Warning letter due to trademark infringement

Trademark attorney Attorney for trademark law
Your expert: Trademark attorney Robert Meyen

Robert Meyen


Lawyer

Specialist lawyer for intellectual property rights

brands media meyen
Breite Straße 22
41460 Neuss
Germany

Tel: 02131/4051650
kanzlei@marken.legal

The trademark infringement

10+ info about the Warning and trademark infringement

Attention: A lot of text follows, but it's worth it! More information on trademark infringement and Warning in trademark law you will not get on the Internet!

The trademark law Warning is an indispensable means of enforcing claims based on trademark infringements. It primarily serves to avoid a legal confrontation over trademark rights and gives the infringer the chance to satisfy the trademark owner's claims without court proceedings. Benefit from our experience from more than 1,600 processed warning letters.

Trademark law Warning and trademark infringement - Overview

  1. Introduction: the trademark warning
  2. What is a warning letter in trademark law?
  3. When is the warning unjustified?
  4. When is the warning justified?
  5. Function and effect of the (modified) cease-and-desist declaration
  6. What happens if I do not submit a cease-and-desist declaration?
  7. Right to information and claim for damages
  8. Claim for reimbursement of legal costs (warning costs)
  9. Defense against the warning letter
  10. First reaction after receiving the warning letter
  11. Warn yourself: Sample warning letter trademark law
  12. How can marken medien meyen help with a warning letter in trademark law?
Trademark attorney Attorney for trademark law
Your expert: Trademark attorney Robert Meyen

Robert Meyen
Lawyer
Specialist lawyer for intellectual property rights

brands media meyen
Breite Straße 22
41460 Neuss
Germany

Tel: 02131/4051650
kanzlei@marken.legal

Overview: Warning in trademark law

  • One Warning by the trademark owner serves to Trademark infringement out of court. It offers the trademark infringer the opportunity to settle the matter quickly, inexpensively and unbureaucratically.
  • With a Cease and desist declaration the legal dispute can usually be settled out of court. A Cease and desist declaration it should under no circumstances be signed without verification. 
  • Other claims such as Information, Compensation for damages and Reimbursement of costs can be used within the Warning can be asserted.
  • The Costs for a lawyer usually range between € 1,250 and € 3,500. They are the same for the party issuing the warning and the party being warned.
  • You should never one Deadline for submitting a Cease and desist declaration in the Warning ignoreotherwise the owner of the trademark right can apply for expensive lawsuits and temporary injunctions.
Trademark infringement warning letter Examination sequence
Examination of trademark infringement

Trademark law Warning in detail

1. introduction: the trademark warning

One Warning due to a trademark infringement is the trademark owner's request to the trademark infringer to cease the infringing activity and to issue a Cease and desist declaration to hand in. 

Trademarks exclude third parties from using the trademark or another sign. With the Warning the person issuing the warning letter explains to the person being warned why they should stop using the trademark.

Professional tip: It is important to remain calm in such situations and not panic straight away. Because not every Warning is authorized and also the amount of the required Attorney fees is often not appropriate.
Trademark attorney Attorney for trademark law
Robert Meyen
Trademark attorney

2. what is a trademark Warning?

The trademark law Warning is the most important out-of-court instrument for ending a trademark infringement. 

This is a legal action by the owner of a trademark in which he asserts claims based on the Trademark Act (MarkenG) or the EU Regulation on the European Union trademark (UMV) and gives the trademark infringer one last chance before filing a lawsuit or applying for an injunction. 

In addition to trademarks, the Trademark Act also protects company names, special business names, company names and work titles.

The most important claims in connection with trademark infringements are

  1. Removal (removal) of the trademark infringement,
  2. Omission future trademark infringements by submitting a Cease and desist declaration,
  3. Information about the nature and scope of the trademark infringement,
  4. Compensation for damages,
  5. Reimbursement of the Legal costs.

The most important basis for claims in trademark law is § 14 MarkenG.

In our experience, all warning letters are largely structured in the same way.

The person issuing the warning letter first explains which trademarks or signs belong to him and then why he considers the action of the person receiving the warning letter to be a trademark infringement. He first demands that the trademark infringement be stopped immediately (Removal).

The Submission of a declaration with penalty clause Cease and desist declaration in order to eliminate the risk of further trademark infringements in the future. As a rule, the Warning a pre-formulated Cease and desist declaration enclosed. 

Lawyers and judges assume that someone who has already committed an infringement once will do so again. This is referred to as Risk of repetitionThe Risk of repetition out of court only through the submission of a sufficiently penalized Cease and desist declaration be eliminated.

The warning letter also demands Information on the scope of the trademark infringement, Compensation for damages and Replacement of the Warning costs.

Mandatory component of a Warning is the threat of legal action in the event that the warned party does not fulfill the claims.

For the delivery of the Cease and desist declaration very short deadlines of a few days are often set. These deadlines are tight, as the party issuing the warning may have to initiate summary proceedings (temporary injunction) would like to make an effort.

By the way: willful trademark infringement constitutes a Criminal offense represent.

3. when is the trademark rightWarning unauthorized? When is there no trademark infringement?

One Warning is unjustified if
  1. there is no infringement of the trademark;
  2. the person warned is not responsible for the infringement;
  3. the warning party does not have the right to claim protection from the trademark;
  4. the formal requirements to a Warning are not fulfilled or
  5. if it is a case of a abuse of rights Warning deals.

It is complex to determine whether a trademark has been infringed at all and requires a review of the laws and knowledge of the extensive German and European case law in the field of trademark law. 

An analysis of more than 1,600 trademark disputes shows that in around 30% of all cases there is no trademark infringement at all.

In particular, there is no trademark infringement if there is no connection between the registered trademark and the alleged infringing act. none Risk of confusion is present if either the opposing signs are not sufficiently similar or the products for which the allegedly infringing trademark is used are too dissimilar to those in the trademark register.

There is also no trademark infringement if original goods were purchased within the European Union (so-called Exhaustion), the brand used for decorative purposes only (for example as a chest print on a T-shirt) or the brand was used as a Information on the intended use of the product is called (e.g. as Spare part or accessory).

Often, the warning party cannot derive any rights from its trademark because its property right has become invalid due to non-use (so-called Decay).

One abusive Warning in trademark law may exist if a trademark was registered in bad faith and is only used to harm competitors. However, the courts are very cautious when examining abuse of rights in the area of trademark law - in contrast to warnings in competition law.

4 When is trademark law infringed?

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. 

A trademark infringement may also exist if the protected sign is used to advertise a product, for example.

Both cases are referred to as "trademark use".

If a trademark is infringed and all formalities of the Warning are fulfilled, the Warning entitled. Trademark owners have an exclusive right to their trademark and can prohibit others from using the same or similar signs to identify the same or similar goods or services. This is referred to as Risk of confusion

When examining whether different signs are similar, all types of similarity must be taken into account, whereby trademarks are already considered similar if only one type of similarity exists. The most important points of examination are phonetic or phonetic similarity, visual similarity and typeface similarity.

The existence of Risk of confusion can impair the function of origin - the main function of a trademark. For example, naming a computer "Applepie" is a trademark infringement, as customers expect a computer bearing the trademark "Apple". The number and complexity of possible trademark infringements is so great that a detailed description and explanation would go beyond the scope of this information. 

It is therefore recommended that you instruct a lawyer to check the legal situation. In summary, it can be said that trademark owners are protected against confusion.

The registered trademark enjoys identity and similarity protection as well as protection against exploitation of reputation and damage to reputation. However, there are also some restrictions to trademark protection in the law.

The following cases usually constitute trademark infringement:

  1. The warned party uses the registered trademark brand-wisei.e. to identify its goods or services.
  2. There is Risk of confusionif the registered trademark and the infringer's trademark are similar and the goods and services for which the trademark is used are similar to those registered in the trademark register.
  3. The warned party uses the trademark for spare parts or accessories, but does not make this sufficiently clear.
Professional tip: Also Gray imports or parallel imports of original parts from non-EU countries constitute trademark infringements if they are imported into Germany or offered in Germany.
Trademark attorney Attorney for trademark law
Robert Meyen
Trademark attorney

5. Cease and desist declaration in trademark law - what is a modified Cease and desist declaration?

The first-time infringement of a trademark right indicates the Risk of repetition. It is therefore assumed that anyone who has committed a trademark infringement once will do so again.

It is therefore not enough to simply end the infringing activity and, for example, simply delete an offer for sale from the Internet.

The Risk of repetition can only be settled out of court by the Submission of a declaration with penalty clause Cease and desist declaration be eliminated. The Cease and desist declaration is an important means of satisfying claims for injunctive relief in a peaceful manner without involving the courts.

This declaration deprives the trademark owner of the grounds for a lawsuit. With the submission of a Cease and desist declaration you can avoid a legal conflict.

The following is punishable Cease and desist declarationif the declaring party agrees to pay a Contractual penalty if he commits the violation again. The Cease and desist declaration only indemnifies the person issuing the warning letter if a sufficiently high Contractual penalty which is suitable to permanently deter the warned party from further trademark infringements. 

In more than 90% of the warning letters we processed in trademark law, contractual penalties of at least €5,000 or contractual penalties under the so-called new Hamburg custom required. With the new Hamburg custom the Contractual penalty The right holder has the reasonable discretion to impose the contractual penalty, while the infringer has the opportunity to have the contractual penalty claim reviewed in court.

Please note that a Cease and desist declaration is binding even if it is issued without legal grounds, i.e. if the person issuing the warning had no right to issue it.

Under no circumstances should you use a Cease and desist declaration in which the warning letter has already been Compensation for damages or replacement of the Warning costs is required. This declaration is also binding. You then no longer have any room for negotiation.

Professional tip: The warning party has no right to demand a certain Cease and desist declaration to demand. It is sufficient if a declaration is made that the Risk of repetition eliminated. It is therefore advisable to modified Cease and desist declaration which limits the declarant's obligations to the bare minimum.
Trademark attorney Attorney for trademark law
Robert Meyen
Trademark attorney

6. what happens if I do not have Cease and desist declaration give away?

If within the period specified in a Warning If no declaration to cease and desist is made within the specified period, the warning party may issue a temporary injunction for omission or apply for a Injunction submit. 

In this case, very high costs of usually over €10,000 are incurred. 

It is also possible that after a Warning no further legal action is taken and the matter remains unresolved. However, the warned party should not rely on this.

7. further claims: information and Compensation for damages

In order to determine the amount of damages, warnings often request information about the nature and extent of the trademark infringement. This Right to information is regulated by law in § 19 MarkenG.

The Calculation of damages can be calculated in various ways and the infringed party may choose the calculation method that is most favorable to them. The most common method is the calculation of damages according to the License analogy.

Other methods for calculating the amount of damages, which are rarely used in practice, are the Surrender of the infringer's profit or compensation for the damage caused by the trademark infringement lost profit of the injured person.

8. costs of the Warning

When the Warning is authorizedthe warning party can demand compensation for his Legal costs demand, even if a Cease and desist declaration was submitted. This includes the costs of a lawyer or patent attorney, which are calculated in accordance with the German Lawyers' Fees Act (RVG). 

The costs for a Test purchase or or the Involvement of a detective are required. 

The amount in dispute, on which the amount of legal fees is based, depends on the importance of the matter and the value of the protected trademark. In trademark law, the courts usually set Amounts in dispute between 25,000 and 250,000 euros determines what Legal fees between 1,250 and 3,500 euros means. When the Warning is unjustified or formally ineffective, you must bear the costs of the Warning not replace it.

9. defense against trademark infringement Warning

If a person being warned instructs a lawyer, the lawyer will Warning check and a Design a suitable strategyin order to protect the interests of the warned party. This depends on the legal situation, the interest in using the trademark or similar signs and the defense budget. 

The costs of legal defense depend on the measures required and should be discussed with the lawyer in advance. In cases of trademark infringement, a modified Cease and desist declaration and negotiate the amount of the costs to be reimbursed. 

In some cases, a Protective letter be filed with the competent regional court in order to obtain a temporary injunction to avoid. 

It can often even make sense to accept a court injunction rather than a Cease and desist declaration to sign. This is due to the fact that the scope of injunctive relief in the case of court decisions is less than that following the submission of a Cease and desist declaration. The interest in prosecuting infringements also decreases if, instead of a Contractual penalty only the state coffers are filled. 

Pro tip: If the Warning unjustified, the warned party can in many cases demand compensation for the costs of his legal defense (e.g. lawyer's fees), since it is a Unjustified property right warning deals.
Trademark attorney Attorney for trademark law
Robert Meyen
Trademark attorney

10 What do I do if I have received a trademark warning?

It is of the utmost importance that you remain calm in such a situation. Trademark law is a complex area and the examination of warning letters and legal defense require specialized knowledge. It is therefore important that you contact an experienced trademark lawyer to protect your interests. 

In any case, pay attention to the deadlines specified in the Warning are specified. Particularly important is the Deadline for submitting a Cease and desist declaration. If this period expires without a response, the warning party can take legal action and, for example, file a temporary injunction request.

Avoid contacting the person issuing the warning letter and do not make any rash statements. Much of what our clients agree with the other party in advance cannot be saved later.

You should also none Cease and desist declaration sign without checking

Be Be careful with advice from online forums - We are reading with interest and the "hit rate" of laypersons is really bad. Every case of warning letters in trademark law is unique and the legal situation, in particular the Authorization of the Warningmust be carefully examined.

11. can I issue a warning myself (including a sample warning letter)?Warning)?

There is no obligation to instruct a lawyer for warning letters. Even if we strongly advise you to do so, you can therefore also issue a Warning pronounce. 

You can

here (warning letter trademark law sample) 

a sample for a Warning in trademark law. Please note that we do not accept any liability for the consequences.

The Warning in trademark law must contain at least

  • Information about the warning party
  • Information about the infringed trademark
  • Information about the infringing product
  •  Request to stop the trademark infringement
A trademark warning should contain:

12. what marken medien meyen can do for you in the event of (alleged) trademark infringements

As an experienced trademark law firm, we specialize in intellectual property rights.

We offer our clients a comprehensive audit of warnings under trademark lawto ensure whether a trademark infringement has actually occurred. If necessary, we formulate Modified cease-and-desist declarations and conduct negotiations with the warning party about the amount of legal fees and damages. 

If no trademark infringement has been established, we will reject the warning party's claims and take the necessary defensive measures, for example by filing a court action. Protective letter or the Issue a counter warning. 

In legal proceedings we stand by our clients' side and take over the Defense in injunction and damages proceedings and in summary proceedings (temporary injunction). 

If the party issuing the warning letter also takes criminal action against the trademark infringement, we work closely with our experienced colleague Lawyer Patrick Baumfalk together.

We make sure that every step of the legal process is carried out in close consultation with our clients to ensure that their interests are protected in the best possible way.

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