The Federal Court of Justice (BGH) has issued an exciting decision on trademark law.

According to the decision, a new trademark infringement, despite a cease-and-desist declaration with a penalty clause, regularly gives rise to a renewed risk of repetition, which can generally only be eliminated by a further declaration of submission with a considerably higher penalty clause than the first. Such a higher penalty is already inherent in a contractual penalty promise according to “Hamburg custom”. With the possibility of setting a contractual penalty even at a previously unforeseeable amount, it has the necessary deterrent effect on the debtor in the event of a repeat infringement, especially since the circumstance of the repeated infringement must be taken into account in a judicial review of the appropriateness of the contractual penalty.

In addition, the Federal Court of Justice stated that, in principle, the receipt of a cease-and-desist declaration by the debtor, which is an expression of a serious intention to cease and desist, is sufficient for the risk of repetition to cease. However, this requires that the declaration to cease and desist with penalty clause is binding until its acceptance or rejection by the creditor, so that the creditor can accept it at any time and thus establish the contractual penalty obligation. Only then is the necessary deterrent effect given, which justifies the cessation of the danger of repetition already upon receipt of the declaration to cease and desist with a penalty clause.

However, the Federal Court of Justice’s opinion that the conclusion of the cease-and-desist agreement fails in the event that the creditor refuses to accept the declaration of cease-and-desist with a penalty clause vis-à-vis the debtor is also interesting, and that the deterrent effect required for the cessation of the risk of repetition through a (threatened) contractual penalty obligation is then lacking from this point in time. With this ruling, which may be very relevant under certain circumstances, the BGH abandons a long-standing legal opinion. (May 31, 1990 – I ZR 285/88, GRUR 1990, 1051 [juris marginal no. 16] = WRP 1991, 27 – Vertragsstrafe ohne Obergrenze)

According to the previous case law of the German Federal Court of Justice, the receipt of the cease-and-desist declaration with a penalty clause alone also led to the cessation of the risk of repetition if the creditor refused to accept it from the debtor – as was the case here (see BGH, GRUR 1982, 688 [juris para. 2 and 41] – Senioren-Paß; GRUR 1984, 214 [juris marginal no. 8 and 23] – Copy-Charge; GRUR 1988, 459 [juris marginal no. 8 and 29] – Teilzahlungsankündigung; GRUR 1990, 1051 [juris marginal no. 16] – Vertragsstrafe ohne Obergrenze; Schwippert in Gloy/ Loschelder/Danckwerts aaO § 84 marginal no. 69; so also Bornkamm in Köhler/ Bornkamm, UWG, 35. ed, § 12 marginal no. 1.163; see also Teplitzky, GRUR 1983, 609 f.).

The Senate no longer adheres to this case law!

An unfair result with regard to the first creditor can be avoided by the fact that the debtor has the possibility to avoid bearing the costs in case of a judicial assertion of the claim for injunctive relief by an immediate acknowledgement pursuant to Sec. 93 ZPO.