Background knowledge

Again

Holungs

Danger.

The risk of repetition

If someone commits an infringement (e.g. in trademark law, competition law, copyright law, design law, patent law), this creates a risk of repetition. The reasoning behind this is that someone who has committed an infringement once is likely to do so again. Case law assumes that the risk of repetition is automatically given if an infringement has already taken place once. This means that the infringer must ensure that this risk of repetition is eliminated.

The risk of first offense

In contrast to the risk of repetition, the risk of first infringement refers to the imminent first-time commission of an infringement. It exists if there are concrete indications that an infringement is imminent. An example of this is, for example, a trademark application without having already used the trademark.

How can the risk of repetition be eliminated or cease to exist?

To eliminate the risk of repetition, it is not sufficient to simply stop the infringement. Rather, case law requires concrete measures to demonstrably exclude a repetition.

Reasons for the elimination of the risk of repetition can be, for example

Submission of a cease-and-desist declaration with penalty clause
The infringer undertakes to refrain from the conduct complained of in the future. A contractual penalty may be imposed if the infringement is repeated. A declaration to cease and desist without a promise of a contractual penalty or an insufficient contractual penalty is not sufficient.
Notarial declaration of submission
The infringer can undertake to cease and desist by means of a notarial declaration of submission. The notarized declaration of submission does not require a promise of contractual penalty, but does require a threat of a fine. However, the party issuing the cease and desist letter must agree to this.
Settlement
The parties can also eliminate the risk of repetition by means of an out-of-court settlement. Here too, however, both parties must agree to this.
Final declaration
If an interim injunction has already been issued for the act to be refrained from, the infringer can recognize this as a final settlement by means of a final declaration.
Final court decision
A final court decision eliminates the risk of repetition of this violation.

In contrast, in order to eliminate the risk of first infringement, it may be sufficient to take an opposing action and thereby eliminate the circumstances that led to the risk of first infringement, e.g. by withdrawing a trademark application.

Revival of the risk of repetition in the event of a new offense

Even if the risk of repetition was initially eliminated by a cease-and-desist declaration or other measures, it may arise again in the event of another similar infringement. A repeat infringement is a strong indication that the original measures were not sufficient to permanently prevent a repetition. In this case, the risk of repetition may arise again, so that there is a renewed threat of injunctive relief and possibly increased contractual penalties or court sanctions. Companies should therefore not only take one-off measures after a first infringement, but should also continuously monitor and adapt their processes in order to avoid future infringements.