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Compensation for damages in the event of an unjustified trademark warning

LG Hamburg: Unjustified warnings due to an alleged trademark infringement lead to a claim for damages against the warning party.

In a decision dated November 22, 2016 (case no. 312 O 128/16), the Regional Court in Hamburg ruled that an unjustified warning letter due to an alleged trademark infringement leads to a claim for damages against the party issuing the warning letter.

Alleged trademark infringement

The party issuing the warning was the owner of the German word mark “S. B.”, which was registered for goods and services for entertainment, sporting and cultural activities at the German Patent and Trade Mark Office (DPMA). The warning letter was directed against the organizer of a sales fair for equestrian products under the name “R. S. S. B.”. Due to the allegation of trademark infringement, the organizer sought the assistance of a lawyer and obtained the withdrawal of the warning letter.

Due to the legal fees incurred, the organizer then sued the owner of the word mark “S. B.” for damages.

Unjustified trademark warning

According to the decision of the Hamburg Regional Court, the unjustified warning violated the organizer’s right to the established and exercised commercial enterprise pursuant to Section 823 BGB. The costs incurred as a result of the warning were therefore to be reimbursed by the party issuing the warning.

Lack of clarification of the facts

The court emphasized that the owner of the word mark had not sufficiently clarified the facts of the case or the legal situation before issuing the warning letter. With regard to the legal situation, she should not rely on her own judgment, but should seek the advice of an experienced lawyer and patent attorney. The fact that it failed to provide this clarification was to be considered negligent.

It should therefore be noted that the factual and legal situation must always be determined precisely before sending a warning letter due to a trademark infringement. As the case shows, unjustified warnings can quickly become expensive if the person being warned uses a lawyer to defend themselves. This applies not only to trademark law, but also to copyright law, media law, photo law, competition law and press law.

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