The plaintiff is a company under Dutch law. It is the proprietor of the IR trade mark “EVEREST”, registered in particular for fruit and vegetables and trade in these goods. The applicant is also the proprietor of an EU word mark ‘EVEREST’, which claims protection for fresh fruit and vegetables and mushrooms and services relating thereto. The defendant, which is based in Hamburg, is involved in projects for obtaining pasture and cultivation areas in high-rise buildings to be built specifically for this purpose, inter alia using the designation “EVEREST VERTICAL FARMING”.
By letter dated 11 June 2018, the plaintiff issued a warning letter to the defendant on the basis of its IR trade mark “EVERST” and requested it to submit a declaration to cease and desist with penalty clause. The plaintiff enclosed a pre-formulated cease-and-desist declaration with the warning letter, without naming the countries for which the IR trade mark enjoys protection in detail. By letter dated 18 June 2018, the defendant submitted a cease-and-desist declaration with a penalty clause, according to which it undertook to refrain from using and/or allowing the use of the designation “EVEREST” in business dealings for the development and consultancy in connection with vertical farming projects and/or real estate projects in the field of agribusiness for the Benelux countries, Denmark, Great Britain, Germany, France, Italy and Russia. This declaration was identical in wording – except for the country reference – to the declaration to cease and desist pre-formulated by the plaintiff. By email of 4 July 2018, the plaintiff declared that it accepted the defendant’s declaration of 18 June 2018 to the extent submitted. Furthermore, it reserved the right to assert further rights, as the declaration made by the defendant was limited to the enumerated countries. In this email of 4.7.2018, she pointed out for the first time that she was also the proprietor of an EU word mark “EVEREST”. Accordingly, it demanded that the defendant issue a further cease-and-desist declaration for the countries of the European Union which were not covered by the cease-and-desist declaration of 18 June 2018. The defendant did not submit the further requested cease-and-desist declaration. By letter of 3 August 2018, the plaintiff informed the defendant that the defendant would continue to use the term “EVEREST Vertical Farming” on its website under the heading “EVEREST”. The plaintiff sued the defendant before the Regional Court of Hamburg for injunctive relief, information, assessment of damages, reimbursement of pre-litigation legal costs and payment of a contractual penalty of €5,000.00. The Hamburg Regional Court upheld the action. The Hamburg Higher Regional Court followed the reasoning of the court of first instance.
The submission of a cease-and-desist declaration has two functions. The submission of a sufficiently punishable cease-and-desist declaration eliminates the risk of repetition of the infringements complained of, so that the cease-and-desist claim is thereby satisfied and no longer exists as far as the cease-and-desist declaration goes. Furthermore, the issue is that the infringed party wants to be entitled to payment of the contractual penalty for future infringements. As already follows from the element “contract” in the word “contractual penalty”, such a claim only exists if the parties have concluded a contract. If – as in this case – the infringed party encloses a pre-formulated cease-and-desist declaration with the warning notice, this regularly constitutes an offer to conclude a corresponding cease-and-desist agreement with this content (see in particular BGH GRUR 2010, 1120, para. 15 – Vollmachtsnachweis; Ströbele/Hacker/Thiering, Kommentar zum Markengesetz, 13th edition, on Section 14, para. 537 with further references). N.). A contract is concluded by offer and acceptance. If the infringer signs and returns the pre-formulated cease-and-desist declaration, this constitutes acceptance with the consequence that a cease-and-desist agreement has been concluded. However, if the infringer amends the pre-formulated cease-and-desist declaration (e.g. reduces the contractual penalty demanded in the pre-formulated cease-and-desist declaration) and thus submits a correspondingly modified cease-and-desist declaration, this constitutes a rejection of the original offer to conclude a cease-and-desist agreement, combined with a new offer to conclude a cease-and-desist agreement with the amendments, Section 150 (2) BGB. In such cases, a contract is only concluded if the infringed party accepts the amended cease-and-desist declaration with a penalty clause. In the present case, the plaintiff had based the warning notice of 11.6.2018 on the IR trade mark and had not limited it in the pre-formulated cease-and-desist declaration to the countries for which the IR trade mark is protected. For its part, the defendant submitted a penalised cease-and-desist declaration that corresponded to the plaintiff’s drafting proposal with the proviso that the protected countries were expressly named. It can be argued whether this constitutes an “amendment” within the meaning of § 150 (2) BGB with the consequence that a new offer would exist, or a mere “clarification”. However, it did not matter because the plaintiff accepted the cease-and-desist declaration submitted by the defendant with the country reference in an email dated 4 July 2018. However, the plaintiff reserved the right in this email that it would also assert further claims, namely on the basis of the EU word mark “EVEREST” – which was not mentioned in the warning of 11 June 2018. The Hamburg courts correctly did not interpret this reservation as a new offer, but found that by the plaintiff’s acceptance according to the email of 4.7.2018, a cease-and-desist agreement for the use of the designation “EVEREST Vertical Farming” for the named Benelux countries, Denmark, Great Britain, Germany, France, Italy and Russia was concluded.
If the infringer violates the cease-and-desist agreement, he owes payment of the contractual penalty on the one hand. On the other hand, the infringed party is again entitled to injunctive relief, whereby he can demand a higher contractual penalty than in the first warning, because the contractual penalty agreed in the cease-and-desist agreement was obviously not high enough to deter the infringer from further infringements.
Since the defendant was still using the name in question, “EVEREST Vertical Farming”, on 3 August 2018, i.e. after the cease-and-desist agreement had been concluded, the plaintiff was accordingly entitled to the asserted claims for injunctive relief, information, assessment of damages, reimbursement of pre-litigation legal costs and payment of the contractual penalty.
