With the cease and desist obligation, which is subject to a penalty, the recipient of a warning letter declares to refrain from a certain conduct (the "infringing act") in the future ("form of infringement"). In the event of a breach of this obligation, the warned party promises an appropriate contractual penalty.
If the warned party undertakes to pay an appropriate contractual penalty in a cease-and-desist declaration with a penalty clause, the risk of repetition necessary for the cease-and-desist claim does not apply: an action for a cease-and-desist order or an application for an interim injunction would be unfounded. Whether the person issuing the warning accepts the cease-and-desist declaration or not is irrelevant for the cessation of the risk of repetition. The elimination of the danger of repetition and thus the avoidance of a legal dispute is the actual purpose of issuing a cease-and-desist declaration with a penalty clause.
An infringement that has already been committed gives rise to the presumption of a "risk of repetition": Anyone who has once infringed an industrial property right or violated provisions of competition law/unfair competition law is presumed to do so again until he promises a cease-and-desist declaration with a penalty clause for the case of repetition.
This presumption can only be dispelled by the submission of a cease-and-desist declaration with a penalty clause (e.g. BGH v. 9.11.1995 - I ZR 212/93 - Wegfall der Wiederholungsgefahr I). This even applies if the cease-and-desist declaration refers to the specific form of infringement. Such a cease-and-desist declaration can also eliminate the danger of repetition (BGH GRUR 1996, 290 - Wegfall der Wiederholungsgefahr). These principles apply to all claims for injunctive relief. The risk of repetition is only deemed to be eliminated by a promise of a contractual penalty. A fixed contractual penalty can be promised, e.g. "if a contractual penalty of € 5,000.00 is avoided". However, the debtor can also promise a contractual penalty according to the so-called "new Hamburg custom".
If the warned party has violated the cease-and-desist declaration, the risk of repetition is revived. Now a higher contractual penalty must be promised. Only such a penalty eliminates the renewed risk of repetition. An exception applies to cease-and-desist declarations promised in accordance with the so-called "new Hamburg custom" (see above). These cease-and-desist declarations are already subject to a higher contractual penalty in the event of a repeat infringement (BGH v. 1.12.2022 - I ZR 144/21 - Wegfall der Wiederholungsgefahr III).
However, anyone who submits a serious cease-and-desist declaration backed by a penalty only removes the presumption of a risk of repetition if the person issuing the warning does not reject the cease-and-desist declaration backed by a penalty (prepared or modified by the person issuing the warning) (abandonment of previous case law: BGH v. 1.12.2022 - I ZR 144/21 - Wegfall der Wiederholungsgefahr III). If the person issuing the warning refuses to accept a serious cease-and-desist declaration, the person being warned can "immediately acknowledge" in a lawsuit. As a result, even if the warning party is ordered to cease and desist, the costs of the proceedings must still be paid by the warning party (cf. Section 93 ZPO).
"Form of infringement" ("Verletzungsform") and "infringing act" ("Verletzungshandlung")
The cease-and-desist obligation is generally the first pre-formulated obligation of the plant to issue a warning. It is the act of infringement poured into the concrete form of infringement. Here the person issuing the warning must describe exactly which action of the alleged infringer he would like to have omitted in the future. While the "infringing act" is the facts of the case, the "form of infringement" is what the warning party would like to see omit in the future.
In order not to expose himself to the risk of a negative declaratory action, he must also limit his prohibition to such future actions as are also prohibited by law. The right to cease and desist is often the most important and, because of the high value of the object, by far the most expensive claim for the person issuing the warning - besides the right to information. It does not presuppose any fault. The objection "I didn't know that" is therefore irrelevant.
Often the form of infringement in the warning is too broad. Many cautioners would like to receive with it a much further omission requirement by contract, than they would be entitled by law. The purpose: In future, the person issuing a warning should also pay a contractual penalty for such actions, which would not even be prohibited by law.
If you offer T-shirts with a trademarked name on eBay, you do not have to undertake to refrain from "importing" such T-shirts if you have not introduced them yourself.
If the dunned party submits to such a broad form of infringement, an effective cease-and-desist agreement has been concluded in principle. Limiting the form of infringement in such a way that it corresponds to the act of infringement prohibited by law is therefore the most important task of the admonitioner.
"In particular" formulations
Many pre-formulated cease and desist declarations contain a general description of a legally prohibited act followed by a "in particular" part. It then describes the infringing act. Such formulations are too vague for some Higher Regional Courts before the "in particular" part. The deletion of the "In particular" addition would therefore be a partial withdrawal of action (OLG München BeckRS 2009, 23375).
Cease and desist orders repeating the wording of the law
The text of the law is also quite often reproduced. In a court application, this would only be permissible in exceptional cases, namely only if the injunctive relief could not otherwise be formulated at all, so-called "orders repeating the wording of the law".
In most cases, the pre-formulated cease-and-desist declaration with penalty clause contains a more comprehensive ban than the law would grant the cease-and-desist letter. The purpose of the exercise is obvious: If the dunned party makes the pre-formulated declaration, a cease-and-desist agreement is concluded. For a future offence of the admonitioner it then only depends on whether the offence concerns an action, to whose omission the admonitioner has committed himself. Whether this action is illegal is then irrelevant. Thus, for example, the person issuing the warning may also demand contractual penalties for future minor infringements (see BGH v. 10.6.2009 - I ZR 37/07 - Unrichtige Aufsichtsbehörde).
Usually as a second obligation, the pre-formulated cease-and-desist declaration contains the promise to pay a certain contractual penalty in the event of a violation of the cease-and-desist declaration. Without such an obligation, the risk of repetition is generally not eliminated. Anyone who does not undertake to pay an appropriate contractual penalty must therefore expect a legal action - an action or a temporary injunction.
Exception 1: First infringement risk ("Erstbegehungsgefahr")
Something else only applies to the so-called "first infringement risk". No contractual penalty promise is required here. It is sufficient if the complainant declares simply to refrain from the disputed behaviour.
Exception 2: Notarial cease-and-desist declaration of discontinuance
The notarial cease-and-desist declaration is also made without a penalty clause. It is, so to speak, a hybrid between contract and judicial title and should be treated with caution.
"Abandonment of the continuity"?
The pre-formulated contractual penalty payment obligation regularly contains the phrase "waiving the objections of the continuation context" or a similar phrase. This should always be deleted. To eliminate the risk of repetition, it is not only not necessary to renounce the plea of continuation. If requested, this is an indication of an abuse of rights (see BGH v. 15.12.2011 - I ZR 174/10 - Bauheizgerät; to waive the objection of the continuation connection for systematic existence: BGH NJW 1993, 721 - Fortsetzungszusammenhang).
Two wordings have become established as the amount of the contractual penalty. Either a fixed amount per infringement is demanded, e.g. because of the value in dispute of the district courts € 5,001.00. Or a contractual penalty according to the so-called "modified Hamburg custom" is demanded: For each infringement, the infringer shall pay an appropriate contractual penalty to be determined by the creditor, the appropriateness of which must be verified by the competent court in the event of a dispute. However, the amount of the contractual penalty may not be determined by the court. The court may only review a contractual penalty fixed by the creditor (BGH GRUR 1978, 192 - Hamburger Brauch).
Information, submission of invoices
The third pre-formulated obligation typically concerns the information of the infringer. On the one hand, it serves to reveal the origin of the infringing goods (independent claim for information) and to enable the infringing party to calculate his damage (dependent or accessory claim for information).
Since 1.10.2009 there is also the independent "third party information". In the event of an obvious infringement of rights or after an action has been brought, forwarding agents, warehouse keepers or the operators of online auction platforms may also be obliged to provide information.
Determination of the liability for damages
Usually as the next pre-formulated clause, the determination of the obligation to pay damages shall be acknowledged.
Destruction of infringing goods
In the event of an infringement of industrial property rights, a destruction of the infringing goods is often demanded. This claim can only be enforced if it is proportionate in the specific case.
The submission of a modified (amended) cease-and-desist declaration with a penalty clause after receiving a warning notice, for example in trade mark law or competition law, is always recommended: A modified cease-and-desist declaration must be expressly accepted by the sender of a cease-and-desist letter if it has been modified in essential points. Some people forget this. If the declaration of acceptance is missing, the danger of repetition disappears. However, no cease-and-desist agreement is concluded. The consequence: The person issuing the warning would lose an action for an injunction because the danger of repetition has ceased to exist. In the event of a repeated infringement, however, he cannot claim a contractual penalty.
According to supreme court rulings (BGH, judgement of 17 September 2009 - I ZR 217/07), the offer to conclude a cease-and-desist agreement in the form of a pre-formulated cease-and-desist declaration is usually not limited in time. Thus, it does not have to be accepted immediately by the sender of the cease-and-desist letter, but can be accepted at any time.
An exception applies to the so-called "imposed third party submission": Here, the person being warned does not issue the cease-and-desist declaration to the person issuing the warning, but to a third party, such as a competition association. In this case, the recipient of the unsolicited cease-and-desist declaration must expressly accept it in order to eliminate the risk of repetition (OLG Frankfurt, judgment of 9 October 2008, Case No. 6 U 128/08). An amendment is, for example, the reduction of an excessive contractual penalty to a reasonable amount or the limitation of the form of infringement to the infringing act actually committed.
Appropriate amount of contractual penalty
In many cases, a contractual penalty of € 5,001.00 is appropriate, but it is not uncommon for it to be lower or higher. Many lawyers prefer an amount of more than € 5,000.00 because the district courts are competent to decide on contractual penalty disputes above a value of € 5,000.01. In fact, the district courts are often more competent to decide on contractual penalty disputes. In fact, however, the regional courts have jurisdiction for contractual penalty disputes in the field of intellectual property, irrespective of the amount in dispute.
Risks of issuing a modified cease-and-desist declaration
The formulation of a "modified" cease-and-desist declaration is often a tricky balancing act for the person being warned: if the formulation is too narrow, the risk of repetition may not be eliminated. He risks an expensive lawsuit, which he wanted to avoid by issuing the cease-and-desist declaration. If he formulates it too broadly, he risks contractual penalties for future actions that would not be objectionable under the law.
However, a modified cease-and-desist declaration of one's own must also be made "seriously". This is not the case, for example, if the cease-and-desist declaration is submitted without the address of the person warned and his whereabouts are unknown (cf. LG Düsseldorf judgement of 7. June 2013 - 34 O 112/10).
A cease-and-desist declaration must also be made without a condition (BGH 07.10.1982 - I ZR 120/80 - Vertragsstrafeversprechen). Exceptionally, however, a cease-and-desist declaration may be made subject to a change in the legal situation (BGH judgement of 1 April 1993, I ZR 136/91 - Bedingte Unterwerfung).
A cease-and-desist declaration with a penalty clause must be unambiguous and sufficiently specific and must indicate the debtor's serious intention not to commit the act in question again and must therefore be secured by an appropriate promise of a contractual penalty. It must also fully cover the existing statutory cease-and-desist claim in terms of content and scope and accordingly be unrestricted, irrevocable, unconditional and, in principle, also without specifying an end date (BGH of 12.1.2017 - I ZR 117/15 - YouTube-Werbekanal).
Cease-and-desist declaration subject to the resolutory condition of a "generally binding" clarification
Cease-and-desist declarations are sometimes issued
"under the resolutory condition of a generally binding, i.e. based on law or supreme court case law, clarification" of the conduct to be ceased.
According to the OLG Frankfurt, such a declaration to cease and desist is admissible and eliminates the risk of repetition (OLG Frankfurt a. M., order of 04.05.2017 - 6 W 21/17 - Elimination of the risk of repetition by declaration of submission with reservation).
Cease-and-desist declaration subject to the resolutory condition of an "unambiguous" clarification
A declaration to cease and desist subject to the resolutory condition
"of an unambiguous clarification based on the law or supreme court rulings".
of the conduct to be ceased does not, however, eliminate the risk of repetition. This is because it is uncertain as of when exactly the "unambiguous clarification" of a specific legal issue can be assumed in case law (OLG Hamburg, judgment of January 22, 2015 - 5 U 271/11 - partnership).
Cease-and-desist declarations with other conditions
Restrictions or conditions other than those relating to a change in the law or in the case law of the highest courts are generally incompatible with the purpose of a cease-and-desist declaration subject to a penalty, namely to have a clear basis for the sanction of future infringements without recourse to the courts (BGH judgment of June 7, 1982 - VIII ZR 139/81; BGH GRUR 1993, 677 - Bedingte Unterwerfung).
It is therefore inadmissible in copyright law to issue a cease-and-desist declaration under the
"Potestative condition of authorship/activity legitimation"
(see OLG Hamburg v. 16.10.2014 - 5 U 39/13). This is because in copyright law - unlike, for example, in the case of infringement of a registered trademark - the active legitimation often cannot be clearly clarified. In addition, it is unclear what is meant by "potential condition" (OLG Hamburg loc. cit.).
If the warned party culpably violates the cease-and-desist obligation in a cease-and-desist declaration with a penalty clause, the agreed contractual penalty becomes due. Prerequisite: The cease-and-desist declaration was not modified or only insignificantly modified. Otherwise, a cease-and-desist declaration with a penalty clause must be accepted for the contractual penalty to become due. In principle, the promise of a contractual penalty does not refer to acts prior to the conclusion of the contractual penalty agreement (BGH, judgement of 18.5.2006 - I ZR 32/03 - Vertragsstrafvereinbarung). Therefore, contractual penalties can only be claimed as of the conclusion of the contractual penalty agreement (cease-and-desist agreement).
Breach of cease-and-desist declaration gives rise to new risk of repetition
Second warning for a comparable violation possible
As a second consequence of a breach of the cease-and-desist declaration, the danger of repetition arises again. This danger of repetition now only ceases to exist if a higher contractual penalty is promised. It is therefore possible to issue a second warning for the same reason with an increased contractual penalty.
Contractual penalty only in case of fault
However, the contractual penalty is only due in the case of fault on the part of the contractual penalty debtor (the warned party). The infringer must therefore have acted at least negligently. For fault, fault on the part of the vicarious agents of the contractual penalty debtor is sufficient. Whether the new infringement is covered by the contractual penalty promise must be determined by interpreting the cease and desist agreement according to general principles of interpretation. Here, above all, the "core area case law" must be taken into account.
Amount of contractual penalties in the case of "Hamburg custom
If a contractual penalty has been promised according to modified "Hamburger Brauch", there is often a dispute about the amount of the contractual penalty due. The debtor of such an obligation can have a claim for contractual penalty of the forbearance creditor reviewed by the court as to whether the creditor has set the amount reasonably. In the judicial review of equity pursuant to Section 315 of the German Civil Code (Bürgerliches Gesetzbuch - BGB), the type and size of the company of the contractual penalty debtor must also be taken into account (OLG Karlsruhe GRUR-RR 2016, 92). Accordingly, the OLG Karlsruhe had assumed a contractual penalty for a breach of a cease-and-desist obligation in the amount of € 4,000.00 to be reasonable only in view of the size of the contract penalty debtor's company, because a large company with a high turnover can only be held to comply with the obligation to indicate the basic price "by imposing severe contractual penalties". The company on which the facts of the case are based achieved an annual turnover of € 160,000,000.00. In addition, the severity of the fault (intent? negligence? slight negligence?) plays a role. The lower the fault of the contractual penalty debtor, the lower the appropriate contractual penalty will often be.
Several breaches of a cease-and-desist declaration subject to a penalty clause
The amount of the contractual penalty for several breaches of a contractual penalty promised in accordance with the "Hamburg custom" is also often disputed. A schematic multiplication of the alleged infringements is misguided. If there are several infringements of the same kind, not too far apart in time and based on negligence, according to the case law of the Federal Court of Justice it has to be examined whether there is only one infringement at all (BGH, judgement of 09.07.2015 - I ZR 224/13 - Kopfhörer, para 29; judgement of 25.01.2001 - I ZR 323/98 - Trainingsvertrag, para 29; all cited in juris). In such a case, these infringements would legally only be considered as one infringement if they are connected in such a way that they were committed in a similar manner and disregarding the same obligation (BGH GRUR 2017, 823 - Luftentfeuchter; BGH GRUR 2015, 2021 - Kopfhörer-Kennzeichnung). Even if several infringements cannot be considered as a single infringement, case law may reduce the contractual penalty in case of an extraordinary disproportion of the contractual penalty claimed by the creditor to the significance of the infringement in accordance with the principle of good faith (cf. BGH, judgment of 17 July 2008 - I ZR 168/05 - Kinderwärmekissen).
Those who receive warnings particularly tend to underestimate the scope of their cease-and-desist obligation: case law almost always extends the cease-and-desist obligation beyond the specific case to acts that are comparable "in essence". This even applies if the cease-and-desist declaration refers to the specific form of infringement. Even a clear and unambiguous wording of a cease-and-desist declaration subject to a penalty clause does not constitute a limit for an interpretation according to which essentially similar infringements are also to be covered. This is because the purpose of a cease-and-desist agreement usually indicates that the contracting parties also intended it to cover essentially similar forms of infringement (BGH, judgment of 10 September 2020 - I ZR 237/19 - rejection of the allowed appeal for lack of relevance to the decision).
Examples of "core-similar infringements" of a cease-and-desist declaration subject to a penalty clause
According to case law, once a cease-and-desist declaration has been made, it does not only cover the act originally complained of. Rather, it goes much further. It covers all "essentially similar" infringements. These are all those infringements that contain the characteristic of the original infringing act. As a rule of thumb, one can say: all acts that include the unworthiness of the original act belong to the "core". This always leads to unpleasant surprises for the cease and desist debtor.
Example 1 (OLG Cologne, judgment of 24.05.2017 - 6 U 161/16 - Zauberwaschmittel:
The injunctive relief debtor distributed a "magic detergent" that allegedly saves detergent. It made a cease-and-desist declaration with a penalty clause, according to which it undertook,
to refrain [...] from advertising in the course of trade "Magic washing balls for washing machines and dishwashers" as follows:
On the website of the injunctive debtor, a customer review read:
"Really works! The magnetic field changes the structure of the water and less limescale is deposited in the laundry, on the dishes and in the washing machine, dishwasher! This also means that less detergent is needed and you save money!"
The injunctive debtor was ordered to pay a contractual penalty. The reasoning: Even posted customer reviews were advertising and covered by the core area of the cease-and-desist declaration.
Example 2 (according to OLG Cologne, judgement of 10.06.2016 - 6 U 143/15 - recommendation function):
The debtor issued the cease-and-desist letter had offered sunshades on the Amazon Marketplace, using a recommendation function in his own online shop on the basis of which advertising emails were sent. According to his cease-and-desist declaration, he undertook to
"... to refrain from selling sunshades in the course of business on the internet for the purpose of competition,
advertising goods and/or services by means of providing a recommendation function, if, as is the case on the platform www. .... .de [the internet address of the warning party's own online shop followed]".
The defendant then used a corresponding recommendation function on the Amazon Marketplace. This was not a core violation of the cease-and-desist obligation. This was because there were considerable differences between the recommendation functions in the own online shop and the recommendation function on the Amazon Marketplace.
Example 3 (according to OLG Frankfurt, decision of 23 September 2021 - 6 W 76/21 - Bullshit):
The injunctive debtor, an influencer, was prohibited from calling a product "bullshit" on her internet account. A repetition, in that she rendered the word "bullshit" as "B********t" or "More B***" by omitting certain letters, was within the core scope of the prohibition.
Once a cease-and-desist obligation has been issued, the person being warned tends to suppress or forget it. But not by the warning party. In practice, new infringements after a cease-and-desist declaration has been issued are quite frequent.
TIP: Employees should also be instructed. The party liable for the contractual penalty is also liable for their violations.
Anyone who has signed a cease-and-desist declaration should therefore immediately ensure that the infringing act is ceased and desisted from. If, for example, an advertising statement on a website is objected to as a misleading commercial act, it should not only be removed, but also all similar statements on the website in question. The duty to cease and desist usually also includes a duty to recall infringing products (BGH, judgement of. 4 May 2017 - I ZR 208/15 - Luftentfeuchter).
Scope of the "core area" of the cease-and-desist obligation
Scope of the "core area" of the cease and desist obligation
Once a cease-and-desist obligation has been issued, it does not only cover the originally objectionable act. Rather, it goes much further. The "core scope" includes all those infringements that contain the characteristic of the original infringing act. As a rule of thumb, one can say: All acts that include the unworthiness of the original act belong to the "core area". This often leads to unpleasant surprises for the party liable for contractual penalties.
Not included in the core area, however, is an enforcement of an injunction for other property rights that were not mentioned in the preceding discovery proceedings. This would be an inadmissible extension of the title (BGH v. 3.4.2014 - I ZB 42/11 - Reichweite des Unterlassungsgebots).
Examples: "Essentially similar" are the publication in an internet newspaper and the publication in the print edition (BGH judgement of 18 June 2009 - I ZR 47/07 - Eifel-Zeitung), as well as a print advertisement in a newspaper and similar advertising in online media (OLG Stuttgart judgement of 21 August 2008 - 2 U 41/08).
Several breaches of a cease-and-desist declaration subject to a penalty clause
Usually, in contractual penalty proceedings, the courts combine several similar infringements into one or at least less than the infringements asserted (e.g. OLG Koblenz judgment of 29.08.2012 - 5 U 283/12). In one case (BGH GRUR 2009, 181 - Kinderwärmekissen), the BGH was able to reduce a large number of contractual penalties totalling € 53,680,000.00 to € 200,000.00 only for reasons of equity.
Anyone who has issued a cease-and-desist declaration with a penalty clause must not only ensure that he ceases the infringement immediately. If he has sold infringing goods, he must also recall them. For this purpose, he must request his customers to recall the goods if the infringement cannot be eliminated otherwise (BGH, judgment dated May 4, 2017 - I ZR 208/15 - Luftentfeuchter).
Once a cease-and-desist letter has been issued, the person issuing the warning tends to suppress or forget about cease-and-desist obligations in trade mark law, competition law, design law or other intellectual property law. But not by the person issuing the warning. In practice, new violations of the cease-and-desist declaration after the issuance of the penalty-based cease-and-desist declaration often occur.
Cease-and-desist declaration effective for 30 years?
The sentence occasionally read on the internet that a cease-and-desist declaration is "effective for 30 years" is wrong: A promise to cease and desist, once made, theoretically lasts until "never-never day". In the case of a business or company continuation, it can even bind the acquirer of the company as its legal successor (OLG Hamm NJW-RR 1995, 608).
"Limitation" of the cease-and-desist declaration?
However, the cease-and-desist agreement itself is not "time-barred". Rather, the claims for contractual penalties arising after the breach of the cease-and-desist letter become time-barred after three years.
Termination of a cease-and-desist agreement is rarely possible in practice. Only three cases come into question: Termination due to a change in the law or case law, termination for abuse of rights, or (even more rarely) a challenge to the cease-and-desist agreement.
Extraordinary termination of the cease-and-desist agreement for good cause
According to the case law of the Federal Court of Justice (BGH), the lapse of the statutory right to cease and desist on which the cease and desist agreement is based justifies extraordinary termination of the cease and desist agreement on grounds of unreasonableness (BGHZ 133, 316  - Altunterwerfung I). There are two recognized groups of cases for this: A change in the law and a change in the case law of the highest courts:
A cease-and-desist agreement may also be terminated if the creditor is undoubtedly no longer entitled to injunctive relief due to a change in the law (BGHZ 133, 316 - Altunterwerfung I; BGH, GRUR 2001, 85  - Altunterwerfung IV).
Error about the protectability of a trademark element comparable with change in case law? The BGH case "fishtailparkas":
The BGH has contradicted this: Since the DPMA had not cancelled the trademark, an action to defend against enforcement would also have been unsuccessful in the event of a judicial title. The fact that the DPMA assesses the protectability of the trademark components differently than both parties is the risk of the debtor and does not justify extraordinary termination (BGH v. 8.5.2014 - I ZR 210/12 - fishtailparka).
A change in the law is equivalent to the fact that the conduct prohibited to the debtor is now clearly lawful on the basis of a leading decision of the highest court (BGHZ 181, 373 = GRUR 2009, 1096 marginal no. 17 et seq. - Mescher weis). The decisive factor here is that in such a case the debtor can have enforcement of a corresponding court title declared inadmissible by way of an action to defend against enforcement under section 767 of the German Code of Civil Procedure (BGH v. May 8, 2014 - I ZR 210/12 - fishtailparka).
Termination of the cease-and-desist agreement without notice is possible if the cease-and-desist agreement is based on a warning in abuse of rights (BGH v. 14.2.2019 - I ZR 6/17 - Termination of cease-and-desist agreement). However, the abuse of rights must have already existed at the time of the warning. Often, the cease-and-desist creditor objects that demanding the contractual penalty is an abuse of rights. The BGH clarified that the abuse of rights must have already existed in connection with the submission of the cease-and-desist declaration. The subsequent claims for contractual penalties are therefore irrelevant to the question of abuse of rights if the warning itself was not already abusive of rights (BGH v. 31.05.2012 - I ZR 45/11 - Missbräuchliche Vertragsstrafe).
Abuse of rights precludes contractual penalty claim even without termination
Until 2019, the Federal Court of Justice (BGH) had left open whether an abuse of rights can be held against a contractual penalty claim even without termination of the cease-and-desist agreement (BGH v. May 31, 2012 - I ZR 45/11 - Missbräuchliche Vertragsstrafe). The KG Berlin actually affirmed this. The KG Berlin had denied contractual penalty claims from a cease-and-desist declaration based on abuse of rights even without termination of the cease-and-desist agreement. In doing so, it also took into account circumstances that only came to light after the cease-and-desist declaration had been issued, but which allow conclusions to be drawn about conduct in abuse of rights when the cease-and-desist declaration was issued (KG Berlin v. December 9, 2016 - 5 U 163/15, 5 W 27/16 - Vorgeschobene Marktbereinigung II). The BGH has confirmed this: A cease-and-desist declaration with a penalty clause, which is issued on the basis of a warning in abuse of rights, can also be "invalidated" without notice. Anyone who has issued such a cease-and-desist declaration subject to criminal penalties can raise the objection of abuse of rights against the contractual penalty claim (BGH v. 14.2.2019, I ZR 6/17 - Kündigung der Unterlassungsvereinbarung).
Also possible without termination - objection of inadmissible exercise of rights due to change in law
Even without termination, a contractual claim for contractual penalties may exceptionally be precluded by the objection of inadmissible exercise of rights if the creditor is undoubtedly, i.e. readily recognizable, no longer entitled to the claim due to a change in the law.
With the entry into force of the amended UWG on August 1, 1994, it was introduced that associations must have a considerable number of traders on the same market as the debtor. If an association does not have this number and thus loses its active legitimacy for the infringement complained of, this justifies the objection of inadmissible exercise of rights (BGH v. 26.09.1996 I ZR 265/95 - Altunterwerfung I).
Even if the conduct that the warned party promised to refrain from according to its cease-and-desist declaration is permitted due to a change in the law, the warned party may still not demand the contractual penalty in the event of an infringement. Such conduct would also be an impermissible exercise of rights (BGH v. 15.12.2011 - I ZR 174/10 - Bauheizgerät, para. 57).
Challenging the cease-and-desist declaration on grounds of error or fraudulent misrepresentation
If, in a warning notice, the person issuing the warning notice is mistaken about his right to act, i.e. such right does not actually exist, the cease-and-desist declaration issued as a result can be challenged on grounds of fraudulent misrepresentation (OLG Stuttgart v. 11.06.2015 - 2 U 136/14 - Apotheker-Domains; LG Saarbrücken v. 01.02.2007 - 11 S 164/05, subsequently BGH v. 10.06.2009 - I ZR 37/07 - Unrichtige Aufsichtsbehörde). However, a mistake about the anti-competitive nature of the warned conduct does not justify a challenge. This is an irrelevant error of motive (OLG Hamm v. 22.03.202 - I-4 U 197/11 - EDV-Gutachten; OLG Stuttgart v. 11.06.2015 - 2 U 136/14 - Apotheker-Domains).
The dissolution (or adjustment) of a contract due to the cessation of the basis of the business must appear to be unavoidable in order to avoid unacceptable consequences that are simply incompatible with law and justice (BGH v. 26.09.1996 I ZR 265/95 - Altunterwerfung I). More stringent requirements are to be placed on the termination of the contract due to the lapse of the basis of the contract than on the extraordinary termination (BGH v. 8.5.2014 - I ZR 210/12 - fishtailparka). It therefore does not occur in practice. This is because even the loss of the basis of the contract only gives rise to a right to extraordinary termination and only if an adjustment of the contract is not reasonable. Until termination, the contractual penalty obligation continues to exist (BGH v. 26.09.1996 I ZR 265/95 - Altunterwerfung I).
Company ... Ltd.
undertakes towards the
- Creditor -
1. to refrain from claiming as a business act [now follows the so-called "infringement form":] to third parties that the creditor would [Untrue statement of fact] if it happened as it did on [date] to Mr ...;
2. to pay a contractual penalty to the creditor for each case of future infringement of the act described in item 1, the amount of which is to be determined by the creditor and which may be reviewed by the debtor by the competent court as to its appropriateness; and
3. to provide the creditor with information on the scope of the infringement described under item 1;
4. to compensate the creditor for any damage which the latter has suffered or will suffer as a result of the infringing act described under item 1;
5. to bear the costs incurred by the use of the attorneys ... in accordance with a 1.3 fee pursuant to VV 2300 plus expenses from a value in dispute of € 25,000.00.
Company ... Ltd.
- "DEBTOR" -
is obligated to the
- "CREDITOR" -
1. to refrain from offering, importing, placing on the market or possessing for the aforementioned purposes textiles marked with the designation "[BRAND XY]" in the course of trade, unless these textiles have been placed on the market with the consent of ... GmbH into the European Union or into a contracting state of the Agreement on the European Economic Area, in particular if the textiles are T-shirts, as shown in the following illustration
[an illustration of a T-shirt bearing the inscription "[BRAND XY]" follows]
2. to pay to the creditor a contractual penalty to be determined by the creditor and to be reviewed by the Frankfurt am Main Regional Court in the event of a dispute as to its appropriateness for each case of future infringement of the act described under item 1, and
3. to provide the creditor with information on the origin and distribution channel of the illegally labeled textiles, the name and address of the manufacturer, the supplier and other previous owners; the name and address of the commercial customers and points of sale for which the goods were intended; the number of textiles offered, imported, placed on the market, their purchase and sales prices and the cost price; the net proceeds and the profit made
by submitting copies of the invoices and delivery bills of the suppliers and commercial customers and copies of appropriate bank and financial documents;
4. to compensate the creditor for any damage that the latter has suffered or will suffer as a result of the infringing act described in item 1 above;
5. to immediately recall all illegally marked textiles and to return them by .... at the latest. - received by the undersigned - to prove the recall in an appropriate form;
6. to destroy without delay all textiles still in the debtor's possession pursuant to item 1 and such textiles whose possession the debtor has regained as a result of the recall and to prove this to the creditor;
7. to bear the costs incurred by the use of the attorneys ... in accordance with a 1.3 fee pursuant to VV 2300 plus expenses from a value in dispute of € 100,000.00.
Company ... Ltd.
- "DEBTOR" -
is obligated to the
- "CREDITOR" -
1. to refrain with immediate effect from offering in the community
to offer, sell or otherwise put on the market or possess for the aforementioned purposes jackets [the following are the infringing acts for which there must be at least a risk of repetition] which have the following design features [Note: Whether one specifies the defining features in the application in a possible subsequent court application depends on the court to be seized. There are courts which consider the indication of features in the application as a limitation of the scope of protection]:
(1) [design feature 1 follows]
(2) [other design features follow].
if it is designed as reproduced below:
[the specific form of infringement follows]
2. the debtor undertakes to pay a contractual penalty of € 5,100.00 to the cease-and-desist creditor for each individual case of infringement of an obligation specified in item 1 [Note: a contractual penalty promise can also be formulated here in accordance with "modified Hamburg custom"];
3. to provide complete information and to render accounts by submitting an orderly list and presentation of order confirmations, invoices and delivery bills concerning the names and addresses of the commercial customers and the quantity of jackets ordered, received and sold, as well as the prices paid for the garments in question and, finally, the prime costs broken down according to the individual cost factors and the profit made in the process;
4. to surrender to the creditor or to a bailiff appointed by the creditor the items of clothing in its direct or indirect possession or ownership pursuant to item 1 for the purpose of destruction;
5. to recall all distributed items of clothing as per item 1 and to remove them from the distribution channels;
6. to compensate for all damages incurred to date and to be incurred in the future as a result of the actions under item 1, in particular also to pay the costs of the legal action in the amount of the business fee 2300 VV RVG, at a rate of 1.3 from a value in dispute of € 200,000.00 plus a flat-rate expense allowance.
......................................, the ......................
is committed to the
- "CREDITOR" -
1. to refrain as a business act [now follows the so-called "form of infringement":] to claim against third parties that the creditor would assert untrue facts] if it happens as happened on[date] towards Mr....;
2. to pay a contractual penalty of € 10,000.00 (in words: ten thousand euros) to the creditor for each case of future infringement of the act described under item 1 and
3. to provide the creditor with information on the scope of the infringing act described under item 1;
4. to compensate the creditor jointly and severally for any damage caused or to be caused by the infringing act described under item 1;
5. to bear the costs incurred through the use of the lawyers... in accordance with a 1.3 fee in accordance with VV 2300 plus expenses from an object value of € 25,000.00.
(Company .... )
- "DEBTOR" -
is committed to the
- "CREDITOR" -
1. to refrain in commercial dealings from offering, importing, placing on the market or possessing textiles for the aforementioned purposes marked with the designation "[BRAND XY] " [now follows the so-called "form of infringement":] unless these textiles are used with the consent of... GmbH into the European Union or into a Contracting State to the Agreement on the European Economic Area, in particular in the case of T-shirts, as shown in the following description
[here follows a picture of a T-shirt bearing the inscription"[BRAND XY]"]
2. to pay a contractual penalty to the creditor to be determined by the creditor for each case of future infringement of the act described in Clause 1 and to be reviewed by the District Court of Frankfurt am Main for its appropriateness in the event of a dispute, and
3. to inform the creditor of the origin and distribution channel of the illegally labelled textiles via the name and address of the manufacturer, the supplier and other previous owners; name and address of the commercial customers and sales outlets for whom the goods were intended; the number of textiles offered, imported and placed on the market, their purchase and sales prices and production costs; the net proceeds achieved and the profit made
by submitting copies of invoices and delivery notes from suppliers and commercial customers and copies of suitable banking and financial documents;
4. to compensate the creditor for any damage caused or to be caused by the infringing act described under item 1;
5. to immediately recall all illegally marked textiles and to return them to us by... - received by the signatories - to prove the recall in an appropriate form;
6. to destroy immediately all textiles in the possession of the debtor in accordance with item 1 and such textiles whose possession it has regained through the recall and to prove this to the creditor;
7. to bear the costs incurred through the use of the lawyers... in accordance with a 1.3 fee in accordance with VV 2300 plus expenses from an object value of € 100,000.00.
- "DEBTOR" -
is committed to the
- "CREDITOR" -
1. immediately cease to operate in the Community
To offer, sell, or otherwise place on the market, or possess for the purposes mentioned, jackets[for which there must be at least a risk of recurrence], which have the following design features
[Note: Whether one already specifies the characteristics determining the species in a possible subsequent court application depends on the court to be called. There are courts that consider the indication of characteristics in the application to be a limitation of the scope of protection]:
(1)[design feature 1 follows]
(2)[further design features to follow]
if it is designed as follows:
[concrete form of injury follows]
2. for each individual case of violation of an obligation mentioned under item 1, the debtor undertakes to pay a contractual penalty in the amount of € 5,100.00 to the cease-and-desist creditor [note: a contractual penalty promise can also be formulated here according to "modified Hamburg custom"];
3. to provide complete information and invoices, including an ordered list and order confirmations, invoices and delivery notes on the names and addresses of commercial customers, the quantity of jackets ordered, received and sold, the prices paid for the garments concerned and, finally, the production costs broken down according to the individual cost factors and the profit made;
4. to return items of clothing in their direct or indirect possession or ownership pursuant to Clause 1 to the creditor or a bailiff appointed by the creditor for destruction;
5. to recall all items of clothing in accordance with Clause 1 and to remove them from the distribution channels;
6. to compensate for all damages incurred and still to be incurred as a result of the actions under item 1, in particular also to pay the costs of legal recourse in the amount of the business fee 2300 VV RVG, with an amount of 1.3 from an object value of € 200,000.00 plus lump-sum expenses.