The Regional Court of Düsseldorf clarifies that the prosecution of individual infringements in the form of separate warnings can be an abuse of rights (Regional Court of Düsseldorf, judgment of March 11, 2015, Ref.: 12 O 461/14).
A competitor sent a competitor seven warnings within three days for the same allegation. The warnings differed only insignificantly in terms of content and were each valued at EUR 75,000.
Abusive warning only to be affirmed under strict conditions
Sending several warnings does not automatically lead to an abuse of rights; rather, certain conditions are required, which can be found in Section 8 UWG. An indication of an abusive warning is, on the one hand, if action is taken due to similar legal infringements that have similar consequences. If, in such a case, the first warning had already summarized everything, the further letters would not be necessary.
Secondly, if separate fees are claimed for the warnings. In this case, the party issuing the warning is guided by extraneous motives (e.g. OLG Düsseldorf, judgment of September 24, 2013, case no. I-20 U 157/12).
However, in order to maintain the need for legal protection, these motives must not prevail.
The use of separate proceedings can also lead to an abuse of rights if one procedure would suffice.
The burden of proof lies with the infringer
In principle, the infringer (claimant/respondent) is obliged to present and prove the requirements of Section 8 para. 4 UWG. As soon as sufficient evidence for an abuse of rights has been gathered, the claimant must disprove the circumstances.
When can an abuse of rights be ruled out?
The mere number of warnings in a short period of time does not automatically prove an abuse of rights. If – as in the present case – seven infringements are committed, the infringed party is generally entitled to take action against all of them.
One reason for bringing a separate action in each individual case may be that the enforcement of rights would otherwise be more time-consuming and less effective. There is a risk that a materially enforceable claim will not be adjudicated initially.
Reasons for judgment – LG Düsseldorf
In the above-mentioned case, however, these arguments did not apply. For procedural reasons, a separate warning was not necessary. After the first warning was issued, all necessary measures to secure evidence for all acts of infringement had already been completed. The claims could also have been enforced on their own, so that combining the claims in a warning letter would not have led to any problems.
The differences in the wording do not change this. The differences are marginal and the content of the facts remains comparable.
In contrast, the difference in the amount of the fee invoice is extremely high. In summary, the Düsseldorf Regional Court therefore assumes an abuse of rights.
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