Investigations in the event of trademark infringement?

The party infringing trademark rights is regularly also obliged to provide information. But when is the obligation to provide information fully satisfied? According to the view of the Higher Regional Court (OLG) Frankfurt a. Main, a so-called negative declaration is in any event not sufficient. Rather, further investigations are required.

A dealer had infringed a trademark by offering shoes. In the course of proceedings for a preliminary injunction, he was ordered to cease and desist. The court also ordered the dealer to provide information in writing, with submission of corresponding purchase and sales receipts, on the name and address of the manufacturer, the supplier and/or other previous owners.

Following proper service of the preliminary injunction, information was provided by submitting two invoices. The dealer stated that the shoes could be attributed to one of the two invoices. However, identification of the shoes by means of article numbers was no longer possible. Telephone investigations with the dealers yielded no results. At the request of the trademark proprietor, a fine for non-compliance was imposed on the dealer. An appeal against this by the dealer was unsuccessful.

Higher Regional Court (OLG) Frankfurt: Further investigations required

According to the view of the Higher Regional Court (OLG) Frankfurt (Beschluss vom – 08.08.2022- 6 W 41/22), the dealer did not fulfil his obligation to provide information with his statements.

A claim for (supplementary) information does not exist if the obligor has provided information that is formally in accordance with the requirements. However, if there is evidence of incompleteness, there is no formally compliant information.

Insofar as no meaningful documents are available regarding the origin of the goods marked with the earlier trademark, the dealer must investigate with the potential previous suppliers. He must exhaust all information options available to him. This includes review of business records and, if necessary, enquiries to suppliers and purchasers.

It is true that unknown previous suppliers do not first need to be identified. If the previous suppliers are known, any doubts must be clarified by enquiring with the suppliers. Only if it is established that performance of the information obligation is impossible can investigations be omitted. Mere assertion that further investigations with the previous suppliers have no prospect of success is not sufficient.

Conclusion

If information imposed by court order is provided with evident incompleteness, an information claim can be pursued by way of enforcement proceedings. Insofar as no meaningful documents are available regarding the origin of the goods infringing the trademark, the infringer must conduct further investigations. In doing so, he must exhaust all information options available to him. This may also include investigating further suppliers. Otherwise, a fine for non-compliance is threatened.