Robert Meyen
Lawyer
Specialist lawyer for intellectual property rights
brands media meyen
Breite Straße 22
41460 Neuss
Germany
Help with warning letters due to trademark infringement
If you are accused of trademark infringement, you have come to the right place!
A warning letter in trademark law can be a considerable burden for the recipient. In this guide, you will learn how you can defend yourself against justified and unjustified claims.
The warning letter is usually the first step in a trademark dispute. It is the trademark owner's request to the trademark infringer to cease the infringing activity and to put a binding end to it for the future by submitting a cease-and-desist declaration.
Our services for you:
- Fast and competent examination of your matter
- Comprehensible explanation of the legal situation and your options for action
- Negotiation with the trademark owner on your behalf
- Targeted representation of your interests
- Development of a strategy to avoid future trademark infringements
Why you should choose marken medien meyen:
- Specialization in trademark law
- Many years of experience and expertise
- High success rate in the defense against warning letters
- Trustworthy, personal and comprehensive advice
- Fair prices and transparent costs
Benefit from our experience and know-how!
Lawyer for trademark law Robert Meyen has the necessary know-how from over 1,600 warning letters and more than ten years of professional experience to support you in all legal aspects. We take the time to carefully examine your individual situation and offer you customized solutions that are tailored to your specific needs.
Robert Meyen
Lawyer
Specialist lawyer for intellectual property rights
brands media meyen
Breite Straße 22
41460 Neuss
Germany
The trademark warning letter
The Warning is a letter in which the owner of a trademark requests a third party to refrain from a specific infringement. As a rule, the submission of a cease-and-desist declaration with a penalty clause is requested. It serves to avoid a legal dispute.
Warning letter in trademark law: What is it about?
In the trademark warning letter, it is usually first explained which rights the trademark owner holds and how the warned party is (allegedly) infringing them.
The warning must meet certain formal requirements, to be effective. These include:
- The designation of the warning party as the trademark owner
- The designation of the warned party
- The exact designation of the trademark infringement complained of
- The Request for termination and injunction the act complained of
- The invitation to Submission of a cease-and-desist declaration with penalty clause
- The Setting a deadline to submit the cease-and-desist declaration
- The Threat of legal action
When is the warning justified and when is it unjustified?
The warning is justified if the person being warned is in breach of trademark law and the warning complies with the formal requirements.
You violate trademark law if you use a trademark or another company's logo in the course of business to identify a product or service without the permission of the trademark owner.
The trademark attorney examines the warning as follows:
The registered trademark must Distinctive character have. It must be capable of distinguishing the product of one company from the product of another company. If the trademark lacks the necessary distinctiveness, a counter-attack on the existence of the trademark can be an ideal defense.
Trademark infringement only exists if there is a clear and demonstrable difference between the trademark applied for and the allegedly infringing trademark. Identity or risk of confusion exists.
Risk of confusion is a combination of the similarity of the trademarks on the one hand and the similarity of the goods and services on the other.
One Trademark infringement exists if identical or highly similar trademarks are used for similar goods or services or if similar trademarks are used for very similar or identical products.
By the way: willful trademark infringement constitutes a Criminal offense represent.
The German Trademark law and the European UMV see some Exceptions in which trademarks are exceptionally not infringed.
This is the case, among other things, if the trademark is used to describe Spare parts or accessories is used or if the Brand used for decorative purposes only is applied. This is often the case, for example, when it is applied to a large area of a T-shirt. We know the case law in detail.
In rare cases, the warning letter may also prove to be an abuse of rights if it is clearly only intended to cause damage. In practice, however, this case does not play a serious role.
Function and effect of the (modified) cease-and-desist declaration
In the event of a trademark infringement, the trademark owner is entitled to a Injunctive relief pursuant to § 14 para. 2 MarkenG to.
The cease-and-desist declaration is a written declaration in which the person being warned undertakes to refrain from committing the trademark infringement complained of in the future. The cease-and-desist declaration must be subject to a penalty, i.e. the person being warned must expect a contractual penalty if they do not comply with the cease-and-desist declaration.
A modified cease-and-desist declaration is a declaration to cease and desist that is subject to restrictions. For example, in a modified cease-and-desist declaration, the person being warned can undertake to refrain from the trademark infringement in question only under certain conditions.
The submission of a cease-and-desist declaration should only be made after prior examination by a lawyer.
What happens if I do not submit a cease-and-desist declaration?
If you do not submit the cease-and-desist declaration, the trademark owner may take legal action against you. This can lead to an injunction or an action for injunctive relief and damages.
Right to information and claim for damages
The trademark owner has a claim for information and a claim for damages against the person receiving the warning.
The right to information includes the following information:
- The origin of the goods or services complained about
- The distribution channels of the goods or services in question
- The sales and profits that the warned party has generated with the trademark infringement
The claim for damages includes the damage suffered by the trademark owner as a result of the trademark infringement. Damages may include, for example, lost profits, license fees and legal costs.
What does a warning letter cost in trademark law?
The trademark owner has a claim against the person receiving the warning letter for reimbursement of the legal costs (warning letter costs) if the warning letter is justified and formally effective. The warning costs include the costs of instructing a lawyer and sometimes also the costs of destroying the goods after customs seizure or detective and test purchase costs.
The amount of the warning costs depends on the amount in dispute and the Lawyers' Fees Act (RVG). In most cases, the warning letter incurs legal fees of between EUR 2,002.41 and EUR 5,498.63, calculated on the basis of amounts in dispute of between EUR 50,000 and EUR 500,000. You can calculate other amounts here or use our Cost calculator for trademark infringements use.
The warned party can defend itself against the claim for reimbursement of legal costs, if the warning was unjustified or if he is not responsible for the trademark infringement.
Defense against the warning letter
Against a warning you can defend yourself in various ways. For example, you can:
- Reject the warning letter as unjustified
- Submitting a modified cease-and-desist declaration
- Take legal action against the warning letter, for example by filing a negative declaratory action
The right defense strategy depends on the circumstances of the individual case. You should therefore always seek advice from a lawyer if you have received a warning letter.
An out-of-court settlement is often recommended in order to avoid legal consequences.
First reaction after receiving the warning letter
If you have received a warning letter, you should first keep calm and read the warning carefully. Make a note of all deadlines set.
You should then contact a lawyer. He will examine the warning and advise you.
Do not take action yourself, before you have consulted a lawyer. You are better off using our Free initial assessment.
Warn yourself: Sample warning letter in trademark law
Legal representation in the event of a warning is recommended, but not mandatory.
You can here
(Warning letter trademark law sample)
download a sample for a trademark warning. Please note that we do not accept any liability for the consequences.
The warning must contain at least:
- Information about the warning party
- Information about the protected trademark
- Information about the trademark infringement
- Request to stop the trademark infringement
- Information on the infringed right from the MarkenG or the UMV
- Information on the risk of confusion
- Request to submit a cease-and-desist declaration with penalty clause
- Threat of legal action
What our clients say about the defense by attorney Robert Meyen:
How can marken medien meyen help with warning letters in trademark law?
brands media meyen is a law firm specializing in trademark law. We offer legal support in all matters relating to trademark law.
If you have received a warning letter under trademark law, we will be happy to help you with your defense. We examine the warning letter and advise you on your legal options. We will negotiate with the trademark owner on your behalf and represent you in court if necessary.
Of course, we also stand by your side if your rights have been violated and enforce them consistently.
Contact us without obligation for a free initial consultation!
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