Germany 'Da Vinci' Decision of the Federal Supreme Court (Bundesgerichtshof)23 October 2019 - Case No.Ⅰ ZR 46/19

摘要

It can violate the principles of good faith when the proprietor of a trade mark invokes a purely formal legal position when asserting contractual penalty claims. An abusive exploitation of a formal legal position must be assumed when a trade mark proprietor (1) applies to register a number of trade marks for different goods or services; (2) has no serious intent to use the marks in question - particularly for use in the proprietor's own business or for third parties on the basis of a concrete existing or potential consulting concept; and (3) the trade marks are essentially hoarded for the purpose of inundating third parties who use identical or similar denominations with injunctive and compensation claims (continuation of Federal Supreme Court, decision of 23 November 2000, I ZR 93/98, GRUR 2001, 242, 244 - Classe E).