Recoverability of pre-litigation patent attorney costs

The Federal Court of Justice (BGH) decided in its judgment of 24.02.2011 (I ZR 181/09) that the question of whether costs incurred in pre-litigation cease-and-desist proceedings due to a trade mark infringement for engaging a patent attorney are recoverable is not governed by § 140 Abs. 3 MarkenG. Rather, in the context of the cease-and-desist letter, the decisive factor is whether the consultation of the patent attorney was necessary. This condition was not met in the decided case. The BGH furthermore made an explicit finding that the additional engagement of a patent attorney in trade mark law disputes is generally not necessary due to the requisite expertise of the attorney-at-law.

The plaintiff is the holder of a trade mark registered, inter alia, for jewellery.trade mark. She made a pre-litigation claim against an eBay seller who offered jewellery under this trade mark without a corresponding licence. The cease-and-desist letter was signed by both an attorney-at-law and a patent attorney. As a consequence, cease-and-desist costs of €2,080.50 each were subsequently claimed for both representatives. The court of first instance (Higher Regional Court (OLG) Frankfurt/Main) upheld the claim for recovery of the attorney-at-law costs, but rejected the claim for recovery of the patent attorney costs. The reasoning was that cease-and-desist costs in trade mark law are in principle recoverable under the doctrine of agency without authority pursuant to §§ 677, 683 S. 1, 670 BGB or as damages pursuant to § 14 Abs. 6 MarkenG – however, only if these costs were "necessary".

The provision of § 140 Abs. 3 MarkenG, according to which the examination of the necessity of engaging a patent attorney in proceedings before the court is generally dispensable, is not applicable in the context of the pre-litigationcease-and-desist proceedings. The question of recoverability of pre-litigation cease-and-desist costs is determined exclusively by the necessity of engaging the legal representative. In this regard, nothing else can apply to the costs of a patent attorney than to those incurred through the engagement of an attorney-at-law, otherwise the former would without further ado be recoverable, whereas in the case of the latter, corresponding evidence must always be provided. With regard to the patent attorney costs, the necessity was denied because the patent attorney did not undertake typical patent attorney activities – such as, for example, searches regarding the register status or the use status.

The BGH confirmed this approach, rejected the revision of the plaintiff directed against the court of appeal judgment and justified this in greater detail.

Insofar as the attorney-at-law is able, on the basis of his trade mark law skills alone, to legally assess the facts and to send a cease-and-desist letter to thetrade mark infringer, the engagement of a patent attorney is not necessary. Rather, the court proceeds from the assumption that the additional engagement of a patent attorney alongside the attorney-at-law is generally dispensable because it does not involve scientific or technical matters. Qualified attorneys-at-law are available in sufficient numbers. This should also make it clear that it is irrelevant which trade mark law knowledge the instructed attorney-at-law actually possesses, but only which knowledge he should possess as an attorney-at-law practicing in trade mark law.