Applying to register a trademark with no intention of using it – Abuse of injunction suits and damages claims
Anyone seeking to register a trademark should actually intend on using it. According to a ruling of Germany’s Federal Supreme Court, the Bundesgerichtshof (BGH), holding a trademark with the sole intention of asserting claims against third parties represents an abuse of the law.
It is only the proprietor of a trademark who benefits from trademark protection, i.e. only he may make use of the trademark. We at the commercial law firm MTR Rechtsanwälte note, however, that if the proprietor has no intention of using the trademark, then he no longer benefits from trademark protection.
Anyone sitting on trademarks with no serious intention of using them other than for the purposes of asserting injunction suits and damages claims against third parties in the event of trademark infringements is abusing the law and acting contrary to good faith. That was the verdict of the BGH in a ruling from October 23, 2019 (Az. I ZR 46/19).
In the instant case, the plaintiff had registered an EU trademark for lighting equipment, among other things, featuring the name of a well-known artist. The plaintiff is also the proprietor of eleven other EU word and figurative marks, each of which bears the names of famous artists.
The plaintiff issued the defendant with a formal warning for putting a lamp up for sale featuring the name of the artist in question, albeit in a different style from the registered trademark. The defendant reacted to the formal warning by withdrawing all offers for the lamp and issuing a cease-and-desist declaration backed by sanctions for contempt. A few weeks later, the plaintiff noticed that two past offers for the lamp could be viewed on a trading platform under two products codes. These offers could only be found by searching specifically for the respective product code. The plaintiff subsequently demanded that a contractual penalty be applied to the defendant for failing to ensure that the two offers had been deleted.
The action was unsuccessful, including before the BGH as the court of final instance. The court held that the plaintiff could not appeal to contractual rights arising from the cease-and-desist declarations, noting that the plaintiff had registered the trademark in dispute with no serious intention of using it other than for the purposes of inundating anyone using the sign with injunction suits and damages claims. The BGH went on to state that the plaintiff had abused its formal legal status as a trademark proprietor and acted contrary to good faith.
Lawyers with experience in the field of trademark law can offer advice.