Withdrawal of application sufficient to eliminate infringement

In a decision published in April the Berlin Appeal Court ruled that the act of filing a trademark application, which is later withdrawn following a warning letter from the owner of an earlier similar mark, does not constitute infringement of that mark (Case 5 W 320/06, January 30 2007). The withdrawal of the application, as well as a serious declaration not to proceed with registration, is sufficient to prevent the need for a court decision. The applicant is not required to give a formal cease and desist declaration containing a contractual penalty in case of non-compliance.

The case arose after the plaintiff had sent a formal warning letter (requesting a cease and desist declaration under the threat of penalty) to the defendant who had filed an application for trademark which was highly similar to the plaintiff's own earlier registration. The defendant, an attorney and in his own words a "trademark speculator", immediately cancelled his application but refused to sign a formal cease and desist declaration. Thereupon, the plaintiff applied for an interlocutory injunction for the infringement of its earlier mark because of the defendant's failure to sign the declaration. The plaintiff alleged that infringement was still possible as the filing of a contested trademark application is terminated only by a formal cease and desist declaration. Both the Berlin First Instance Court and the Berlin Appeal Court refused to grant the injunction.

Under German procedural rules an act is seen as an infringement of an IP right requiring an injunction if there is a danger of repeat infringement. This type of infringement may require a formal cease and desist declaration, including a penalty in case of non-compliance. If, however, the act is a preparatory measure that may lead to later infringement the cessation of the act is itself sufficient to eliminate any danger of a first infringement. It is undisputed that a formal cease and desist declaration is not required in this latter situation.

Interpreting the ambiguous and limited case law of the Supreme Court in this area in relation to the issues at hand, the Berlin Appeal Court confirmed that the filing of a trademark application does not constitute an infringement of an earlier right as the mere bureaucratic act of opening a file at the German Patent and Trademark Office is not an act which, of itself, distinguishes the goods and services of one party from those of another.

As the present case related to a trademark application which, moreover, was filed by a trademark speculator without any related established business, there was no risk that use of the application was imminent. The defendant's withdrawal of the application and the straight-forward declaration to discontinue definitively any such application ruled out the risk of first infringement. The defendant was not required to give a formal undertaking not to use the withdrawn trademark application.

Florian Schwab, Boehmert & Boehmert, Munich