Liability of a GmbH managing director for trademark infringements

In its judgment dated 10 November 2015 (case no. I-20 U 26/15), the Düsseldorf Higher Regional Court ruled that the managing director of a limited liability company (GmbH) is not automatically liable for trademark infringements if he has knowledge of such an infringement and does not prevent it. In this particular case, the company being sued was selling the plaintiff’s medical products under the plaintiff’s trademark with an additional label. The plaintiff asserted claims against both the company and its managing director personally for payment of warning costs, the recall and the destruction of the products concerned. The previous instance had ruled in favour of the plaintiff and found against both defendants – the company and its managing director – as co-debtors.

Although the Düsseldorf Higher Regional Court acknowledged the trademark infringement, it dismissed the claim against the managing director. The Court explained its decision by referring to the recent decision of Germany’s Federal Court of Justice (judgment dated 18 June 2014, case no. I ZR 242/12) in which the Federal Court also restricted the managing director’s personal liability for infringements under unfair competition law which no longer result simply from the knowledge of the infringement and general responsibility for the company. Even though with regards to trademark infringements – contrary to infringements of unfair competition law – responsibility according to the general principles of care („Störerhaftung“) may be assumed, such liability presumes that the director deliberately and causally contributes to the trademark infringement and thereby violates his conduct obligations (BGH GRUR 2015, 672 Rn. 82 – Videospiel-Konsolen II).

In practice, in the case of trademark infringements the managing directors themselves are often sued in addition to the company without further justification. Düsseldorf Higher Regional Court has now put a stop to this practice. Such claims will not succeed in future without evidence of a deliberate and causal contribution by the managing director to an infringement.