Writing for International Law Office, Florian Schwab (Boehmert & Boehmert, Munich) discusses a decision of the First Senate of the German Bundesgerichtshof in Case I ZR 93/04, 19 July 2007, which was published in December 2007). In this case the owner of the German registered trade mark WINDSOR ESTATE for climbing aids for plants, and its licensee, brought an action for trade mark infringement. The defendant had used the terms 'Windsor estate' and 'Windsor garden' for the same goods. The first act of infringement was the distribution of leaflets using the term 'Windsor estate' on 31 March 2003.

Under the same court's previous case law, (i) the burden of proof of infringement lay with the claimant; (ii) compensation for infringement arose only from the first act of infringement that the claimant could prove and (iii) the defendant was not required to disclose information as to acts of infringement committed before that date. In this decision however the court - taking the same position as the Tenth Senate had done in patent and plant variety cases - ruled that claims for damages and disclosure of information are not so limited and that the claimant's interest in the efficient enforcement of its rights overrides the interest of the defendant in not disclosing acts of infringement committed before the first proven act of infringement. In this case the claimant was entitled to request the disclosure of information relating to acts committed before 31 March 2003, as the defendant could have become aware of the trade mark registration as early as its date of publication on 28 February 2003.

The court also held that a licensee -- whether exclusive or non-exclusive -- cannot assert its own claim for damages under the Trade Mark Act: it only has a procedural right to intervene in an action brought by the trade mark owner.