In a recent judgment, the ECJ has now clarified under which conditions a cease and desist letter can interrupt forfeiture periods (ECJ GRUR 2022, 986 – HEITEC.). According to the ECJ, this should only be the case for actions and warning letters that are aimed at achieving a legally binding solution and have been implemented with due diligence.
This judgment concerned a legal dispute between HEITEC AG as plaintiff and HEITECH Promotion GmbH as defendant, whereby 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 from using trademarks with the word element “heitech”. Following an unsuccessful warning letter, HEITEC AG took a full three and a half years to file a law suit, which was not served on the defendant until one and a half years after the action had been filed due to various formal errors. The proceedings went all the way to the Federal Court of Justice (BGH), which had to clarify whether HEITEC AG should be held liable for forfeiture under Sec. 21 I, II MarkenG, since it had tolerated the younger trademark for five years despite being aware of it. The decisive question was therefore which requirements are to be met by measures that can interrupt such acquiescence and therefore forfeiture of rights. This question was referred to the ECJ.
Decision of the ECJ
In its ruling, the ECJ clarified that only such actions can terminate the so-called acquiescence, in which the serious intention to terminate the infringement is clearly evident. This is generally the case when an administrative or judicial appeal is filed. However, the seriousness is also lacking here in exceptional cases if the filing of such a legal remedy is defective and these defects are not corrected in a timely manner.
Also a warning letter can terminate the acquiescence. However, if the cease and desist letter remains unsuccessful, there is also a lack of sufficient seriousness here if further possible measures to remedy the infringement are not taken promptly.
In the future, only those measures that are taken promptly (and in proper form) will be able to end an acquiescence if there is no doubt as to their seriousness. If a warning letter remains unsuccessful, further actions must follow in a timely manner, whereby the ECJ specifically only comments on the fact that in any case the filing of an official or judicial legal remedy is sufficient. It is therefore advisable to file a lawsuit immediately after the unsuccessful expiration of a deadline set in the warning letter in order to signal seriousness and to prevent forfeiture. Repeatedly sending warning letters without ever taking further steps when the deadlines set in the warning letters expire does not help. In turn, filing a lawsuit must be suitable to end the acquiescence. Thus, the plaintiff should do everything possible to ensure prompt service on the defendant. The mere filing of an action as a sham for delaying the deadline, without observing the formal requirements or in any case without prompt correction of errors, will no longer be able to bring about an end to acquiescence according to this judgment.