No isolated reimbursement of cease-and-desist letter costs in case of failure

After an unsuccessful cease-and-desist letter, the sender cannot claim isolated reimbursement of the costs from the recipient without simultaneously bringing an action for injunctive relief.

In the present case, after the recipient had not issued the requested declaration to cease and desist, the sender attempted to claim isolated reimbursement of the cease-and-desist letter costs from the latter without at the same time pursuing the claim for injunctive relief. He bases his argument on the assertion that he wished first to ascertain the court's legal opinion and furthermore to provide the defendant with a "golden bridge".

The court's decision

The Regional Court (LG) Frankfurt denied the plaintiff's claim for reimbursement (judgment of 24.05.2002 – 3/12 O 31/02). The court is of the opinion that a claim for cost reimbursement can only exist if the cease-and-desist letter serves the interests of the recipient. This is only the case if it serves the purpose of enabling the recipient to decide between submission and bringing an action for injunctive relief. If the sender then does not pursue his claim for injunctive relief following the failure of his cease-and-desist letter, he expresses thereby that he was not seeking to achieve with his cease-and-desist letter the goal of avoiding an injunction dispute. The cease-and-desist letter thus – even in view of the possible double burden of two proceedings – does not serve the interests of the alleged person liable to cease and desist, so that a claim for reimbursement of the cease-and-desist letter costs based on negotiorum gestio (GoA) cannot exist.

Moreover, clarification of the matter through the cost dispute is not necessarily linked. In the following proceeding, the claim for injunctive relief is open to a fundamental new and different assessment, which likewise does not correspond to the purpose of the cease-and-desist letter to clarify this question quickly and without reservation. In truth, the plaintiff's concern was not to spare the defendant, but to minimise his own cost risk.

The expenses for the cease-and-desist letter were therefore neither necessary nor appropriate, so that the action as a whole could not have succeeded.

The same chamber already decided in this direction in a similar case on 01.02.2001 (3/12 O 161/01).

Conclusion

The distinction from the "small competitive dispute" or "small trade mark dispute" lies in the fact that in these cases the declaration to cease and desist requested with the cease-and-desist letter was previously issued and the cost dispute now follows. In this proceeding, the cease-and-desist letter is now examined for its justification.

Other views on this matter are certainly rightly represented. Thus it may be the case that the sender no longer pursues the claim for injunctive relief for a good and comprehensible reason, for example because the recipient has indicated that he will not repeat his conduct or there are otherwise sufficient indications of cessation. For what reason should the sender be forced into an injunction proceeding that brings him nothing? According to the correct view, the cease-and-desist letter costs can therefore in some cases also be claimed in isolated fashion.