Herrnhuter Sterne GmbH warned by SKW Schwarz for imitation

The law firm SKW Schwarz is currently sending cease and desist letters on behalf of Herrnhuter Sterne GmbH. The affected clients are accused of selling Christmas lights in the shape of stars that are an imitation of the original Herrnhut Star.

The company Herrnhuter Sterne GmbH owns, among other things, a European Union trademark and relies on the so-called uniqueness of its stars under competition law.

Of particular importance in this context is the 2015 ruling of the Federal Court of Justice (BGH, judgment of December 2, 2015 – I ZR 176/14 – Herrnhuter Stern). In this ruling, the highest German court examined precisely this question: Is the Herrnhuter Stern unique under competition law?

The court found:

Protection under competition law exists when a company copies and offers on the market the result of a competitor's efforts that is unique under competition law, provided that there are special circumstances that make the copying appear unfair. This is the case if the copying is likely to create confusion about the origin and the imitator fails to take appropriate and reasonable measures to avoid this confusion.

This gives rise to a legal claim. This means that identical or similar copies placed on the market by competitors of Herrnhuter Sterne GmbH can be subject to court injunctions, regardless of whether these Christmas decorations are labeled as Herrnhuter Sterne or not.

As with all warnings in the area of competition and trademark law, Herrnhuter Sterne GmbH is also demanding in the current letters a cease-and-desist declaration with a penalty clause, extensive information and the assumption of costs based on a value in dispute of €100,000.00, which corresponds to a claim of €2,584.09.

First, you should check whether an infringement actually exists. If so, it might be advisable to submit an amended cease-and-desist declaration.

Especially in connection with products of this type, it's also worth considering whether the retailer might be able to assert claims against its suppliers. I'm happy to advise you in this area and can enforce such claims if necessary.

Please do not hesitate to contact me and, if possible, send me the letter you received by email.