Recent Case Law
inGerman Trademark Law

2022

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CONTENT
Foreword ..................................................................................................................................................... 2
Infringement proceedings
1. Amazon’s liability as perpetrator for third-party offers that infringe trademarks ................... 3
CJEU judgment of 22 December 2022 in cases C-148/21, C-184/21 – Christian Louboutin/
Amazon Europe Core Sàrl u. a.

Eligibility for protection / cancellation proceedings / opposition proceedings
2. Scope of protection of a trademark with a high degree of reputation when there isdissimilarity of goods .................................................................................................................... 5
European General Court judgment of 21 December 2022 in case no. T-4/22 – Puma/
EUIPO - DN Solutions (PUMA)

3. ‘Huckleberry Gin’ descriptive for spirits ...................................................................................... 7
Federal Patent Court order of 27 April 2022 in case no. 29 W (pat) 536/20 – Huckleberry Gin

4. Risk of deception due to use of the ® registration symbol........................................................ 9Federal Patent Court order of 14 September 2022 in case no. 29 W (pat) 559/19 – livevil

5. The combination of a letter with a colour mark lacks specificity ............................................ 11Federal Patent Court order of 15 December 2021 in case no. 29 W (pat) 572/19 – Weißes k aufrotem Grund

Design of agreements
6. Validity of ipso facto dissolution clauses .................................................................................. 13
Federal Court of Justice judgment of 27 October 2022 in case no. IX ZR 213/21 – Insolvenzabhängige
Lösungsklausel

7. Claims to liquidated damages based on cease-and-desist declarations are barred bylimitation – advantages and disadvantages of the ‘Hamburg custom’ popular among
practitioners.................................................................................................................................. 15
Federal Court of Justice judgment of 27 October 2022 in case no. I ZR 141/21 – Vertragsstrafenverjährung

FOREWORD
This issue of our ‘Recent Case Law in German Trademark

With regard to trademark eligibility issues, we present

Law’ is the seventh review, compiled by the attorneys insome Federal Patent Court decisions relating to risk of de-

the Trademark Practice Group at EISENFÜHR SPEISER,

ception, distinctiveness and the specificity of signs, and inof current court decisions relevant for practitioners in thethe area of similarity with a notorious trademark we ad-

field. The Trademark Practice Group pools the firm’s com-dress a decision handed down by the European Court ofpetencies in the field of trademark law from and for the

Justice in Luxembourg that we ourselves obtained. The

various offices and discusses new developments in case

topic of designing agreements includes a discussion oflaw and practice on a regular basis. Collectively, the Prac-

Federal Court of Justice decisions on the issues oftice Group can draw on experience amassed over thewhether ipso facto dissolution clauses can be valid andpast 50 years. Our clients benefit accordingly.

how claims to liquidated damages in cease-and-desist declarations are to be treated. You will also find a critique of

The following discussions explain the background and thethe European Court of Justice judgment on Amazon's lia-

main features of each decision and include the respective

bility as a perpetrator for offers that infringe trademarks.

author’s personal assessment. The overview is structured in three sections, the first covering proceedings be-

We wish you an interesting read. If you have any questions

fore patent offices and courts concerning the eligibility foror comments on specific decisions or about other trade-

trademark protection, the second dealing with the design

mark topics, please do not hesitate to contact us!

of agreements, and the third section on infringement proceedings.

2

September 2023

EISENFÜHR SPEISER

ForewordINFRINGEMENT PROCEEDINGS
1. Amazon’s liability as perpetrator for third-party offers that infringe trademarks
CJEU judgment of 22 December 2022 in cases C-148/21, C-184/21 – Christian Louboutin/Amazon Europe Core
Sàrl u. a.

BACKGROUND
Christian Louboutin is the chief designer and rights holder

On 19 September 2019, Louboutin brought an action be-of a shape mark registered for the Benelux countries onfore the Luxembourg District Court, and on 4 October

25 February 2005 and as an EU trademark on 10 May

2019 before the francophone Brussels Companies Court,

2016.

against various Amazon companies for trademark infringement under Article 9 (2)(a) EUTMR.
Amazon, for its part, referred to other CJEU rulings on(pure play) online marketplaces such as eBay and denied
responsibility for trademark-infringing products offeredon Amazon by third-party sellers.

DECISION
In its decision of 22 December 2022, the CJEU firstly clari-

The Grand Chamber then approaches its answers to thefies that, according to its ordinary meaning, ‘use’ within thequestions referred to it by stating that a service provider

meaning of Article 9 (2) (a) EUTM involves active behaviour

who uses the sign in question on third-party websites toand direct or indirect control of the act constituting the use.

advertise goods marketed by one of its customers with theaid of that service, it uses the sign in question itself when

The infringer must also use the sign in its own commercial

it uses it in such a way that a link is established between

communication. There is therefore no act of use on purethe sign and the services it provides (CJEU, L’Oréal; CJEU,

play online marketplaces that provide only the technical in-

Frisdranken Industrie Winters).

frastructure and shipping services, but are unaware of thefact that the goods at issue infringe trademark rights andSuch a link is established, inter alia, when the operator ofalso do not pursue the purpose of offering the stored

an online marketplace advertises on third-party websites,

goods themselves, or placing them on the market.

by using keyword adverts, goods bearing that sign that are
offered for sale by its customers on its online marketplace.

The CJEU reaffirms its case-law in L’Oréal/eBay (2011)

For Internet users who conduct a search on the basis of

and Coty/Amazon (2020), but at the same time points outthat keyword, such advertising creates an obvious associ-that it was not asked in those proceedings about the im-ation between those trademarked products and the possi-

pact of the fact that the online sales platform in question

bility of buying them via that marketplace.

also includes offers by the platform operator itself, in addition to the online marketplace.

I. Infringement proceedings / 1. Amazon’s liability as perpetrator for third-party offers that infringe trademarks

3For that reason, the proprietor of the trademark may pro-

If Amazon displays its own advertisements alongside

hibit such use by the operator in question, if the advertis-

those of third-party sellers and displays its own logo as aing infringes trademark law because it is difficult or im-

renowned distributor on both its platform and on all thosepossible for a normally informed and reasonably ob-

advertisements, including those for goods offered by third-

servant Internet user to ascertain whether the goods orig-

party sellers, then there is uniform presentation of the ad-inate from the proprietor of the trademark or an undertak-vertisements. This strengthens the impression given to theing economically associated with it, or from a third party

normally informed and reasonably observant user that Am-

instead.

azon is marketing the goods thus advertised in its own
name and on its own account. That is all the more the case

The question to be asked, therefore, in the case of a sales

when the various offers originating from Amazon itself or

platform with an integrated online marketplace such as

from a third party bear labels such as ‘Best Seller’, ‘Most

Amazon, is whether that advertisement is able to estab-

Wished For’ or ‘most often given as a gift’, without distin-lish a link between the services offered by Amazon andguishing them according to their origin.

the sign in question, on the ground that a normally informed and reasonably observant user might believe that

This is reinforced when Amazon also provides third parties

Amazon is the one who is marketing, in its own name andwith services that involve dealing with users’ questions

on its own account, the goods for which the mark in ques-

about those goods, or about the storage, shipping and re-tion is being used.

turns of those goods.

The manner in which the advertisements are presented

After answering the questions referred to it, the CJEU re-on Amazon, both individually and as a whole, and the na-

ferred the matter back to the Benelux courts for a decisionture and scope of the services provided by its operator,

on whether a trademark infringement has actually occurred

are particularly important in that regard.

in this particular case.

ASSESSMENT
Until now, it has been unclear whether objective circum-

To escape contributory liability for trademark infringe-

stances alone are decisive for the question of trademark

ment in future, hybrid platforms must therefore ensure touse by hybrid platforms, or whether a role is also played

an increasing degree, both preventively and reactively,by the impression created in the minds of customers. The

that their respective third-party sellers are not offering

CJEU has now come down on the side of the latter.

goods that infringe IP rights. This can be done beforehandby strengthening the platform’s own IP infringement and

The judgment is also consistent with the current case law

monitoring tools, and after the event by immediately de-of the European courts, according to which online plat-

leting the infringing offers as soon as soon as one be-forms are to be held liable for the infringement of IP rights

comes aware of them.

by their users if the platforms adopt third-party content as
their own by means of uniform presentation and advertis-

For proprietors of IP rights, the decision provides anothering.

answerable party that the rights holder can effectively
bring an action against if civil or criminal enforcement of

It remains to be seen how the national courts will apply the

IP rights against the infringing third party is unsuccessful,prerequisites for liability, although it was already clear fromfor example because the latter is domiciled in a non-EU

the Benelux court decisions that they will not treat Amazon

country or because there is no other way to serve thein the same way as pure play online marketplaces.

writs. (Böhm)

4

I. Infringement proceedings / 1. Amazon’s liability as perpetrator for third-party offers that infringe trademarks

ELIGIBILITY FOR PROTECTION / CANCELLATION PROCEEDINGS / OPPOSITION PROCEEDINGS
2. Scope of protection of a trademark with a high degree of reputation when
there is dissimilarity of goods
European General Court judgment of 21 December 2022 in case no. T-4/22 – Puma/ EUIPO - DN Solutions (PUMA)BACKGROUNDDN Solutions Co. Ltd., South Korea (formerly ‘Doosan

against that decision was also rejected by the Board of Ap-

Machine Tools Co. Ltd’), filed an application in 2012 forpeal.

the mark
The European General Court (EGC) overturned the decision of the Board of Appeal in 2018 because the Board of
Appeal had not properly taken account of the degree offor ‘Lathes; CNC (computer numerical control) lathes; machining centres; turning centres; electric discharge machines’ in Nice Class 7. Puma SE, the well-known manufacturer of sports shoes and clothing, filed an opposition
before the EU Intellectual Property Office (EUIPO), basedon its earlier trademark

reputation of PUMA SE’s mark and its inherent distinctive
character. The matter was remitted to EUIPO, which thenupheld the opposition. Following an appeal by DN Solutions, however, the Board of Appeal rejected the opposition again on the following grounds: despite the very highdegree of reputation of the Puma SE trademark for Class
25 goods, its inherent distinctive character, its uniqueness and the fact that it the signs at issue are almost identical, Puma SE had not demonstrated that the publicwould establish a link between the marks at issue in thelight of the specific nature of the goods covered by theunder Article 8 (4) of the EU Trademark Regulation

mark applied for and the public at which they are aimed.

(EUTMR).
Puma again filed a notice of appeal with the EGC against
EUIPO rejected Puma’s opposition on the grounds that thethe latter decision.

goods covered were too dissimilar, and Puma’s appeal

DECISIONThe General Court dismissed that appeal.

take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

Article 8 (5) EUTMR stipulates that a trade mark shall not
be registered upon opposition if it is identical or similar toCase law has developed the concept of ‘mental associa-

an earlier trademark, irrespective of whether the goods ortion’, or a ‘link in the mind of the relevant public’, forservices in question are identical or similar or dissimilar,

which the following factors, among others, must be taken

where the earlier trademark has a reputation and the use

into account when deciding on the individual case: thewithout due cause of the trademark applied for would

similarity of the signs, the nature of the goods/services at

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 2. Scope of protection of a
trademark with a high degree of reputation when there is dissimilarity of goods

5issue, including their degree of closeness, the strength of

It was therefore necessary to weigh up whether the prod-

the trademark’s reputation, the distinctive character of

uct dissimilarity was sufficient to deny a link in the mind

the earlier mark (whether inherent or acquired throughof the relevant public. PUMA had argued, inter alia, thatuse) and the existence (or absence) of the likelihood of

the relevant publics overlap, because their customers are

confusion.

the general public, and that professional publics (who buy
the goods under the opposed trademark) are also part of

The Board of Appeal had listed and discussed all these

the general public. According to the General Court, how-

individual criteria, but Puma’s action sought to interpret

ever, that did not suffice for a link in the mind of the rele-

the decision in such a way that it was based solely on thevant public (because otherwise, for goods such as sport-

lack of similarity between the goods.

ing goods, that criterion would also apply to all other products).

This was facilitated by unfortunate wording by the Boardof Appeal, which had referred to another General Court

Puma had also argued, for example, that ‘Caterpillar’

judgment (March 2021) that likewise concerned an oppo-

sold/licensed not only large machines but also shoes; insition by Puma (and which was likewise rejected by thethe present case, however, the ‘diversification’ was re-

Court). That opposition was filed against the ‘Puma-Sys-versed, namely from products for a mass market to spe-tem’ trademark, which was filed also for specialised

cialised technical equipment, and the General Court con-woodworking tools in Class 7 (inter alia).

sidered it unlikely that the publics would expect such diversification.

The General Court confirmed that the marks are almost
identical, that Puma’s trademark has a very high degree

In its analysis, the EGC also referred for the first time toof reputation, an inherent distinctiveness and an en-

the fact that the word ‘Puma’ was understood by the pub-hanced distinctiveness acquired through use. It also es-

lic first and foremost as designating an animal, not atablished that the goods are completely different and aresports brand (unlike ‘Adidas’, for example). The standard

targeted at completely different publics.

of proof required must therefore be higher.

ASSESSMENT
The judgment confirms that a proprietor of a trademark

However, the long procedural series with referrals backwith a high degree of reputation cannot always expect toto previous instances shows that not only examiner deci-eliminate another trademark with an appeal under Article

sions, but also decisions by the EUIPO Boards of Appeal,

8 (5) EUTMR, entirely regardless of which particular

are not always worded in a legally watertight manner.

goods the younger trademark covers.

(Brecht)

6

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 2. Scope of protection of a
trademark with a high degree of reputation when there is dissimilarity of goods3. ‘Huckleberry Gin’ descriptive for spirits
Federal Patent Court order of 27 April 2022 in case no. 29 W (pat) 536/20 – Huckleberry Gin

BACKGROUND
In 2018, the applicant registered the ‘Huckleberry Gin’

‘Huckleberry’, was ‘Heidelbeere’ (blueberry), so the term

word mark, inter alia in Class 33 for spirits [beverages].

as a whole clearly specified a descriptive feature relating

The German Patent and Trademark Office denied any eli-to the content of the spirits. The applicant filed an appeal

gibility for protection on the part of the of the word sign,with the Federal Patent Court against the decision to re-on the grounds that the sign included a reference to gin,ject the application.

a spirit, and that the translated meaning of the other term,

DECISION
The Federal Patent Court upheld the decision to reject,‘huckleberry’. According to the Court, the basis for thearguing that the trademark will be understood by the rel-decision was rather how it was understood by profes-

evant public as a description of a relevant product featuresional circles in Germany (such as traders in beverages,

and is therefore ineligible for protection pursuant to Sec-or specialist spirits stores), who can be assumed to un-tion 8 (2) No. 2 of the German Trademark Act (MarkenG).

derstand clearly descriptive indications even in foreign

The aim of the latter regulation is to ensure that indica-languages. It could be assumed in any case there would

tions describing the features of the registered goods canbe a need in future to use the designation ‘Huckleberry

be freely used by all economic operators.

Gin’ for a flavour-enhanced gin, as shown by various flavour categories that are actually used already for gin prod-

The American English word ‘huckleberry’ is a common

ucts. Furthermore, ‘Huckleberry Vodka’ and ‘Huckleberryname for blueberry in North America. Taken as a whole,

Whiskey’ are already being offered for sale in the USA,

therefore, ‘Huckleberry Gin’ simply indicates that the spir-

so it can be expected, due to the trade relations between

its in question are gin that has been ‘infused’ with (Amer-

the USA and Germany, that a product called ‘Huckleberryican) blueberries. The Court also dismissed the appli-Gin’ will also find its way to Germany, so a (future) needcant’s argument that the broad segments of the market

to keep the trademark free therefore seems plausible.

in Germany did not understand the meaning of the word

ASSESSMENT
The descriptive indication as an absolute reason for re-that a spirit such as gin can usually be infused with differ-fusal pursuant to Section 8 (2) No. 2 MarkenG is a formi-

ent flavours, which means that the use of blueberries isdable obstacle on the path to successful trademark pro-also an obvious option, and the Court could refer to suchtection, since according to the principles of case law es-

uses for other spirits as well, in the USA at least. Given

tablished by the Court of Justice of the European Union

these facts of the matter, it makes sense to say that such

(CJEU), the factors precluding protection are not only thatuse may also gain in significance for the German market.

a feature is specified descriptively, but also that the term

The decision makes sense, therefore. Before a trademark

could be used for such descriptive purposes. ‘Huckle-

application is filed, careful checks should be carried out

berry’ is certainly not a commonly known term in Ger-

to determine whether the term is already used descrip-

many, but in this case the Court could refer to the fact

tively in other languages for relevant products, or whether

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 3. ‘Huckleberry Gin’ descriptive
for spirits

7there are any indications that this might be the case in theestablished or predicted, such a play on words is of no

future, as might have been obvious in the present case,

help at all.

given the trade relations between the USA and Germany,in the spirits sector especially.

It is interesting that the applicant managed to obtain protection for the word mark ‘The Original Huckleberry Gin’

The name ‘Huckleberry Gin’ is particularly catching, offor gin, namely with another application dating from 2018.

course, because it reminds one of the ‘Huckleberry Finn’That trademark’s eligibility for protection should not actu-

character in Mark Twain’s novel of the same name, andally be assessed any differently if the above criteria laidthus has imaginative content to a degree. However, thisdown by the Federal Patent Court are applied, as the ad-

is a criterion that has no bearing on descriptive indications

dition of ‘The Original’ can hardly contribute to eligibility.

as an absolute reason for refusing protection. When it

This example shows that, in cases of doubt, applying forcomes to the question of a trademark’s distinctiveness,trademark protection is often worth a try, because regis-such imaginative content can help to overcome the bar-tration practice is (unfortunately) far from uniform. (Ebert-rier to protection. However, if descriptive content can be

Weidenfeller)

8

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 3. ‘Huckleberry Gin’ descriptive
for spirits

4. Risk of deception due to use of the ® registration symbol
Federal Patent Court order of 14 September 2022 in case no. 29 W (pat) 559/19 – livevil

BACKGROUND
If, in an application for a composite trademark, the ® symbol is associated with only one component which in itself
is not protected as a trademark, the trademark applied foris likely to deceive and the must therefore be refused.
An amendment of the representation of the mark applied
for is no longer possible during the application procedure,even if it merely involves deletion of the ® symbol. The
only remedy here is to file a new application for the trademark with a representation that is not likely to deceive.

The Trademark Section at the GPTO had objected to andrejected the sign applied for, due to the fact that there

The Federal Patent Court order discussed here addresses

was a risk of deception. The applicant was unable to over-the prerequisites for a risk of deception within the mean-

turn the rejection, not even by filing a new ‘corrected’ rep-ing of Section 8 (2) No. 4 of the German Trademark Act

resentation of the ‘livevil’ composite word and figurative(MarkenG), in conjunction with Section 37 (1) MarkenG.

mark, without the added ®. The trademark was still re-

The case in question concerned the application for a com-fused.

posite word and figurative mark ‘livevil’. At the time of theapplication, the ® symbol was inserted after the ‘livevil’component as follows:

DECISION
The Federal Patent Court upheld the Trademark Section’s

In the case under consideration, the Federal Patent Court

decision to refuse registration due to the risk of deception.

confirmed that the trademark as applied for would deceive

Its rationale focused first of all on the fact that when as-

the public, because the ® symbol was placed after thesessing the risk of deception, the key aspect is whether‘livevil’ word component and not on the sign as a whole,misleading information regarding the claimed goods or ser-namely in a way that clearly indicates that the ® was meant

vices already ensues from the content or message of theto apply to the composite trademark applied for. However,trademark itself.

since the applicant does not have separate trademark protection for the ‘livevil’ component on its own, the shape

The Federal Patent Court stated that there is no deception

applied for was likely to deceive the public.

if use of the trademark for the claimed goods or services ispossible. Referring to the case law of the Federal Court of

The representation of the mark subsequently filed by theJustice (BGH, grill meister), there is a risk of deception

applicant was also unable to overcome the ground for re-within the meaning of Section 8 (2) No. 4 MarkenG, how-fusal of registration, as it is no longer possible to amend

ever, if the trademark a) contains the ® symbol and b) said

the content of the representation of the trademark, which

symbol has not been added to the trademark as applied for,is one of the mandatory requirements for establishing a fil-but is merely a trademark component that is ineligible foring date, once the application has been filed. This follows

separate protection under trademark law.

from Sections 32 and 33 MarkenG, according to which the

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 4. Risk of deception due to
use of the ® registration symbol

9trademark constitutes an immutable and indivisible unit

basic principle to details that are ineligible for protection orthat precludes any amendment which affects the object ofimpermissible. In such a case, the only way to overcome

protection in a relevant way. According to the Federal Pa-

the objection is to file a subsequent application.

tent Court, the prohibition of amendment also applies as a

ASSESSMENT
To avoid unnecessary objections, trademarks should be

will not only incur new costs as a result, but will also lose

registered without the ® registration mark, as far as pos-

the seniority of the first application.

sible. Adding the ® symbol is particularly problematic if it
is not placed after the trademark as a whole, but after

It should also be noted, as a final point, that the applicant

only a trademark component which is not itself protected

could be sued under competition law if the application is

as a trademark or which may not be eligible for protection

for a trademark that includes the ® registration mark, andat all. In such cases, one can expect that the trademarkthat trademark is used simultaneously during the applica-

will be refused due to the risk of deception.

tion procedure. This is because the applicant is pretending during the application and examination procedure to

The trademark applied for can no longer be corrected dur-

have a protective right which has not (yet) been regis-

ing the application procedure, either, so the aforemen-

tered in its name. (Holderied)tioned cases will require a new application. The applicant

10

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 4. Risk of deception due to
use of the ® registration symbol

5. The combination of a letter with a colour mark lacks specificity
Federal Patent Court order of 15 December 2021 in case no. 29 W (pat) 572/19 – Weißes k auf rotem GrundBACKGROUND
The trademark applicant filed a trademark with the Ger-

The red colour is HKS (Z) 13’. The Trademark Section re-man Patent and Trademark Office (GPTO) as an ‘Other

jected the application because of the object of protection

type of mark’ with the following graphical representation

lacked sufficient specificity. The Federal Patent Court upheld that decision in the next instance. The applicant’s
appeal, on the grounds that its right to its day in court had
purportedly been breached, was also dismissed by theFederal Court of Justice.

and the description ‘The trademark consists of a letter ‘k’
in white lettering, on a red surround of no specific shape.

DECISION
The decision focused on the specificity of signs within the

The GPTO and the Federal Patent Court disagreed withmeaning of Section 3 (1) of the German Trademark Act

that argument. The GPTO’s assessment was that, when

(MarkenG), or Section 8 (1) in conjunction with Section 32

previous case law on the eligibility of abstract colour(1) MarkenG. The point of requiring specificity as a pre-marks for trademark protection is applied, there is norequisite for trademark eligibility is to prevent trademark

specification in the present case of the area ratio be-protection from proliferating in the form of many different

tween the white letter ‘k’ and the red area, or of the ar-appearances of a single trademark application. The sub-rangement of the colours in relation to each other. The

ject-matter of the application must accordingly be definedFederal Patent Court concluded that the ‘k’ in the midstin specific terms and not just abstractly. ‘Variable trade-of the red surrounding is a figurative inward boundary ofmarks’, in particular, which claim protection for an ab-

the red colour, so there is no longer an abstract colour

stractly unspecified number of different appearances, or

mark. The result is an image which, because of the outerfor a general design principle, lack the required specificity.

boundary of no specific shape, includes a multitude of different red surrounding areas with different visual effects.

The GPTO and the Federal Patent Court were agreed
that, when the trademark description is taken into consid-

Following the failure of the applicant’s appeal to the Fed-eration, the trademark filed for registration is not specific,

eral Court of Justice, the Federal Patent Court’s decision

but a variable trademark. The applicant argued that bothis now final.

the abstract colour mark and the white ‘k’ were each sufficiently specific in themselves and therefore eligible fortrademark protection, and this must therefore apply also
to the combination of signs.

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 5. The combination of aletter with a colour mark lacks specificity

11

ASSESSMENT
In this decision, the Federal Patent Court continues its

The principle of the freedom to combine trademarks

established practice regarding the assessment of variable

comes up against its limits, therefore, where the combi-

trademarks, and rules that the combination of a letter

nation of the trademark shapes results in a ‘variablewith a colour mark is not eligible for registration. ‘New’

mark’, since the prerequisite of specificity is not met in

types of trademark forms are subject to the same require-

such a case. The present decision is relevant for the com-ments of eligibility and specificity (formerly ‘representa-

bination not only of a colour mark with a word mark, butbility’), which have been sufficiently clarified by the casealso with a figurative mark, because the combination

law hitherto.

gives the colour mark a figurative boundary in equalmeasure. In such cases, accordingly, it is recommended

Had the application been successful, this would have in-that two separate trademarks be filed for registration,

cluded protection for many different appearances, for ex-

namely one figurative mark or word mark, and one colour

ample triangular, square or star-shaped surrounding ar-

mark. (Kröger)eas, as well as different size ratios of the letter ‘k’ to thesurrounding area.

12

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 5. The combination of aletter with a colour mark lacks specificity

DESIGN OF AGREEMENTS
6. Validity of ipso facto dissolution clauses
Federal Court of Justice judgment of 27 October 2022 in case no. IX ZR 213/21 – Insolvenzabhängige Lösungsklausel

BACKGROUND
Licensing agreements, particularly for trademark li-

The decision discussed here, handed down by the Ninthcences, routinely include a clause stipulating that one or

Civil Division of the Federal Court of Justice, the ‘Insol-

both of the parties may terminate the licensing agree-

vency Division’, addresses ipso facto dissolution clauses

ment without notice if the other party is insolvent. Thisin reciprocal agreements. Although the decision does notraises the question as to whether such provisions are also

specifically relate to the protection of IP rights, some ofvalid, or invalid because they impermissibly curtail thethe thoughts expressed in it can indeed be applied to li-

rights of the insolvency administrator from the outset. Ac-

censing agreements, so some recommendations con-cording to Section 103 of the Insolvency Code (InsO), thecerning the design of such agreements can be derived

latter has the right to choose whether to terminate or fulfil

from the decision.

the agreement, in the case of agreements that have notyet been fully fulfilled reciprocally (and this generally includes licensing agreements with running royalties).

DECISION
A debtor who later became insolvent was a sole trader

termination to be invalid and sued for payment of remu-bus operator. The respondent contracted the debtor toneration less expenses saved.

provide school transportation services to five schools. To
that end, the respondent and the debtor concluded a con-

Whether and under which conditions ipso facto termina-

tract of carriage. The contract included a right on the parttion/dissolution are valid or invalid has been a controver-of the respondent to terminate without notice in the fol-sial issue until now and has not yet been ruled upon in alowing cases:

supreme court decision. The Ninth Division has now decided on this issue as follows:‘The Contractor has become insolvent, insolvency proceedings or similar proceedings have been filed or•

According to Section 119 InsO, an agreement is in-opened in respect of the Contractor’s assets, the opening

valid if, from the outset, it precludes or limits the ex-of such proceedings has been refused for lack of assets,

ercising of the insolvency administrator’s right of

the Contractor is in the process of liquidation, or the Con-

choice under Section 103 InsO in cases where agree-

tractor has ceased operations.’

ments have not yet been fully and reciprocally fulfilled.

The claimant in the case was appointed provisional insolvency administrator at the debtor’s own request. The re-•However, there is no such limitation of the right ofspondent subsequently terminated the contract of car-choice in the case of insolvency-related dissolution

riage without notice. The claimant deemed the notice ofclauses if these are closely associated with a statutory

III. Design of agreements / 6. Validity of ipso facto dissolution clauses

13dissolution option, for example in the event of default,

to escape the mandatory provisions of Sections 103–

breach of contract or in general if it is unreasonable to118 InsO. The objective, factual situation is of primarycontinue the contract.

importance here, whereas subjective notions concerning the individual case are irrelevant.

•Despite discussion by legislators, there is no explicit
provision in Section 119 InsO or elsewhere in the law•

In the specific individual case ruled upon by the Insol-to the effect that ipso facto dissolution clauses are in-vency Division, there were no findings in lower courts

valid.

as to whether a factual reason for the contested dissolution clause existed, for example because there•

The law provides a differentiated rule instead. The de-was an imminent risk, if the debtor became insolvent,cisive factor is whether, from an ex ante perspectiveof the task of transporting school students not being– be it with regard to the circumstances existing at thefulfilled, or no longer being fulfilled reliably. In that re-time the contract was concluded, or with regard to thespect, the Federal Court of Justice referred the casecircumstances triggered by an insolvency – there is aback to the Higher Regional Court in Celle for a further

factual reason for an ipso facto dissolution clause,decision.

which gives the dissolution clause a different character than the mere intention of the contractual partner

ASSESSMENT
The decision indicates the particular conditions under

event of the licensee becoming insolvent is supple-

which ipso facto dissolution clauses are valid. In the casemented, because there are grounds for concern that con-of trademark licensing agreements, in particular, the fac-tinuing the agreement in the wake of the insolvency istual reason required by the Court for such clauses to beliable to damage the image of the licensed trademark.

valid should generally exist. In most cases, regardless of

However, this should not be supplemented in a purely

whether the licensor or the licensee becomes insolvent,formal manner, but with reference to the specific individ-

the image of a (successful) trademark will probably be

ual case where possible, i.e. by specifying the image thedamaged by the insolvency. Notwithstanding that, it islicensed trademark enjoys and why this would be jeop-

good advice when drafting the agreement to include rel-ardised by continuing the agreement in the wake of insol-

evant details in the termination clause. For example, byvency. (Eberhardt)

stating that the right to terminate the agreement in the

14

III. Design of agreements / 6. Validity of ipso facto dissolution clauses

7. Claims to liquidated damages based on cease-and-desist declarations are
barred by limitation – advantages and disadvantages of the ‘Hamburg custom’
popular among practitioners
Federal Court of Justice judgment of 27 October 2022 in case no. I ZR 141/21 – Vertragsstrafenverjährung

BACKGROUND
The Federal Court of Justice had to rule on the point in

however, a claim is not due for payment until the creditor

time at which the limitation period for a claim to liquidated

has determined the amount to be paid. An essential pre-damages begins. Whereas the previous courts focusedrequisite to be met before the limitation period can begin

on the end of the infringing act, the Federal Court of Jus-is therefore that a specific amount of liquidated damages

tice drew attention to the fact that, in addition to the en-

be set by the creditor. Nothing changes in that respectsuing claim, a further condition for the limitation period toeven if there is a long interval between the infringing act

commence is that the claim is also due for payment. Ac-

and the assertion of the liquidated damages.

cording to the ‘Hamburg custom’ (‘Hamburger Brauch’),

DECISION
In 2013, a professional photographer issued a letter ofcease and desist against payment of liquidated damages

warning to a seller on eBay Classifieds due to unauthorised

had been breached, but the respondent invoked the de-use of a photo. The warned party gave a declaration tofence of statute-barring (Section 214 (1) BGB).

cease and desist against payment of liquidated damages
according to the ‘Hamburg custom’, which the photogra-

The courts of instance acknowledged the respondent’s

pher accepted in June 2013. The declaration did not spec-right to refuse payment and ruled that the claim to liqui-

ify the actual amount of liquidated damages to be paid,

dated damages became statute-barred no later than thetherefore, but rather that the reasonable amount would be

end of 2017, based on a three-year limitation period fromdetermined by the creditor for each case of infringement

the end of the year (Section 195 BGB). In the view of the(Section 315 of the German Civil Code (BGB)) and in the

courts, the limitation period began at the end of 2014 be-event of dispute must be reviewed by the court specified

cause that was the year in which the photo was last avail-in the clause. The photo at issue was still being offered forable for purchase in the eBay classified advert. A limitation

sale in the eBay Classifieds advert until May 2014. The pho-

period that does not begin until later, when the amount totographer did not issue his claim for € 3,600 in liquidated

be paid has been determined by the creditor, would run

damages until December 2016, two and a half years later.

counter to the meaning and purpose of the statute of limi-

The seller refused to accept delivery of the registered let-tations. The photographer could otherwise control andter. A further year later, the photographer sent an email

postpone, at his own convenience, the point in time atwith identical content, but no reply was received. Finally, inwhich the limitation period commences, which could com-

November 2019, an attorney’s letter demanding payment

promise the debtor’s ability to furnish evidence. Such con-of the liquidated damages was successfully served on thesequences conflicted with the principle of legal certainty.

eBay Classifieds seller. When the latter failed to pay, thephotographer filed an action with the Local Court on 23 De-

The Federal Court of Justice disagreed with that assess-cember 2019, suing the seller for payment of the liquidated

ment and took the view that, in addition to the claim aris-damages plus attorney’s fees. The writ was not served un-ing, an essential prerequisite for commencement is thattil 23 January. It was undisputed that the declaration to

the claim is also due for payment (Section 271 BGB). To

III. Design of agreements / 7. Claims to liquidated damages based on cease-and-desist declarations are barredby limitation – advantages and disadvantages of the ‘Hamburg custom’ popular among practitioners

15

interpret the relevant Section 199 BGB (commencement

In that case, the limitation period begins when the act ofof the limitation period), it delivered a textbook example

infringement ends, because the claim is to a set amountof how to apply the legal principles of interpretation. Inof payment. Furthermore, in the ‘Hamburg custom’ case,addition to literal interpretation, the decision gives prime

a debtor could apply to have the amount of payment re-consideration to the origins of the legal norm as well asviewed by a court and thus request that the court (rather

its meaning and purpose. According to the wording ofthan the creditors) specify the amount of reasonable liq-

Section 199 (1) No. 1 BGB, the only relevant factor would

uidated damages, in the form of a judgment modifying abe the point in time at which the claim arose. However,legal right or status. The Federal Court of Justice refers,

this would disregard the fact that, in the major reform of

lastly, to the general barrier of good faith (Section 242

the law of obligations in 2010, Section 199 BGB may haveBGB) and to the debtor’s duty under the cease-and-desist

been reworded, but no changes to its content were in-agreement to exercise due consideration (Section 241

tended. It follows from the rationale for the legislation

BGB).

that everything should remain the same. And the old version required that the claimed payment be due (Sec-For these reasons, the limitation period did not begin untiltion 271 BGB). The wording had been changed for an-

the claimant specified the amount of payment in Decem-

other reason. The aim was to clarify the principle of theber 2016, and therefore ended at the end of 2019. The‘unity of damage’ (Grundsatz der Schadenseinheit), i.e.

action filed in December 2019 was just in time.

the principle that future, unforeseeable losses can alreadybe claimed when an initial loss has been incurred. There

However, the Federal Court of Justice was not allowed

was no intention to alter the requirement that the claimed

to decide on the merits of the case, because the writ was

damages be due for payment.

not served on the respondent until January 2020, after
the limitation period ended. Although the filing of an ac-

In the view of the Federal Court judges, the outcome istion generally stays the limitation period (Section 204 I

also consistent with the meaning and purpose of theNo. 1 BGB), the prerequisite is that service is ‘soon’. This

rules on statute-barring. The creditor generally has no in-

temporal assessment is denied to the Federal Supremeterest in delaying assertion of the liquidated damages. A

Court because the lower courts had not made any com-

debtor is also free to provide a cease-and-desist declara-

ments in that respect. Referral of the case back to thetion specifying a fixed contractual penalty, as opposed tolower court is de facto a mere formality, and the court ofliquidated damages according to the ‘Hamburg custom’.

instance will award the claim.

ASSESSMENT
The decision makes it clear that the creditor will generally

are the duty under the cease-and-desist agreement to ex-have an interest in seeking a promise to pay liquidated

ercise due consideration, and the principle of good faith.

damages according to the ‘Hamburg custom’. This gives
it the freedom to determine the amount of the liquidated

In this specific case, the creditor first lodged its claim twodamages itself. The principle of reasonableness en-

and a half years after the end of the infringement, butshrined in Section 315 BGB provides a compass for thethen did so at regular intervals until the action wasamount of liquidated damages. If specific circumstancesbrought. The debtor could not rely, therefore, on the cred-allow, the creditor can delay assertion of the claim with-itor being no longer interested in prosecuting the case.

out risking it becoming statute-barred. In this decision,

The conclusion to be drawn is that it is still possible, at

the Federal Court of Justice has clarified that the limita-

least, to wait three years from the end of the infringe-tion period does not commence until the amount of liqui-

ment before asserting the liquidated damages. This isdated damages has been specified. The only legal barriers

also in the interests of the party concerned, because the16

III. Design of agreements / 7. Claims to liquidated damages based on cease-and-desist declarations are barredby limitation – advantages and disadvantages of the ‘Hamburg custom’ popular among practitioners

limitation period would be that long if the amount of con-amount it has set and to question its reasonableness.

tractual penalty were determined beforehand. However,

However, there may be circumstances in which a fixed

the creditor should not wait any longer than that without

contractual penalty is preferable.

good cause, because it would otherwise run the risk ofacting in breach of good faith and forfeiting its right to liquidated damages.

As a basic principle, the cease-and-desist declaration sentby the warning party, which is usually pre-formulated asa draft, should not be thoughtlessly signed, even in cases

The debtor, for its part, should consider when signing aof an obviously justified warning; the choice of wording

declaration to cease and desist against payment of a pen-for the cease-and-desist declaration as well as the liqui-

alty, whether it really prefers liquidated damages accord-

dated damages should be prudently reviewed and care-ing to the ‘Hamburg custom’, with the uncertainties dis-fully worded. The draft sent by the warning party is by nocussed above, to a specified amount of contractual pen-means binding. In legal terms, the only relevant aspect isalty. The former alternative is often chosen because it al-that the declaration to cease and desist against paymentlows the creditor to negotiate with the debtor about theof a penalty dispels any risk of repetition. (Ehlers)

III. Design of agreements / 7. Claims to liquidated damages based on cease-and-desist declarations are barredby limitation – advantages and disadvantages of the ‘Hamburg custom’ popular among practitioners

17

18

AUTHORS
Rainer Böhm
Dr. jur. Constantin Brecht, LL.B.
Dr. jur. Julian Eberhardt, LL.M.
Dr. jur. Andreas Ebert-Weidenfeller
Nicol Ehlers, LL.M.
Yvonne Holderied
Anna-Simone Kröger

EDITING & LAYOUT
Katrin Hellmann

Further members of our team can be found athttps://www.eisenfuhr.com/en/attorneys

Photo credits
Title page
Registered trademark symbol,
stock.adobe.com/jules,
File: #66109180
Trademark word cloud,stock.adobe.com/ijdema,
File: #47035951
Justitia with blue sky,
iStockphoto.com/liveostockimages,
Stock photo ID: 114161816
Inside back cover
Munich location:© ADRIAN BECK PHOTOGRAPHER
Berlin location:© Imagebroker / Alamy Stock Foto

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