Trade Mark Infringement by Hard Rock?

The Federal Court of Justice (BGH) had to decide a legal dispute between the internationally active Hard Rock group and a restaurant operator in Heidelberg. The worldwide operators of the Hard Rock Cafes issued a cease-and-desist letter to the Heidelberg restaurant owner due to the infringement of several trade marks and demanded cessation of use of the trade mark name for the operation of a restaurant and for use on merchandise articles.

Since 1978, the Heidelberg restaurant operator has already been using the typical circular Hard Rock logo of the Hard Rock group on menus and drink cards as well as on glasses. He uses the word sequence "Hard Rock Cafe" and the logo as an entrance sign, on the entrance door and in the windows of the restaurant and offers, for example, clothing and other merchandise articles with the Hard Rock logo.

As early as 1992, the Hard Rock group applied for a preliminary injunction against the restaurant operator from Heidelberg, but withdrew the application for cessation in the proceedings for preliminary relief after the restaurant operator raised an objection. Fourteen years later, the Hard Rock group now again demands cessation.

Court's Decision

By means ofUrteil vom 15.08.2013 – Az. I ZR 188/11 the Federal Court of Justice (BGH) decided that the claims of the Hard Rock group against the operation of the Heidelberg restaurant under the name "Hard Rock Cafe Heidelberg" were barred by lapse of time, that is, no longer enforceable, since they had acquiesced in the name of the Heidelberg restaurant for more than 14 years after withdrawal of the application for preliminary injunction.

However, the Heidelberg restaurant operator may not use merchandise articles with the registered signs and/or logos, as the doctrine of lapse of time does not apply in that regard. The legal consequence of lapse of time under trade mark and unfair competition law is solely that a trade mark proprietor can no longer enforce his rights with respect to certain infringements already committed or still ongoing. In the case of repeated, identical infringement acts, each infringement act creates a new claim for cessation. Moreover, longer inactivity on the part of the trade mark proprietor cannot in this respect establish legitimate reliance that such conduct will continue to be acquiesced in. Each offer and sale of a merchandise article, each new advertisement and each new internet presence must be considered separately for the purpose of determining lapse of time.

Conclusion

Positive knowledge of facts constituting trade mark infringement can, after a certain period of time, result in the actual existing trade mark rights no longer being enforceable. This must be taken into account in such situations.