BGH, default judgment of February 22, 2024 – I ZR 217/22
It is now a matter of course that lawyers must represent their clients’ interests in the media as well as in law. In trademark law, Section 19c of the German Trademark Act (MarkenG) plays an important role in the representation of interests because this provision can bring the trademark infringer into the public eye. The provision enables the publication of a judgment against the trademark infringer if the factual requirements are met. Put simply, the trademark infringer is ordered to publish a judgment at his own expense stating that he has infringed the trademark—he must put himself in the pillory. In the decision discussed here, the Federal Court of Justice (BGH) specifies the requirements for this claim. This article will focus exclusively on the question of when there is a “legitimate interest” in publishing the judgment.
The lower court rejects a “legitimate interest”
The lower court, the Munich Higher Regional Court (OLG), had rejected a claim for publication of the judgment because there was no “legitimate interest” in the publication of the judgment. The lower court assumed that, after weighing up the conflicting interests of the parties and considering the principle of proportionality, there was no legitimate interest in publishing the judgment at the relevant time of the last oral hearing. There was no (further) market confusion caused by the defendant’s trademark infringement, as more than seven years had passed between the trademark infringement and the publication of the judgment. Moreover, the defendant was only slightly at fault. There was therefore no longer any impairment of the plaintiff’s interests.
Decision of the Federal Court of Justice: Justified interest exists
The Federal Court of Justice overturned the decision of the lower court because it did not consider this argument to be convincing. The lower court had overlooked the fact that the last trademark infringement was not seven but six years ago. It had also overlooked the fact that the infringing goods had been distributed and advertised nationwide and over a longer period of time, and that the relevant trade press had also reported on the distribution of the goods. Finally, the lower court also failed to take into account the fact that the plaintiff had drawn the defendant’s attention to the trademark infringement in advance, so that the defendant should have been aware of the problem, which is why its fault should not be regarded as slight. The Court of Appeal also failed to recognize that the deterrent effect that a publication of a judgment is intended to achieve must also be taken into account. Finally, the lower court should also have taken into account that the publication of the judgment should have a deterrent effect on other trademark infringers.
Conclusion
The Federal Court of Justice has identified a number of aspects that must be taken into account in connection with “legitimate interest”. This case once again impressively demonstrates that a precise examination of the respective circumstances is required. The issue should also not be taken lightly because, as a trademark infringer, you are at risk of being pilloried and this pillory effect can be an effective means of exerting pressure on the trademark owner in the context of an out-of-court settlement. We would be happy to advise you on this topic.
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