In the “Zentrierstifte II” case, the Düsseldorf Higher Regional Court also dismissed the counterclaim for damages filed by the defendant on the grounds of an unjustified warning letter. The warning letter issued by the plaintiff was unjustified. However, the plaintiff had not acted culpably in issuing the warning letter, so that the defendant had no claim to damages, see GRUR-RR 2019, page 211, paragraph 40 et seq.
In its decision of 15 July 2005, reprinted e.g. in GRUR 2005, page 882 et seq., the Grand Senate of the Federal Supreme Court decided that an unjustified warning letter constitutes an illegal encroachment on the right of the cautioned party to the established and practised business enterprise. The right to the established and exercised business enterprise is an “other right” within the meaning of § 823 (1) BGB. With an unjustified warning letter the wrongly warned has thus on the one hand a (guilt-independent) cease and desist claim according to 1004 BGB analogously in connection with 823 exp. 1 BGB and on the other hand a claim for damages, if the warning person acted culpably, in particular the lawyer’s fees, which arise to the wrongly warned one for the extrajudicial defense against the requirements made valid with the warning letter.
In its judgement of 19 January 2006, printed e.g. in GRUR 2006, page 433 et seq., the Federal Supreme Court further ruled that an unjustified warning letter vis-à-vis customers also constitutes an illegal encroachment on the rights of the supplier’s established and operated business, because experience has shown that a warning letter can severely disrupt the business relationship between the customer and the supplier. It often happens that customers want to avoid the expense of dealing with a warning letter and instead remove the products of the supplier concerned from the range in order to avoid a legal dispute. If the customer warning is unjustified, the supplier also has the right to cease and desist (independent of fault) as well as a claim for damages (dependent on fault). The supplier can then demand from the party who has issued the unjustified warning letter to the customers that he must refrain from issuing a warning letter to the customers in the future. Such a claim for injunctive relief may also be enforced by way of an interim injunction. The supplier whose customers have been wrongly warned should make use of this option in order to avoid economic disadvantages. If, for example, a customer should terminate the business relationship with the supplier as a result of an unjustified warning letter, the supplier may claim damages (loss of profit, etc.) from the person who issued the warning letter, provided that the person issuing the warning letter has acted culpably.
In the decision “Zentrierstifte II”, the Düsseldorf Higher Regional Court denied such fault. In that case, the plaintiff had warned the defendant for infringement of Community designs for centering pins and subsequently sued the defendant.
According to the findings of the Düsseldorf Higher Regional Court, the Community designs were new and peculiar at the time of the warning and the designs used by the defendant fell within the scope of protection of the Community designs. In particular, the defendant defended itself by declaring the Community designs invalid on the ground that they were exclusively due to their technical function within the meaning of Article 8(1) CDR.
The Düsseldorf Higher Regional Court referred the question to the ECJ as to whether the Community designs of the plaintiff were exclusively conditioned by the technical function of the protected centering pins. The ECJ answered this question in the affirmative, see GRUR 2018, 612 – DOCERAM/CeramTec. The applicant’s Community designs were therefore to be declared invalid from the outset.
Thus, the warning letter issued by the plaintiff on the basis of these Community designs was also unjustified. The unjustified warning letter was an unlawful encroachment on the defendant’s rights in the business enterprise established and operated. However, according to the Düsseldorf Higher Regional Court, the plaintiff in the present case could not be accused of culpable conduct, so that the defendant would not be entitled to the claim for damages asserted with the counterclaim on account of an unjustified industrial property right warning for reimbursement of the pre-trial lawyer’s fees due to no fault of the plaintiff. At the time of the warning letter, the property right situation had not been clear. The legal position represented by the plaintiff was justifiable. At the time of the warning letter, the plaintiff had been able to assume, with the opinion prevailing in Germany at that time, that the rights to protection of intellectual property rights were not null and void because of technical limitations.
