In a recent decision, the ECJ has defined the grounds under which a cease and desist letter might interrupt forfeiture periods (ECJ GRUR 2022, 986 – HEITEC.). This should only be the case, according to the ECJ, for actions and warning letters that aim to achieve a legally binding solution and are handled with reasonable care.
This judgment involved a legal dispute between HEITEC AG as plaintiff and HEITECH Promotion GmbH as defendant, in which HEITEC AG, as owner of the earlier trademark, demanded that HEITECH Promotion GmbH cease and desist from using the company mark HEITECH Promotion GmbH and trademarks containing the word element “heitech.” After an ineffective warning letter, it took HEITEC AG three and a half years to initiate a lawsuit, which was not served on the defendant until one and a half years later due to various formal errors. The case went all the way to the Federal Court of Justice (BGH), which was tasked with determining whether HEITEC AG could be held accountable for forfeiture under Section 21 I, II of the MarkenG, given that it had tolerated the younger trademark for five years while being aware of it. Therefore, the important question was what requirements must be met by measures that can disrupt such acceptance and, consequently, the loss of rights. This matter has been referred to the ECJ.
In its judgement, the ECJ emphasised that the so-called acquiescence can only be terminated by actions in which the intent to cease the infraction is manifest. Typically, this is the situation where an administrative or judicial appeal is filed. In unusual situations, however, the seriousness is also lacking if the filing of such a legal remedy is deficient and these faults are not addressed in a timely manner.
A warning letter might also terminate compliance. Nonetheless, if the cease-and-desist letter is ineffective, there is a lack of adequate seriousness if additional possible measures to correct the infringement are not adopted soon.
In the future, only prompt (and properly formatted) measures will be able to stop acquiescence if there is no doubt about their seriousness. If a warning letter is unsuccessful, further proceedings must be taken in a timely way, with the ECJ particularly noting that the filing of an administrative or judicial legal remedy is adequate in any event. In order to demonstrate seriousness and prevent forfeiture, it is advisable to file a lawsuit immediately following the expiration of the period specified in the warning letter. Sending repeated warning letters without taking additional action after the deadlines specified in the warning letters expire is ineffective. Consequently, initiating a lawsuit must be appropriate to end the consent. Therefore, the plaintiff should do all possible to guarantee that the defendant is promptly served. The mere filing of an action as a pretense for postponing the deadline, without respecting the formal procedures or in any case without rapid repair of errors, will no longer be sufficient to end acquiescence, according this ruling.
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