2)(a) CISG is to prevent the buyer from practising an ostrich's policy.[85] The buyer should not be allowed to ignore everything [page 56] knowing that the seller will still be liable for rights weighing on the goods. Consequently, the seller is not responsible if the buyer has made a bigger mistake than themselves.[86] A buyer who is able to evaluate the situation in the countries contemplated, should not profit from the seller's warranty since it would have been easy for them to know if an immaterial right existed. As a conclusion, a buyer may not ignore intellectual property rights which are well known [87] and those which they would have found had their kept their eyes open.[88] Moreover, a buyer who, at the time of the conclusion of the contract, has serious reasons to believe that a right may exist, has the obligation to communicate their thoughts to their contracting party. This duty results from the fact that the parties have a duty to act reasonably towards each other.

Moment of knowledge

Like the seller, the buyer has to know the third party's right at the time of the conclusion of the contract.[89]

Although the seller could not have been unaware of the third party's right, it would have been easy for the buyer to know that a right existed. As the grocery store M is very well known in Switzerland, the buyer could not have been unaware of M's intellectual property. Consequently, the seller's liability is excluded in accordance to Art. 42(2)(a) CISG.

Buyer's instructions

B sends an order to S asking him to build a machine in accordance to the technical drawings annexed. S realises that they may construct this machine in two different ways (X, Y). S does not know that construction X infringes an intellectual property right of T whereas the alternative Y is not protected. S constructs the machine in the way X. After the machine's delivery, T approaches B asking them for damages. B is of the opinion that S should have made inquiries if a third party's right existed and that S is [page 57] therefore liable. Quid?

The conditions of Art. 42(1) CISG are fulfilled. However, the seller's responsibility may be excluded in accordance to Art. 42(2)(b) CISG.

General remarks

Pursuant to Art. 42(2)(b) CISG, the seller is freed from their responsibility if them complied "with technical drawings, designs, formulae or other such specifications furnished by the buyer", only, of course, if the infringement is caused by the instructions.

Art. 42(2)(b) CISG was not discussed much during the conferences dealing with the CISG. Consequently, the wording of the project of 1977 [90] (then Art. 26(2)(b)) was kept unchanged. The thinking behind this rule is the idea that a buyer asking the seller to comply with certain specifications possesses enough know-how to be able to assess the situation as to intellectual property rights in the countries in question. In this case, the seller is freed from their obligation to make inquiries.[91]

Which degree of precision do the buyer's specifications have to show? In contrast to a "technical drawing" being on a high level of precision, a design is less worked out. Do the "other such specifications" have to be as precise as "technical drawings" or only as exact as "designs"? As to the wording of Art. 42(2)(b), it suffices that the other specifications show an analogous precision to the term with expressing the less exactitude, namely the "design".[92] In this case, the liability is even excluded if the seller has a margin of execution.[93]

This solution is reasonable for one may fairly demand the buyer who furnishes specifications to examine the situation as to the possible existence of intellectual property rights, and this as to all possible ways to execute their instructions. [page 58]

In the case of a buyer not feeling competent to do this, one may expect from them to include a clause in the contract stating that the seller has an obligation to inquire as to possible infringement of intellectual property rights. In the absence of such a clause, the seller may have confidence in the buyer that the latter checked possible infringements.

Nevertheless, it is necessary to make the remark that general specifications not being as precise as a "design" are not sufficient to release the vendor from their obligation.[94]

Having been provided with specifications along with the request to comply with them, S was pushed to think that B had already checked the situation as to possible infringements. Hence, S had no obligation to make inquiries themselves. S's liability is excluded in accordance to Art. 42(2)(b) CISG.

The case of the seller's knowledge

Although the seller who has complied with the buyer's specifications has no obligation to make inquiries, it may happen that they accidentally know that the product to be manufactured will infringe a third party's right. In such a case, the principle of good faith (Art. 7(1) CISG) and the duty to act reasonably (Art. 8(2) CISG) oblige the seller to inform the buyer.[95] This duty is not linked to the moment the seller takes notice of the third party's right since this information is of value to the buyer even after the conclusion of the contract.[96] A seller who neglects this duty is not freed from their warranty pursuant to Art. 42(2)(b) CISG. However, the seller does not guarantee if the buyer insists on their instructions despite the seller's warning.

CONCLUSION

In the context of Art. 42 CISG, intellectual property may be defined as all rights protecting an intellectual activity having a pecuniary value, being linked to a good and being capable of impairing the use of a good. The seller is liable for any right, registered or not, even if the third party does not make any claims. The seller's responsibility is even triggered in the case of frivolous claims.

The warranty for third party's rights commences at the moment of delivery. The liability for claims extends beyond the delivery.

The seller is obliged to make inquiries in the countries which have been envisaged in order to find out if rights exist which may restrict the buyer's use of the goods. In all cases, the seller shall inform their contracting party about the result of his research. If the seller takes these precautions, no action may be brought against them.

The responsibility is limited to the countries according to which the two contracting parties agreed to the sale or use of the goods at the time of the conclusion of the contract. Several countries of use are possible. If the parties have not agreed specifically to a country, the seller is only liable for third party's intellectual property rights in the country where the buyer has their place of business.

The warranty is excluded if, at the moment of the conclusion of the contract, the buyer knew the right's existence or if it was evident that such a right existed.

The warranty is furthermore excluded if the seller complied with specifications furnished by the buyer which have at least the precision of a design. In this case, the seller is not liable, even if they had a margin of executing the instructions.

Proposing some changes . . .

Art. 42 CISG is a provision included in an international sale perspective. Therefore it seems logical to include it, following the example of the other articles of the CISG, in an international sale contract governed by the CISG. However, we have revealed in this paper that Art. 42 CISG has almost never [page 60] been invoked in court. The reason is the wording being complicated and full of undetermined notions to be interpreted which may prevent to bring an action for the parties having difficulties in predicting the outcome of a procedure. Hence, the parties are tempted to include an ad hoc clause into their contract derogating Art. 42 CISG.

As Art. 42 CISG is not applied, it is clear that it does not meet the requirements (or only partially) of a rule governing the warranty for third parties' intellectual property rights. It therefore seems necessary to make some modifications which we have developed from the results of our examination of Art. 42 CISG. We would like to present a rewritten version of an Art. 42 CISG de lege ferenda:

Rewritten version of Art. 42

1. The seller shall deliver the goods free from any right or claim based on intellectual property rights which he knew or could have known by making inquiries at the moment of the conclusion of the contract. The seller is equally liable for claims made after the delivery.

The right or claim has to be based on intellectual property according to the law:

a) of the States which the parties have, at the moment of the conclusion of the contract, agreed orally, in writing or by conclusive acts, to the resale or use of the goods;

b) of the State where the buyer has their place of business in the case of doubt and in any other case.

2. The liability pursuant to the preceding paragraph is excluded if the existence of the right or claim

a) is known or could not have been ignored by the buyer at the moment of the conclusion of the contract; or

b) results of the fact the seller complied to the buyer instructions if they are at least as precise as a design.


FOOTNOTES

* A similar version of this article was published in French: Rauda, Christian/ Etier, Guillaume, Garantie en cas d'éviction et propriété intéllectuelle dans la vente internationale, in: Will, Michael (editor), Rudolf Meyer zum Abschied, Beiträge zumUN-Kaufrecht, zum Internationalen Recht und zur Rechtsvergleichung, Geneva1999,pp.113-144. Author's email contact: Christian_Rauda@hotmail.com.

1. During 1999, the World Intellectual Property Organization recorded 20,072 new international trademark registrations, containing a total of 240,860 designations and 23,323 new designations in respect of existing international registrations. The designations effected in 1999 were therefore equivalent to over 264,000 national registrations (WIPO, Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, Geneva 2000, p. A.5).

2. Will, Michael R., The UN Convention on Contracts for the International Sale of Goods (1980), The First 555 or so Decisions, Geneva, 1999.

3. E.g., Egypt: Arts. 439 f. Egyptian Civil Code; Germany: 434 BGB; Switzerland: Art. 192 CO; United States of America: 2-312 U.C.C.

4. Reinhart, Gert, UN-Kaufrecht, Kommentar zum Übereinkommen der Vereinten Nationen vom 11. April 1980 über Verträge über den internationalen Warenkauf, Heidelberg, 1991, Art. 41 n3; Herber/ Czerwenka, Internationales Kaufrecht, Kommentar zu dem Übereinkommen der Vereinten Nationen vom 11. April 1980 über Verträge über den internationalen Warenkauf, München, 1991, Art. 41 n3.

5. Art. 52 ULIS also contained a warranty for rights and claims based on intellectual property law, see Mertens/Rehbinder, Internationales Kaufrecht, Kommentar zu den Einheitlichen Haager Kaufgesetzen, Frankfurt am Main (1975), Art. 52 n5.

6. United Nations Conference on the Convention on Contracts for the International Sale of Goods, Official documents, 1981, p. 38; Kritzer, Albert, Guide to Practical Applications of the United Nations Convention on Contracts for the International Sale of Goods, Boston (1989), p. 328.

7. United Nations Commission on International Trade Law, Yearbook vol. VIII, p. 41; Schwerha, Joseph, Warranties against Infringement in the Sale of Goods: A comparison of U.C.C. 2-312 (3) and Art. 42 of the U.N. Convention on Contracts for the International Sale of Goods, 16 Michigan Journal of International Law (1995), p. 460.

8. Example: In contrast to Germany utility models are not protected in Switzerland.

9. Official documents (n 6), p.39, footnote n1, reference to Art. 40 CISG.

10. Official documents (n 6), pp. 84 and 110.

11. Piltz, Burghard, Internationales Kaufrecht, Das UN-Kaufrecht (Wiener Übereinkommen von 1980) in praxisorientierter Darstellung, Munich (1993), p. 204; Enderlein, Rights and Obligations of the Seller under the UN Convention on Contracts for the International Sale of Goods, in: arcevic/Volken, International Sale of Goods, Dubrovnik Lectures, New York (1986), p. 178.

12. Kritzer (n 6) p. 328.

13. Langenecker, Joseph, UN-Einheitskaufrecht und Immaterialgüterhaftung, (Thesis Munich 1993), pp. 83 s.; Magnus, Ulrich, UN-Kaufrechtsübereinkommen, in: Julius von Staudinger, Kommentar zum BGB, 13th edition, Berlin (1995), Art. 42 n12.

14. Official documents (n 6), p.208 s.

15. "This Convention does not govern the rights and obligations which might arise between the seller and the buyer because of the existence in any person of rights or claims which relate to industrial or intellectual property or the like", Yearbook VII and project in Yearbook VII.

16. Yearbook VIII, p. 41.

17. Official documents (n 6), p. 119.

18. González, José María Miquel, Arts. 41-42, in: Díez-Picazo y Ponce de León, La compraventa internacional de mercaderías, Comentario de la Convención de Viena, Madrid (1998), Art. 42 III 1 b.

19. Dissident opinion: Schwenzer, Ingeborg, Art. 41-42, in: Schlechtriem, Commentary on the UN Convention on the International Sale of Goods (CISG), second edition (translation), Oxford, (1998), Art. 42 n5.

20. Kritzer (n 6), p. 328.

21. Example: Utility models under German law, cf. Prager, Martin, Verkäuferhaftung und ausländische gewerbliche Schutzrechte, Die Haftung des Verkäufers beweglicher Sachen für deren Freiheit von gewerblichen Schutzrechten oder Urheberrechten nach dem UN-Kaufrechtsabkommen vom 11. April 1980 (Thesis Bremen 1986), Pfaffenweiler (1987), p.147.

22. Diverging opinion: Shinn, Allen M., Jr., Liabilities under Art. 42 of the U.N. Convention on the International Sale of Goods, 2 Minn. J. Global Trade (1993), p. 116. Shinn likes to restrict the definition to patents, trademarks and copyrights.

23. Dessemontet, François, Einführung: Immaterialgüterrecht und Privatrecht, in: Büren/David, Schweizerisches Immaterialgüter- und Wettbewerbsrecht, Vol. I/1, Basel (1998), p. 6; Example: Art. 6 of the Swiss Unfair Competition Act.

24. Art. 2 (viii) of the WIPO Convention; diverging opinion: Prager (n 21), pp. 146 s.

25. Langenecker (n 13), p. 71; Diez-Picazo-Gonzáles (n 18), Art. 42 III 1 a; Heuzé, Vincent, La vente internationale de marchandises, Paris (1992), p.241; Piltz (n 11), pp. 205 s. ; Examples: in Switzerland, a copyright results from the pure creation of a work of art; according to Art. 8 of the Paris Convention, commercial names do not have to be registered to be protected.

26. Compare: Feuille fédérale, message concernant la Convention de Vienne sur les contrats de vente internationale de marchandises, 11 janvier 1989, p. 756; Lichtsteiner, René, Übereinkommen der Vereinten Nationen über Verträge über den Internationalen Warenkauf, Einführung und Vergleich mit dem schweizerischen Recht, Baden (1989), p. 44.

27. Langenecker (n 13), p. 69.

28. The seller is also liable after the delivery for claims which he knew of or of which he could not been unaware.

29. Example: Art. 57 III of the Swiss Trademark Act.

30. In the same sense: Schwerha (n 7), p. 458.

31. In contrast to German Law where Anspruch is the right to ask somebody to do or not to do something ( 194 BGB), the CISG does not define the notion claim in the same way.

32. In this sense: Ackerman, Grant, U.N. Convention on Contracts for the International Sale of Goods, Annotated, Boston (1992), p. 42-6.

33. Vida, Alexandre, Garantie du vendeur et propriété industrielle: les 'vices juridiques' dans la vente internationale de marchandises (Convention de Vienne), in: Revue trimestrielle de droit commercial et de droit économique, Paris (1994), p. 23; Schlechtriem, Peter, The Seller's Obligations Under the United Nations Convention on Contracts for the International Sale of Goods, in: Galston/Smit, International Sales : The United Nations Convention on Contracts for the International Sale of Goods, New York (1984), 6.03 6-32.

34. Piltz (n 11), p. 86; Niggemann, Friedrich, Die Pflichten des Verkäufers und die Rechtsbehelfe des Käufers, in: Hoyer/Posch, Das Einheitliche Wiener Kaufrecht, Wien (1992), p. 93.

35. Schwerha (n 7), p. 457.

36. In this sense: Lookofsky, Joseph, Understanding the CISG in Scandinavia, A Compact Guide to the 1980 United Nations Convention on Contracts for the International Sale of Goods, Copenhagen, 1996, 4-11; Ackerman (n 32), p. 42-6.

37. Honnold, John, Uniform Law for International Sales Under the 1980 United Nations Convention, 3rd edition, Boston (1999), n265; Schlechtriem-Schwenzer (n 19), Art. 41 n9.

38. Ackerman (n 32), p. 41-5. This argument is particularly valid in countries where each party pays its lawyer's fee.

39. Langenecker (n 13), p. 67; Piltz (n 11), p. 204.

40. Staudinger-Magnus (n 13), Art. 41 n17; Enderlein (n 11), p.179; Langenecker (n 13), p. 67.

41. Kheir, Adel Mohamed, Contracts for the International Sale of Goods Through Vienna Convention and the Efforts of United Nations Committee of International Trade Law (UNCITRAL) and International Commercial Chamber, Cairo, 1994, p. 135.

42. Vida (n 33), p. 25; Dissident opinion: Zhang, Xi, Rechtsmängelhaftung des Verkäufers nach UN-Kaufrecht im Vergleich mit deutschem, englischem, US-amerikanischem und Haager Einheitlichem Kaufrecht (Thesis Tübingen 1994), p. 87.

43. Prager (n 21), p. 148; Zhang (n 42), p. 87.

44. Hoyer/Posch-Niggemann (n 34), p. 93; Prager (n 21), p. 77, 148; Kheir (n 41), p. 135.

45. Vida (n 33), p. 26.

46. Dissident opinion: Schlechtriem-Schwenzer (n 19), Art. 42 n4; Heilmann, Jan, Mängelgewährleistung im UN-Kaufrecht, Voraussetzungen und Rechtsfolgen im Vergleich zum deutschen internen Kaufrecht und zu den Haager Einheitlichen Kaufgesetzen (Thesis Hamburg 1992), p. 663; Schwerha (n 7), p. 457 indicating that in this case the seller's liability is always excluded.

47. Enderlein/Völter, Ergebnis der Arbeit der UNCITRAL für ein einheitliches Recht über den internationalen Warenkauf, Recht der DDR-Aussenwirtschaft 51/1977, p.10; Feuille fédérale, message concernant la Convention de Vienne sur les contrats de vente internationale de marchandises, 11 janvier 1989, p. 756; Lichtsteiner (n 26), p. 44.

48. Prager (n 21), p. 151.

49. Piltz (n 11), p. 206.

50. Schwerha (n 7), p. 449; Ackerman (n 32), p. 41-5; Heilmann (n 46), p. 664; Prager (n 21), p. 150; Wolff, Katharina, Rechtsmängelhaftung nach dem Uniform Commercial Code und dem UN-Kaufrecht (Thesis Bonn 1989), p. 65.

51. Vida (n 33), p. 26.

52. Schwerha (n 7), p. 450; Schlechtriem-Schwenzer (n 19), Art. 42 n8; Piltz (n 11), p.204; dissident opinion : Ackerman (n 32), p. 41-6, who states that the seller was no longer liable after the delivery.

53. Schwerha (n 7), p. 450.

54. Zhang (n 42), p. 87.

55. Audit, Bernard, La vente internationale de marchandises, Convention des Nations-Unies du 11 avril 1980, Paris (1990), p. 113.

56. Shinn (n 22), p. 124.

57. Schwerha (n 7), p. 459.

58. Galston/Smit-Schlechtriem (n 33), 6.03 6-34.

59. Staudinger-Magnus (n 13), Art. 42 n22

60. Vida (n 33), pp. 28-29; Zhang (n 42), p. 90; Heuzé (n 25), p. 243.

61. Huber, Ulrich, Der UNCITRAL-Entwurf eines Übereinkommens über internationale Warenkaufverträge, RabelsZ 43 (1979), p. 503; Wolff (n 50), p. 75; Shinn (n 22), p. 126; similar opinion: Kheir (n 41), pp. 135-136.

62. Dissident opinion: Heuzé (n 25), p. 243.

63. E.g. Vida (n 33), pp. 28 s.; Enderlein/Maskow, International Sales Law, London (1992), p.168; Kritzer (n 6), p. 329; Schlechtriem-Schwenzer (n 19), Art. 42 n14.

64. E.g. Vida (n 33), p. 29; Piltz (n 11, p. 207; Schlechtriem-Schwenzer (n 19), Art. 42 n14.

65. Chisum/Jakobs, World Intellectual Property Guidebook, United States, New York (1992), pp. 4-97.

66. Dissident opinion: Schlechtriem-Schwenzer (n 19), Art. 42 n15.

67. Prager (n 21), pp. 96 ss; Adame Goddard, Jorge, Las obligaciones del vendedor en la compraventa internacional, Ars Iuris, Revista del Instituto de Documentación de Investigación Jurídica de la Facultad de Derecho de la Universidad Panamericana, Mexico D.F., 1993, p. 40.

68. E.g. Switzerland (Art. 185 CO).

69. Zhang (n 42), p. 84.

70. Huber, Ulrich, Haftung des Verkäufers nach dem Kaufrechtsübereinkommen des Vereinten Nationen und nach deutschem Recht (Thesis Berlin 1991), p. 98.

71. Enderlein/Maskow (n 63), p. 169.

72. Enderlein/Maskow (n 63), p. 169.

73. Staudinger-Magnus (n 13), Art. 42 n16; Enderlein/Maskow (n 63), p. 169.

74. Neumayer/Ming, Convention de Vienne sur les contrats de vente internationale de marchandises, Commentaire, Lausanne (1993), p. 319.

75. Staudinger-Magnus (n 13), Art. 42 n17.

76. Dissident opinion: Diez-Picazo-González (n 18), Art. 42 III 4; Kritzer (n 6), p. 329.

77. Ackerman (n 32), p. 42-7.

78. Schlechtriem-Schwenzer (n 19), Art. 42 n10

79. Shinn (n 22), pp. 128-129.

80. Vida (n 33), p. 27.

81. Schlechtriem-Schwenzer (n 19), Art. 42 n14.

82. Piltz (n 11), p. 207.

83. Enderlein/Maskow/Strohbach, Internationales Kaufrecht, Kaufrechtskonvention, Verjährungskonvention, Vertretungskonvention, Rechtsanwendungskonvention, Berlin (1991), p.142, this may also be derived from the fact that it is the seller and not the buyer who owes a warranty; dissident opinion: Prager (n 21), p.174 s.; Shinn (n 22), 125; Adame Goddard (n 67), p. 41.

84. Piltz (n 11), p. 207; Enderlein/Maskow (n 63), p. 170.

85. Vida (n 33), p. 31.

86. Audit (n 55), p.113.

87. Zhang (n 42), p. 92.

88. Similar opinion: Shinn (n 22), p. 126.

89. Adame Goddard (n 67), p. 41.

90. Yearbook VIII, p. 41.

91. Enderlein/Maskow (n 63), p. 170.

92. Dissident Opinion: For Prager (n 21), p. 177 the specifications have to be as precise as a technical drawing.

93. Dissident Opinion: Vecchi, Paolo Maria, Art. 41-42, in: Bianca, Commentario Coordinato, Padova (1987), Art. 42 Chiffre 5; Galston/Smit-Schlechtriem (n 33), 6.03 6-34; Langenecker (n 13), p. 233.

94. Zhang (n 42), p. 92.

95. Enderlein/Maskow (n 63), p. 170.

96. The buyer may use the merchandise in another country than the one which was contemplated. Dissident opinion: Diez-Picazo-Gonzáles (n 18), Art. 42 IV 2.


© Pace Law School Institute of International Commercial Law - Last updated July 5, 2001
Go to Database Directory || Go to Bibliography
Comments/Contributions