No more Malle (warnings)!

Trademark law: Celebrate Malle parties again at last!

Word had gotten around among party organizers: Trademark owner Jörg Lück diligently warned Malle parties because, as the owner of the word mark "Malle", he enjoyed trademark protection for, among other things, "party organization, party execution; operation of a discotheque". And so he did not shy away from filling the upper school coffers with Warning costs and (sometimes absurd) claims for damages and to shatter the dream of the Abiball.

Extract from the trademark register showing the canceled trademark "Malle"
The Malle brand for parties was created by the EUIPO and the ECJ deleted

The problem: the road to justice is long and expensive

Trademark attorney Robert Meyen advised a handful of party organizers in the decade of Malle-Warnings were affected. It was repeatedly advised to file an application for cancellation of the "Malle" trademark and under no circumstances to file a Cease and desist declaration or Compensation for damages to be paid.

However, cancellation proceedings are usually lengthy and (initially) expensive. Even if the prospect of success was always good in our estimation: with a Cancellation Division and a Board of Appeal at the EUIPOAfter a stopover at the European Court of Justice and at the end of a decision at the European Court of Justice, the person being warned may have to pay €50,000 in advance before they receive their rights. And the aforementioned upper grades in particular are likely to have been spread across the universities of the Republic for a long time.

So in the end, despite good chances, all clients decided against resistance and in favor of a solution that was as amicable as possible.

ECJ had the trademark "Malle" deleted on 14.06.2022

We are happy and relieved to read that other colleagues were "luckier" and found clients who had the necessary patience and the necessary small change. In the end, two victims of Malle cease-and-desist letters from Germany filed cancellation requests.

On May 18, 2020, the Cancellation Division of the EUIPO declared the trademark invalid. The appeal against this decision was dismissed by the Board of Appeal of the EUIPO on December 21, 2020.

Already on December 15, 2021 the EGC also confirmed the deletion. Then certainty on June 17, 2022: the ECJ did not accept the appeal for a decision. The deletion is therefore legally binding.

Why was the "Malle" trademark canceled?

The EUIPO and the EGC have based the deletion on the fact that "Malle" is a place name. According to § Section 8 (2) no. 2 MarkenG and Art. 7 para. 1 c) EUTMR trademarks are excluded from registration if they describe either the geographical origin or the nature of the goods or services for which the trademark was applied for. In this case, it is either to be expected that "Malle" parties are organized on Mallorca or from Mallorca or that they deal with the topic of "Mallorca".

I am affected: Do I have to return the Cease and desist declaration further?

Of course, the question now arises as to how the cancellation of the "Malle" trademark will affect those affected. In any case, the Cease and desist declaration The trademark is initially effective unless a resolutory condition is included which makes the effectiveness dependent on the legal existence of the trademark.

You should use the Cease and desist declaration but cancel as soon as possible. Your notice of termination should state that you for good cause due to discontinuation of the trademark right cancel.

Once that's done, you can unpack the sangria buckets and get the Malle party started.

Will I get my money back?

There is even a good chance of getting your money back. However, this depends on the circumstances of the individual case. In principle, the declaration of invalidity has retroactive effect to the date of registration (§ Section 52 (2) MarkenG, Art. 62 para. 2 UMV). It is therefore treated as if it had never been registered.

This also meant that there was no legal basis for the payment of Warning costs retroactively. A payment without legal grounds is § Section 812 (1) BGB to be released. However, we do not recommend taking action here without a lawyer, as there are numerous exceptions to the rule.

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