Information and calculation of damages in case of infringement of intellectual property rights
Usually, the infringer of an intellectual property right (trademark right, labeling right, patent right, utility model right, design right, copyright) calculates his damage according to the license analogy or according to the infringer's profit. For this he needs the information of the infringer. The person issuing the warning notice must specify here the actions for which he is requesting information. If he also demands invoicing, he must specify which invoices are to be submitted. If the infringed party only demands compensation for his own concrete damage, no information must be provided. This is because the infringed party can quantify this damage himself.
Only when the person being warned has provided information about the extent of the infringement can he calculate his damages. Like the claim for damages, the claim for information only exists in the event of a culpable infringement of the law by the person being warned.
Information and damage calculation options in competition law
In competition law, the aggrieved party can only demand compensation for the concrete damage he has suffered (exception: supplementary protection of performance under competition law). For this purpose, information about the profits of the damaging party is not necessary (OLG Frankfurt, judgment of 22.09.2016 - 6 U 103/15 - Comparative advertising claiming functional equivalence and more favorable pricing).
How detailed must information be provided?
In principle, the infringer must provide information about all infringements complained of. Since the decision of the Federal Court of Justice (BGH) of July 19, 2007, Case No. I ZR 93/04 - Windsor Estate, there is no longer a time limit from the first proven infringement (see also BGH, Judgment of April 30, 2009, Case No. I ZR 191/05 - Electronic Customs Tariff). The warning party must also generally disclose its upstream suppliers and its commercial customers. This information is often particularly interesting for the person issuing the warning. In this way, he can work his way step by step to the manufacturer of a plagiarism, for example. The subsequent warning of other links in the supplier chain often increases the willingness to reach an out-of-court settlement.
As a matter of principle, the warned party must also submit invoices and other customary documents about its income and expenses relating to the infringing products. How detailed the warned party must submit invoices depends on the individual case, in particular also on the type of company of the infringer. For example, a pure distribution company - unlike the manufacturer of a plagiarism - usually does not have to provide information on manufacturing costs.
TIP: In order to avoid the warning party having to disclose its customers to the warning party, which is at the same time its competitor, the warning party can claim a so-called "auditor's reservation".
Finally, the scope of the information also depends on the way in which the infringed party wishes to calculate its damages. In addition, confidentiality interests and the principle of proportionality limit the scope of the right to information (BGH, judgment of October 6, 2005, I ZR 322/02 - Noblesse, para. 14).
In the case of so-called "third-party information", in the event of an obvious infringement of the law or after a lawsuit has been filed, forwarding agents, warehousing companies or the operators of online platforms, for example, may also be obliged to provide information.
What happens in the event of false information?
If the infringed party can prove that the infringer provided false information, he can have the infringer compelled to provide information again and to affirm the accuracy of his information in lieu of an oath. Providing false information again would then be punishable by law.