GO-5.2-e-E

11.18

Deutsches Patent- und Markenamt • 80297 München , Germany Angelina Behr

Section 4.3.1

ADDRESS

Zweibrückenstraße 12

80331 München, Germany

MAILING ADDRESS

80297 München, Germany

TEL +49 89 2195-1896

FAX +49 89 2195-2221

Referat4.3.1@dpma.de

www.dpma.de

REFERENCE NO.

7037/4-4.3.1J/2017-1

DATE

Munich, 23.05.2019

RE: Anti-Scam Network

Subj: 4th Anti-Scam Network meeting

Encl: 1. invoice form of NMR

2. official form of the DPMA

Dear colleagues,

At the 4th Anti-Scam Network meeting at EUIPO, the DPMA reported on

its success in dealing with misleading invoices. These include, in

particular, final criminal convictions of Nationales Markenregister AG

(NMR) for sending misleading invoices.

As a follow-up to the Anti-Scam Network meeting, the DPMA would like

to provide the members of the Anti-Scam Network with an English

translation of the main grounds of the judgement in order to support the

exchange of knowledge. For this purpose, the DPMA has translated

extracts of the section on fraud (Sec. 263) of the German Criminal Code

(StGB) and the legal considerations essential for the convictions in the

proceedings 314 Js 47109/09.

Please find also attached the invoice form used by NMR and the official

form of the DPMA.

Angelina Behr

Legal Advisor

Section 4.3.1 – General Legal Affairs, Corporate Legal Advice

Page 4 of 4

Legally binding convictions of scammers in Germany in matters relating to the Nationales Markenregister AG (NMR)

Case numbers:

314 Js 47109/09

314 Js 209482/13

314 Js 140101/14

314 Js 108715/14 (3)

314 Js 102262/14 (conviction of the main perpetrators)

The German criminal offence of fraud is specified as follows:

Sec. 263 German Criminal Code

(1) Whosoever with the intent of obtaining for himself or a third person an unlawful material

benefit damages the property of another by causing or maintaining an error by pretending

false facts or by distorting or suppressing true facts shall be liable to imprisonment not

exceeding five years or a fine.

Accordingly, the following conditions apply to the objective characteristics of the offence:

1. Deception of facts

2. Thus causing an error on the part of the deceived person

3. Thus causing the deceived person to dispose of property

4. Thus causing loss of property

Excerpt from the legal grounds of the first case (no. 314 Js 47109/09):

1. Act of deception

[…]

It results from the individual aspects referred to in C II, E II, III,1 the explanations and

assessments relating thereto, in particular as regards the design, form, company name used,

logo and wording of the letter to which reference is made, that the letter is objectively suited

to and subjectively aimed at prompting the addressee to form a false impression regarding

the sender. In this context, it should be noted that a trade mark proprietor who is averagely

well informed and judicious and for whom the renewal of the term of protection of the trade

1 reference is made to the business model and the form used by NMR AG which you can find attached.

Page 4 of 4

mark is due after ten years does not automatically expect that a third party has knowledge of

the expiry of the trade mark, in particular that the third party has also found out the individual

register number and the file number, the name of the trade mark including the classes and

offers to carry out the renewal. In addition, there is the surprise effect of the unsolicited letter,

which the recipient has not expected, and the fact that a renewal is only due every ten years.

The latter makes it easier to deceive the addressees who, previously, were rarely or not at all

involved in such renewals – unlike in the case of frequently occurring routine activities, which

result in acquiring a certain amount of experience. The continuous text, which describes in

detail the placing of the order and which does not in itself contain any false information, also

fails to make it sufficiently clear that a contract has been concluded, nor is any clarification

intended. The use of the term “fee” (cf. C II, E III, VII) and the absence of a breakdown of the

amount to be paid is suited to supporting and intended to reinforce the false impression

regarding the sender of the letter and about the legal nature of the amount requested as

constituting an official fee. If it had been the intention of the author and sender of the

reminder letter that all proprietors should be aware that they were concluding a contract, it

would have been obvious to make a clear reference to it on the first page of the letter and to

provide a breakdown of the amount in question into, on the one hand, the fee payable and,

on the other hand, the remuneration to be charged for the service.

Even though upon close inspection it became evident from the attached General Terms and

Conditions (cf. also C II, E III) that the letter constituted an offer by nature, this does not, under

these circumstances, eliminate the elements of the offence of deception that caused the

intended error (cf. also BGH 4 StR 439/00, marginal no. 16, juris), especially since experience

has shown that, in business, only a fraction of the users carefully read the General Terms and

Conditions (cf. OLG Frankfurt/Main, NJW 2011, 398). In addition, reading the General Terms

and Conditions was made more difficult by the manner in which they were printed.

It is clear from the design of the letter chosen here that it was not only intended to take

advantage of any false impressions possibly created, but rather that they were brought about

deliberately. That the forms used were suited to causing a corresponding deception is also

proven by the fact – as the taking of evidence has shown – that a corresponding false

impression was actually created, in numerous cases, among the injured parties.

2. Error

[…]

In the present case, the false impression about the sender was created in the mind of the

recipient as the result of the deliberate and causal act of deception. By methodically omitting

to provide a breakdown of the calculation of the amount, advantage has been taken of the

fact that the respective injured party had naturally taken it for granted that the amount in

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question was actually the amount calculated by the official authority on the basis of the

applicable calculation principles (cf. BGH 5 StR 398/08, marginal no. 17 according to juris,

Schönke/Schröder/Cramer, loc.cit.2).

Attributing the error to being caused by deception is also ruled out if a possible contributory

negligence on the part of the victim was involved in bringing about the success (cf. NJW 2002,

1632). As stated above, gullibility (of the deceived party) or the fact that it would have been

possible to detect the deception only excludes the elements of fraud if the person deceived

behaves carelessly. This is, in no way, the case for the decision to renew trade mark protection

for a further ten years, which is at the centre of this case.

[…]

3. Disposal of property

The error prompted the addressees to make a disposal of property in the form of acceptance

of the NMR's offer and thereby to conclude a contract with the ETO, [...]. As a result of the

error, the respective addressees thus entered an obligation to make a payment.

[…]

4. Property loss

[…]

By entering into the contractual obligation, the injured parties suffered a property loss as the

NMR or ETO had a claim against them.

This claim was excessive as the total amount claimed was roughly twice the fee requested by

the authority.

[…]

By the transfer of the requested amount, after the NMR has sent the invoice, the loss already

suffered by signing and returning the reminder letter was exacerbated.

[…]

2 Reference is made to Schönke/Schröder, commentary to the German Penal Code, 29. edition, Sec. 263,

paragraph 39.