The judgment deals with the legal consequences of a delayed assertion of rights by the right holder and delayed conduct of proceedings.
1.
The judgment was based on the following facts. The plaintiff had been trading under its commercial designation “HEITEC” since 1984. It is (now: was) the owner of an EU word mark HEITEC registered with priority of March 18, 1998.
The defendant company was registered in the commercial register in 2003 under the name “HEITECH Promotion GmbH” and has been using this name since then. It is the owner of a German word/figurative mark “HEITECH PROMOTION” registered with a priority of 17/09/2002, and an EU trademark (word/figurative) “HEITECH” registered with priority of 06/02/2008, which it has been using since 06/05/2009 at the latest.
On 07/07/2008, the plaintiff learned by means of a letter from the EUIPO of the application for the EU trademark “HEITECH” of the defendant. On 22/04/2009 the plaintiff sent a warning letter to the defendant because of the use of the company sign and trademark “HEITECH”. In its response of 6/5/2009, the defendant proposed the conclusion of a delimitation agreement. The reply did not contain a cease-and-desist declaration.
More than three years later, a statement of claim dated 15/12/2012 was received – only by fax – at the Nuremberg-Fürth Regional Court (Court) on December 31, 2012. Neither originals of the statement of claim were submitted nor was the advance on court costs transferred. The Court pointed this out on 12/03/2013.
One year later, on December 30/12/2013, the Court received a pleading from the plaintiff’s representatives dated 12/12/2013 with a check for the court costs as well as a new statement of claim dated 4/10/2013.
On 14/01/2014, the Court informed the plaintiff that the first statement of claim dated 15/12/2012 also had to be served, which is why it was requested that the originals be submitted. These originals reached the Court on 22/02/2014. Two days later, the court informed the plaintiff that the requests in the originals of the application did not correspond to the requests in the application submitted by fax on 31/12/2012. The plaintiff had the originals sent again in a pleading received on 21/5/2014. The Court had already ordered the initiation of the written preliminary proceedings on 16/5/2014. The statement of claim dated 15/12/2012, was served on the defendant on 23/05/2014.
More than five years had passed between the proposal of the defendant of 06/05/2009 to conclude a delimitation agreement and the service of the first statement of claim on 23/05/2014.
2.
With the action, the plaintiff asserted claims arising from the infringement of its company name „HEITEC” and, in the alternative, infringement of its EU trademark. The plaintiff had requested, inter alia, that the defendant be ordered to cease and desist from naming its company “HEITECH PROMOTION GmbH” and from using the sign “HEITECH” for specific goods, in addition to ancillary claims.
The Court had awarded the plaintiff a claim for compensation of the costs for the warning letter and dismissed the remainder of the action. The Court of Appeal dismissed the claim in its entirety. The plaintiff appealed.
3.
The Federal Supreme Court dismissed the plaintiff’s appeal.
The defendant had in any case been using its company name and trademarks since 6/05/2009. The plaintiff had acquired knowledge of the defendant’s use of the mark required for the occurrence of forfeiture through the defendant’s letter of 6/05/2009, which the plaintiff had received on May 7, 2009.
The plaintiff had forfeited the asserted claims for injunctive relief and consequential claims for infringement of its company name as well as for infringement of its EU trademark pursuant to Sections 21 (1) and (2) MarkenG (Trademark Act) as well as Article 54 (1) and (2), Article 137 (1) sentence 2 and Article 111 (2) EUTMR (hereinafter: Art. 61 (1) and (2), Art. 137 (1) sentence 2 and Art. 138 (2) EUTMR 2017/1001).
The Federal Supreme Court states in this regard:
(1) In order to avert forfeiture pursuant to Sec. 21 (1) and (2) Trademark Act as well as Art. 61 (1) and (2), Art. 137 (1) sentence 2 and Art. 138 (2) EUTMR, actions of the owner of the earlier sign are required which seriously and unambiguously express his will to oppose the use of the younger sign and to remedy the alleged infringement of his rights.
(2) A pre-court warning, which the owner of the younger sign does not comply with, is suitable to interrupt the period of acquiescence, provided that the owner of the earlier sign asserts his rights within a reasonable time after the warning by way of an action.
In the case in dispute, the defendant had not submitted to the warning, but had proposed the conclusion of a delimitation agreement. Such an offer to negotiate could only interrupt the time limit for the occurrence of forfeiture by acquiescence if the plaintiff had at least indicated its willingness to enter negotiations within a period in which the defendant could expect to receive a response under regular circumstances. This was not the case.
(3) The filing of the action on 31/12/2012 did neither interrupt the running of the period of acquiescence. In principle, the filing of a document initiating proceedings reflects the serious and clear intention of the rights holder to assert its rights, so that it is generally suitable for ending the period of acquiescence.
Presently, the plaintiff had sent the requested originals only on 21/05/2014 and thus after the expiration of the period of acquiescence calculated since 7/05/2009. This delay was mainly attributable to the lack of diligence on the part of the plaintiff right holder. In view of Section 133 (1) sentence 1 of the German Code of Civil Procedure (ZPO), it was the responsibility of a reasonably diligent plaintiff to contribute to the expeditious enforcement of the rights asserted by the action to be served by providing the required copies. In this context, the court left open whether actions of the court are suitable to counteract acquiescence (this against the background that the court had arranged for the service of the action by means of copies made by itself).
(4) The Federal Supreme Court did neither accept the argument that a new five-year forfeiture period had commenced in each case as a result of the defendant’s further infringing acts since the warning notice.
With regard to the forfeiture of trademark claims in accordance with the principle of good faith under Section 21 (4) Trademark Act in conjunction with Section 242 German Civil Code (Bürgerliches Gesetzbuch – BGB), the Federal Supreme Court stated that repeated trademark infringements of the same kind, which occur intermittently, each trigger a new claim to cease and desist and cause the period relevant for assessing the time element in forfeiture to start anew, whereas in the case of continuous acts, the start of the first use is to be taken into account. For the question of forfeiture according to the principle of good faith, it depends on whether the infringer, who does not hold a trademark right position of his own, could justifiably trust that the right holder would not enforce his trademark right against the use.
However, these principles are not transferable to the forfeiture provisions of Sec. 21 (1) and (2) Trademark Act as well as Art. 61 (1) and (2), Art. 138 (2) EUTMR. These provisions serve to balance the legal positions of two owners of rights. The owner of the younger sign shall be allowed to use it if the owner of the earlier right has not enforced its sign during the five consecutive years of use of the younger sign. The defendant thus acquired a de facto right of continued use by way of forfeiture regarding all forms of use objected to in the warning letter of 22/04/2009.
(5) The forfeiture also extends to the subsequent claims for consent to the deletion of the company´s name, for information, damages, destruction, and compensation of the warning costs. It would be contrary to the purpose of acquiescence to preserve legal certainty if, after the expiry of the forfeiture period, the holder of the earlier right could not enforce any injunctive relief but could enforce corresponding ancillary or consequential claims in court.
In summary, a warning letter can interrupt forfeiture, but only if judicial or administrative measures (e.g., request for cancellation) are initiated within a reasonable period. Forfeiture is also conceivable if the action is not initially served for reasons attributable to the plaintiff and the deficiencies are not remedied until after the expiry of the forfeiture period.
