The starting point of a legal dispute decided before the Higher Regional Court of Stuttgart was the advertising mailing of a German company. The company sent advertising letters to more than 30,000 recipients in 2017. The letters advertised the replica of a well-known scaffolding system. The word mark of a well-known competitor was used in several places and highlighted graphically.
Revenue share as license damages in the event of trademark infringement
The competitor concerned then sent the competitor a warning letter for trademark infringement. The advertising company issued a cease-and-desist declaration with a penalty clause. In this declaration, it undertook, among other things, to compensate all damages that have arisen and will arise in the future as a result of the advertising campaign.
On the basis of this agreement, the scaffolder claimed license damages amounting to 8% of the defendant’s turnover before the Regional Court of Stuttgart. The defendant considered this amount to be arbitrary and therefore appealed to the Higher Regional Court of Stuttgart.
OLG Stuttgart affirms damages on the basis of a sales license
In its ruling of 14.01.2021 (case reference: 2 U 34/20), the Higher Regional Court confirmed the plaintiff’s claim for damages in accordance with the principles of the so-called license analogy. According to this, a claim for damages for trademark infringement can be calculated on the basis of the amount that the infringer would have had to pay as reasonable remuneration if he had been granted permission to use the infringed right. The calculation of the fictitious license fee on the basis of a so-called sales license is not objectionable and is quite common.
To be considered for license: Infringement period and pro rata turnover
However, the judges did not agree with the license amount of 8% of the total turnover set by the regional court. The customers would have assumed the authorship of the better-known scaffolding company due to the use of the other, better-known word mark. Therefore, according to the judges, more attention was paid to the advertising. However, only a small part of the total turnover in the period in question was attributable to the trademark infringement.
The Higher Regional Court therefore reduced the claim of the well-known scaffolder to 5% of the turnover of the defendant competitor. The court thus clarified that, in addition to the “classic” criteria such as the degree of recognition of the infringed trademark and the type of infringement, the period of infringement and the proportionate turnover achieved during this period are also of particular importance when calculating the damages.