Trademark warnings are often associated with high costs, especially if the fees for a patent attorney are claimed in addition to the attorney's fees. For a long time, the reimbursement of these costs was common practice until the Federal Court of Justice (BGH) made a groundbreaking decision in 2022: patent attorney fees are only reimbursable if they were actually necessary.
This decision brings clarity to the previously inconsistent case law and sets stricter standards. The Frankfurt Higher Regional Court (OLG) also followed this line in a recent ruling in 2023, which also emphasized the necessity of patent attorney fees.
This article sheds light on the current legal situation regarding the reimbursement of patent attorney costs in the case of trademark warnings and shows in which cases these costs can be reimbursed. We also discuss the influence of European directives, which also impose stricter requirements on the reimbursement of costs.
The most important facts at a glance
- Former legal situationIn the past, patent attorney fees for trademark warnings were reimbursed as a matter of course without examining the necessity.
- Current legal situationSince 2022, reimbursement is only required if the involvement of a patent attorney is actually necessary.
- Judicial decisionsBoth the BGH and the OLG Frankfurt have ruled that patent attorney fees are generally only recoverable for complex or technical issues.
- OutlookThe requirements for eligibility for reimbursement have become stricter, which will have an impact on future trademark warnings.
Previous legal position on the reimbursability of patent attorney fees
Amendment by ECJ and BGH: Patent attorney fees only if necessary
Until the decision of the Federal Court of Justice in 2022, it was considered that patent attorney fees for trademark warnings pursuant to § Section 140 (4) MarkenG without examining the necessity of engaging a patent attorney. However, this practice was overturned by the European Court of Justice (ECJ) and the Federal Court of Justice (BGH). In 2022, the ECJ ruled that national regulations that provide for automatic reimbursement without an examination are not compatible with EU law. As a result, the BGH changed its case law and ruled that the reimbursement of patent attorney fees is only permissible if the appointment of a patent attorney was necessary in the specific case.
Influence of European directives on eligibility for reimbursement
The ECJ based its decision on Directive 2004/48/EC, in particular Articles 3 and 14, which stipulate that the costs of legal action must be "reasonable and proportionate". It follows that costs are only recoverable if they were necessary for the enforcement of the law. This European requirement has far-reaching consequences for national proceedings and in particular for the reimbursement of patent attorney costs in trademark disputes. Since then, courts have had to examine the necessity of the costs in each individual case.
Current case law on the necessity of patent attorney fees
Decision of the BGH 2022: Prosecution in accordance with the purpose
In 2022, the Federal Court of Justice ruled that patent attorney fees can only be reimbursed if the involvement of a patent attorney was necessary for the appropriate prosecution of the case. The court found that the complexity of the case or the importance of the matter alone were not sufficient to justify the need for a patent attorney.
Criteria for the necessity of consulting a patent attorney
According to the case law of the Federal Court of Justice, the costs of a patent attorney must be considered appropriate and necessary in order to be eligible for reimbursement. This is particularly the case if the case technical or scientific questions that require the expertise of a patent attorney. However, the court emphasized that in many cases Specialist lawyers for intellectual property rights be able to take on the tasks of a patent attorney. The burden of demonstrating why a patent attorney was necessary therefore lies with the plaintiff.
Differences in simple and complex cases
In simple trademark infringement cases, the reimbursement of patent attorney fees is usually refused as they are not considered necessary. However, in more complex cases in which, for example, technical aspects play a role, the involvement of a patent attorney may be justified. Courts must therefore always carry out a case-by-case assessment to decide whether the costs are reimbursable.
OLG Frankfurt 2023 on the reimbursement of patent attorney fees
Background to the decision
The Frankfurt Higher Regional Court ruled in 2023 in a case concerning the reimbursement of patent attorney fees in connection with a trademark warning letter. The question was whether it was necessary to instruct a patent attorney in order to enforce the plaintiff's claims.
Arguments of the plaintiff and defendant
The plaintiff claimed that the patent attorney's fees were reimbursable as the patent attorney had carried out important technical examinations. The defendant, on the other hand, argued that these activities could also have been carried out by a specialist lawyer for industrial property protection and that the costs were therefore not reimbursable.
Court ruling and reasons for refusing to reimburse costs
The court ruled in favor of the defendant and refused to reimburse the patent attorney's fees. The reasoning was that the involvement of a patent attorney was not necessary in this case, as the examinations could also have been carried out by a lawyer. This is in line with the case law of the Federal Court of Justice, according to which the necessity of the costs must be examined on a case-by-case basis.
When are patent attorney fees reimbursable?
Necessity of patent attorney involvement in complex cases
Patent attorney fees are recoverable if the case raises technical or scientific issues that require the specific expertise of a patent attorney. In such cases, the involvement of a patent attorney is necessary to ensure proper legal prosecution. This is almost never the case in trademark matters. In our opinion, the patent attorney's bill of costs used to be mostly a rip-off.
Distinction between legal and patent attorney activities
In many cases, attorneys-at-law, in particular specialist attorneys-at-law for industrial property protection, can take on the same tasks as patent attorneys. The distinction is usually made when dealing with technical issues where the knowledge of a patent attorney is required.
Typical cases in which patent attorney fees are reimbursed
Typical cases in which patent attorney fees are recoverable often concern patent infringements or disputes in which complex technical issues play a role. Reimbursability is rarely given in trademark disputes.
Reasons for refusing to reimburse patent attorney fees
Misuse of cost reimbursement claims
In the past, patent attorney fees were often claimed even though their involvement was not necessary. Today, courts are stricter and scrutinize more closely to prevent abuse.
Specialist lawyer for intellectual property rights
A major reason for the refusal to reimburse patent attorney fees is that many lawyers have sufficient expertise in the field of trademark law. The involvement of a patent attorney is therefore often not necessary.
Influence on future trademark disputes and warnings
Increased scrutiny of the need for patent attorneys
Current case law will lead to the necessity of engaging patent attorneys being examined more strictly in future. This may influence the strategy of companies when issuing trademark warnings.
Effects on the strategy for trademark warnings
In future, companies will have to weigh up more carefully whether the involvement of a patent attorney is really necessary in order to avoid additional costs that will not be reimbursed.
Legal uncertainties and recommendations for action
Legal uncertainties remain, as the decision on eligibility for reimbursement is made on a case-by-case basis. Companies should therefore seek legal advice in advance in order to avoid unnecessary costs.
Frequently asked questions
Do patent attorney fees have to be reimbursed for every trademark warning?
No, the eligibility for reimbursement depends on the necessity of the involvement of a patent attorney in the specific case.
When are patent attorney fees reimbursable?
As a rule, only if the case raises technical or scientific issues that require the expertise of a patent attorney.
Can a specialist lawyer for intellectual property take on the tasks of a patent attorney?
Yes, in many cases a specialist lawyer for industrial property protection can take on the same tasks, especially in the case of trademark infringements without technical complexity.
How will current case law influence future trademark disputes?
The requirements for the reimbursability of patent attorney fees have become stricter, which will lead to a closer examination of necessity in future cases.
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