Damage due to trademark infringement in the case of a free license?

If the owner of a property right waives its monetary exploitation, he does not suffer any damage from the unlawful use of the same. This was decided by the OLG Düsseldorf.

The German ÖKO-TEST AG is the publisher of the nationally known magazine “ÖKO-TEST” and also the owner of various “ÖKO-TEST” labels. The labels are all protected as trademarks. The company generally allows manufacturers of tested products to advertise with the ÖKO-TEST label. To do so, they must conclude a free license agreement.

“ÖKO-TEST” sues for injunction and damages due to label use

The manufacturer of a toothpaste also made use of this option. After ÖKO-Test AG had tested a product and subsequently rated it as “very good”, the company concluded a free license agreement. This entitled it to use the then current ÖKO-TEST label. However, the company used the “ÖKO-TEST” label beyond the powers granted to it under the contract.

ÖKO-TEST AG then sent the manufacturer a warning letter and requested that it issue a cease-and-desist declaration. This was unsuccessful. The AG then went to court and demanded that the toothpaste manufacturer cease the unlawful use of the trademark and pay damages.

OLG Düsseldorf: No damage in case of free license

ÖKO-TEST AG was initially successful with these claims. However, after the defendant company lodged an appeal with the Düsseldorf Higher Regional Court, the judgment only stands with regard to the claim for injunctive relief against the use of the “ÖKO-TEST” label (judgment of November 19, 2020 Ref.: 20 U 152/16).

In the view of the Düsseldorf judges, ÖKO-Test AG’s claim for damages is not tenable. This is because, in addition to a trademark infringement, such a claim requires an involuntary loss of assets. If the owner of a trademark offers a free license for all uses and thus fully exploits his exclusive rights in monetary terms, such an involuntary loss of assets cannot arise in the opinion of the court.

Court clarifies: No blanket claim for damages

The Düsseldorf Higher Regional Court thus clarifies that there is no blanket claim for damages in the event of unlawful use of a trademark. Only if the rights holder also exploits his rights commercially can a loss of assets and thus also a loss to be compensated be assumed.

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