Counter-cease-and-desist letter abusive?

Is a counter-cease-and-desist letter abusive? Time and again, this objection is raised by those sending cease-and-desist letters, who are frustrated that the recipient counters with the same means. The Federal Court of Justice has now taken a position on the admissibility of a counter-cease-and-desist letter from a previously warned trader.

A trader sold printers and printer accessories on Amazon Marketplace. A competitor operating on eBay auctioned several toner cartridges on eBay. However, these offerings each contained an incorrect right of withdrawal notice. On this basis, the marketplace trader warned his competitor by cease-and-desist letter.

The cease-and-desist letter was followed by a counter-cease-and-desist letter from the competitor operating on eBay. He argued that the marketplace trader had offered various printers and related accessories without providing the telephone number mentioned in the imprint in the right of withdrawal notice. This constituted a clear violation of theunfair competition law. However, the marketplace trader saw the counter-cease-and-desist letter as an abusive approach.

In the absence of a declaration of non-infringement with penalty clause, the dispute resulted in court proceedings, which ultimately ended up before the Federal Court of Justice (BGH).

Decision of the Federal Court of Justice (BGH) on the counter-cease-and-desist letter

The Federal Court of Justice (BGH) (judgment of 21.01.2021, case number I ZR 17/18) did not regard the counter-cease-and-desist letter from the eBay trader as abusive. It was not possible to assume abusive behaviour in the form of the counter-cease-and-desist letter.

Under the provisions of unfair competition law, a cease-and-desist letter may be inadmissible. Namely, if it is abusive in light of all the circumstances. This is in particular the case if it serves predominantly to create a claim for compensation of expenses or costs of legal enforcement against the infringer.

There is an abuse of rights if the creditor is guided by considerations extraneous to the subject matter in asserting the claim for cessation. However, these need not be the sole motive of the creditor. It is required, but also sufficient, that the considerations extraneous to the subject matter predominate.

Counter-cease-and-desist letter abusive?

However, the Federal Court of Justice (BGH) found that these prerequisites were not met. There was no allegation of abusive behaviour. The counter-cease-and-desist letter concerning a comparable violation merely indicated that the eBay trader did not wish to be in a worse position than the marketplace trader who sent the cease-and-desist letter first.

However, this motivation alone was insufficient for a finding of abuse of rights. It could not be said to be an abusive counter-cease-and-desist letter, according to the highest court.

Conclusion

A counter-cease-and-desist letter can be an appropriate and legally permissible response option to a cease-and-desist letter to defend against a cease-and-desist letter. The objection, often raised reflexively, that such a counter-cease-and-desist letter is abusive does not typically apply. After all, the sender of the cease-and-desist letter must comply with the same requirements as the recipient. Otherwise, only the party who sends the cease-and-desist letter first would prevail, which ultimately cannot be correct.

Before warning others, one should therefore check whether one is offering a target oneself in order to avoid a boomerang in the form of a counter-cease-and-desist letter.