Judgment of 22.09.2021 – I ZR 20/21
Guiding principles of the BGH:
(1) If a sign is used in advertising alone in a way that infringes trademark rights, this does not exclude from the outset that the claim for damages can be calculated on the basis of a sales license within the scope of the license analogy. The choice of the basis for calculation is primarily a matter for the court of facts within the framework of Section 287 (1) ZPO. 2.
(2) When calculating the claim for damages on the basis of a sales license, a license reduction in the case of a trademark infringement only in advertising cannot be justified by the fact that it is based on a turnover which is only to a small extent due to the trademark infringement (continuation of BGH, judgment of July 29, 2009 – I ZR 169/07, GRUR 2010, 239 = WRP 2010, 384 – BTK). However, the fact that the trademark infringement is limited to advertising may be taken into account to reduce the license fee due to a possibly lower intensity of the trademark infringement.
The relevant provisions are:
MarkenG § 14 (6) sentence 3; ZPO § 287 (1).
In its reasoning on the license analogy, the court states in para. 13 et seq. as follows:
(2) When calculating damages according to the principles of license analogy, the decisive factor is what reasonable contracting parties would have agreed upon as remuneration for the use of the trademark upon conclusion of a license agreement. For this purpose, the objective value of the presumed right to use must be determined, which consists of the reasonable and customary license fee (see BGH, judgment of July 29, 2009 – I ZR 169/07, GRUR 2010, 239 marginal no. 20 = WRP 2010, 384 – BTK; judgment of June 18, 2020 – I ZR 93/19, GRUR 2020, 990 marginal no. 12 = WRP 2020, 1189 – Nachlizenzierung, mwN).
In order to assess which license rate is appropriate in the case of infringement of a trademark right, the customary license fee that would have to be paid for granting the right to use the trademark must be taken into account. In this context, all circumstances are to be taken into account which would also have had an influence on the amount of the remuneration in the case of free license negotiations (for design law, see BGH, judgment of June 23, 2005 – I ZR 263/02, GRUR 2006, 143, 146 [juris, marginal no. 28] = WRP 2006, 117 – Catwalk, mwN). As a starting point for the assessment, the range of customary market license rates for the type of trademark in question can be used (see BGH, GRUR 2010, 239 marginal no. 25 – BTK, mwN). In the case of distinctive signs, the degree of recognition and the reputation of the sign play a decisive role as value-forming factors. In addition, the degree of likelihood of confusion is relevant (cf. BGH, GRUR 2010, 239 marginal no. 25 – BTK), in particular the degree of similarity between the signs (on design law, cf. BGH, GRUR 2006, 143, 146 [juris marginal no. 28] – Catwalk). In addition, the scope (on copyright law, see BGH, judgment of October 2, 2008 – I ZR 6/06, GRUR 2009, 407 marginal no. 29 = WRP 2009, 319 – Whistling for a train) and duration of the infringing activity (see OLG Düsseldorf, GRUR-RR 2003, 209, 210 [juris marginal no. 29]) as well as its intensity (for design law see BGH, GRUR 2006, 143, 146 [juris marginal no. 28] – Catwalk; OLG Düsseldorf, GRUR-RR 2003, 209, 211 [juris marginal no. 31]). Market confusion damage may also be included in the calculation of the license fee (cf. BGH, GRUR 2010, 239 marginal no. 29 – BTK). An increase of the royalty rate by means of an infringer’s surcharge is out of the question; such a surcharge is incompatible with the fundamentals of German law on damages (cf. BGH, GRUR 2020, 990 marginal no. 26 – Nachlizenzierung).
(3) The amount of the license fee to be paid as damages is to be assessed by the court of facts in accordance with Sec. 287 (1) ZPO, taking into account all circumstances of the individual case in accordance with its free conviction. This estimate of damages is subject to only limited review by the appellate court. It is only possible to review whether the court of fact misunderstood legal principles of damage assessment, omitted essential assessment factors or based its estimate on incorrect standards (see BGH, GRUR 2020, 990 nos. 13 and 37 – Nachlizenzierung; BGH, judgment of July 27, 2021 – VI ZR 480/19, WM 2021, 1659 no. 24; see also BGH, GRUR 2010, 239 no. 21 – BTK).
The entire decision can be read here (only in German).