Warnings are an annoying problem in e-commerce. Many online retailers are even confronted with the same warning several times because of the same warning topic. A practical problem with such “multiple warnings” is how “sharp” the repeated cease-and-desist declaration must be designed. The BGH has now provided clarity here.
When issuing a warning, for example under competition law, trademark law or copyright law, the warning person usually demands the submission of a so-called cease and desist declaration with penalty clause in order to avoid future, similar violations. If the person warned gives such a warning, he must pay the warning person a so-called contractual penalty for each future, culpable and similar violation.
This circumstance is possibly very lucrative for the warning person, since he can quickly demand a higher four-digit amount from the person who has been warned. This applies in particular if the warning person had issued a cease-and-desist declaration with a fixed amount for the contractual penalty. The amount of 5,100 euros per violation has become the “desired amount” for many warnings.
If the person who has been warned then culpably commits a similar violation 10 times, for example, he has hardly any opportunity to reduce the calculated contractual penalty of 51,000 (10 x 5,100) euros.
This can happen quickly, for example if the cease-and-desist declaration refers to a missing or incorrect basic price and then an incorrect basic price is given for several articles or the basic price is missing.
As part of a legal consultation in response to a warning, the person who has been warned, if it is at all justifiable to issue a declaration of discontinuance in the matter, is then usually advised to issue a declaration of discontinuance according to the so-called New Hamburg Custom.
This does not include a fixed amount for the contractual penalty.
Rather, the determination of the amount of the contractual penalty is left to the equitable discretion of the warning person and at the same time it is agreed that the amount then determined by the warning person can be reviewed by a court for its fairness.
The great advantage of this solution is that no rigid obligation is entered into, from which the person who has been warned will no longer be able to escape in the event of multiple violations in the future.
If a competitor or Abmahnverband again warns the same person who had already submitted a cease-and-desist declaration after the first warning, the submission of a “sharper” cease-and-desist declaration is usually demanded with the argument that the previous promise of desist did not prevent the person who had been warned from repeating it prevent the violation.
Dispute over aggravation
With this argument, the warning letter is fundamentally right. After all, the cease-and-desist declaration is intended to prevent the person who has been warned from committing another, similar violation. But she doesn’t have that, so that the person who has been warned again has to top it up. Depending on the type of cease-and-desist declaration previously submitted, how this “top-up” should look in practice is a matter of debate.
If a cease-and-desist declaration with a fixed contractual penalty promise was previously issued, the matter is quite clear: the amount must be increased. The courts see a claim by the warning party to a significantly higher promise of contractual penalties. If it was the well-known 5,100 euros, 7,500 or even 10,200 euros are often requested in the “second round”. In the daily legal practice, there are also declarations of discontinuance that provide for a contractual penalty of more than 30,000 euros per violation.
In practice, however, disputes often arise as to how to proceed, especially when submitting the previous cease-and-desist declaration using the new Hamburg custom.
One view assumes that the renewed cease and desist declaration should be improved according to the new Hamburg custom with a fixed minimum amount for future violations.
On the other hand, it is argued that the warning person is adequately protected by the new Hamburg custom and its flexibility even in the event of further violations, since he can take the previous history into account within the scope of his reasonable discretion and thus further tighten the “thumbscrews”. Therefore, the further cease-and-desist declaration can again be made using the new Hamburg custom, i.e. without a fixed promise of a minimum amount.
Clarification by the BGH
The BGH has now provided clarity with its default judgment of December 1, 2022, Az.: I ZR 144/21.
If the person who has previously been warned of a trademark infringement, who then submitted a declaration of discontinuance in accordance with New Hamburg Customs, is warned again for renewed infringement of this trademark, the submission of a further declaration of discontinuance in accordance with New Hamburg Customs is sufficient to eliminate the risk of repetition.
The warning letter, a well-known German car manufacturer, did not accept this in the case of a dispute and took legal action against the warning letter, which, in his view, had not submitted a sufficient further cease-and-desist declaration. In the appeal instance, the BGH shared the legal view of the person warned:
A right of determination that is unlimited in terms of amount – as provided for in the declaration made by the defendant according to “Hamburg custom” – offers the creditor the decisive advantage of being able to determine the contractual penalty in serious cases of infringement, which can also be significantly higher than that which would have been reasonable for agreeing a fixed amount in view of the previously committed infringing act. A contractual penalty agreement in this form is therefore a particularly suitable means of preventing serious or momentous repetitions of the infringing act, since the debtor is exposed to an appropriately higher risk of punishment when committing such violations (…). These principles also apply to a further cease-and-desist declaration issued after a renewed violation. The Court of Appeal rightly pointed out that the higher penalty that is generally required in the event of a repeat offense is already inherent in a promise of contractual penalties according to “Hamburg custom”. With the possibility of setting a contractual penalty in a previously unforeseeable amount, this has the necessary deterrent effect on the debtor in the event of a repeat violation, especially since the fact of repeated infringement must be taken into account in a judicial review of the appropriateness of the contractual penalty (…). Contrary to the opinion of the revision, it is therefore not necessary to state a lower limit in the event of a recurrence.
This means that there is now certainty that no minimum amount has to be included in the further cease-and-desist declaration, but that a cease-and-desist declaration can be submitted according to the new Hamburg custom.
Warnings often lead to legal disputes. If it goes through the authorities, as in the present case, the cost burden can take on dangerous proportions.
In the event of a warning, it is always advisable to consult a specialist lawyer. This is because, in most cases, the warning is issued by a lawyer in order to be able to counteract the “attack” adequately.
The IT law firm supports online retailers and website operators with their protection packages to effectively avoid warnings under competition law.
Of course, we are also at your side if you have already received a warning. Feel free to contact us if we can also secure your website or if you need legal help if you have received a warning.
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