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Injunction debtor has a duty to search

The Bonn Regional Court has ruled that in the event of an obligation to cease and desist with regard to the naming of a former company name, there is an obligation to search.

The case before the Regional Court of Bonn, which was decided on June 1, 2016 (Ref.: 1 O 354/15), involved a former architect. The plaintiff asked him to refrain from continuing to publicly use his company name as “Architekt”. After the former architect had submitted the cease-and-desist declaration, the plaintiff nevertheless found several internet portals on which the defendant was listed under the name “architect”.

to refrain from using the terms “architect” and “architectural office” in business dealings

The former architect was registered in the list of architects of the Chamber of Architects for almost 20 years. He was finally removed from this list due to personal insolvency. After deletion, he undertook not to appear in business dealings under the name “architect” or “architectural office”. In the event of non-compliance with this obligation, the former architect was ordered to pay a contractual penalty of several thousand euros.

Defendant saw no breach of the duty to cease and desist

Despite issuing a cease-and-desist declaration, the plaintiff found a number of websites (operated by third parties) on which the former architect was listed as an “architect” with reference to his “architectural office”. The plaintiff then claimed the agreed contractual penalty.

However, the former architect did not consider the remaining references to be a breach of his duty to cease and desist. After all, these designations were noted in connection with his name on third-party websites. Furthermore, there was no connection to business transactions, so that these cases could not be covered by the obligation to cease and desist.

“Architect” is a misleading business name

However, the Bonn Regional Court based its decision on the meaning and purpose of the agreement between the plaintiff and the defendant. According to this, it could be assumed that “the parties wanted to prevent the defendant from using a misleading business term by continuing to use the term “architect”, which is likely to cause the consumer or other market participant to make a business decision.”

Violation of the duty to refrain by third parties must be prevented

Even the fact that the websites were controlled by third parties did not provide the former architect with unlimited protection. Rather, he is obliged to arrange for deletion from search portals and industry websites. The defendant is therefore obliged to do everything necessary and reasonable to prevent or reverse infringements – also by third parties – in addition to refraining from doing so himself.

In principle, he is not responsible for the actions of third parties; however, he must counteract infringements if they represent an economic advantage for him. Thus, the former architect cannot claim that the infringement was not actively committed by him.

Obligation to search for injunction debtors

In order to prevent a costly breach of the cease-and-desist agreement, the debtor must carry out research work. Even if this does not guarantee that the term “architect” can no longer be found on the internet in connection with the party obliged to cease and desist, serious efforts in the form of regular internet searches are sufficient for compliance with the required diligence. The Regional Court of Bonn understands efforts to mean active action. The party seeking injunctive relief must – if available – fill out forms on the respective search portals with which the entry can be removed. If there are none, the court refers to using emails or letters to arrange for deletion.

Even if this fails or takes some time until the final deletion, you are on the safe side here.

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