„Waiver of the defence of continuation of the action"

In the case of warning letters in the field of industrial property law, it is customary for the claimant to attach a pre-formulated cease-and-desist declaration, which is subject to criminal sanctions, to the cease-and-desist letter. Should the claimant demand the unrestricted waiver of the plea of continuation in such a pre-formulated cease-and-desist and obligation declaration, this leads to the invalidity of an agreement on the payment of a contractual penalty according to a judgement of the Higher Regional Court Frankfurt am Main of 23 July 2020. The judgement of the Higher Regional Court of Frankfurt am Main is printed, for example, in GRUR-RR 2020, page 556 et seq.

The infringement of an industrial property right, an infringement of competition law and/or an infringement of copyright law give rise to a risk of repetition of future infringing acts and thus to a claim for injunctive relief. The risk of repetition can only be eliminated if the infringer makes a cease-and-desist declaration subject to a penalty. The infringer thereby undertakes to refrain from performing a certain act and to pay an appropriate contractual penalty for each case of infringement. The obligation to pay a contractual penalty is not already established by a unilateral declaration of the infringer, but requires the conclusion of a contract. In principle, the general provisions of the German Civil Code apply to the conclusion of such a contract. If a pre-formulated cease-and-desist declaration is attached to the warning letter, this constitutes an offer to conclude a cease-and-desist agreement with this content within the meaning of Section 145 BGB. Should the debtor sign this pre-formulated cease-and-desist declaration without amendments and return it to the claimant, the contract is thereby concluded with the consequence that the claimant can demand the agreed contractual penalty for future infringements. Should the infringer submit an amended cease-and-desist declaration, this constitutes a rejection of the claimants offer, combined with a new offer, Section 150 (2) BGB. In this case, a corresponding contract is only concluded if the claimant, for his part, agrees to the amendments and accepts the amended cease-and-desist declaration sent by the infringer.

It should be noted that the provisions in a pre-formulated cease-and-desist declaration and declaration of commitment can be regarded as General terms and conditions (GTCs). This is regularly indicated by the first appearance and the word “pre-formulated”.

Accordingly, contracts concluded on the basis of pre-formulated cease-and-desist declarations are to be reviewed as to whether or not they are effective under the GTC provisions. The Higher Regional Court of Frankfurt am Main has now ruled in the aforementioned judgment that the “unrestricted waiver of the plea of continuation” demanded in a pre-formulated cease-and-desist declaration constitutes an unreasonable disadvantage to the infringer/debtor with the consequence that a contract concluded thereupon is invalid pursuant to Section 307 (1) BGB. In such a case, the claimant may thus not claim a contractual penalty in the event of any infringements.

If an infringer/debtor promises the payment of a contractual penalty – as usual – “for each case of infringement”, the interpretation of the contract may show that several individual infringements not too far apart in time are to be regarded as one infringement (see e.g. BGH GRUR 2015, page 1021 marginal no. 29 – Kopfhörer-Kennzeichnung) with the consequence that the contractual penalty can only be claimed once. Thus, for example, if the infringer/debtor has 100 boxes of infringing products transported in a truck after concluding a contractual penalty agreement, there would not be 100 infringements, but only one infringement. If it is now demanded that the infringer/debtor waives the “plea of continuation of the infringement”, this can be interpreted as meaning that in the example case the claimant would then like to demand the contractual penalty in 100 cases after all. Case law sees this as an “unreasonable disadvantage”, at least in General terms and conditions (cf. also the decision of the Federal Court of Justice of 10 December 1992, BGHZ 121, page 13 et seq. as well as Köhler/Bornkamm/Feddersen, Kommentar zum UWG, on Section 12, 1.219 with further references. N.).

Accordingly, the wording “waiving the defence of continuation” should be avoided in pre-formulated cease-and-desist declarations.