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Warning letters in trademark law - advice & tips

Warning letter Trademark law Trademark lawyer Specialist lawyer Robert Meyen
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

Immediate help with warning letters in trademark law

Short and sweet:

The Warning under trademark law is an out-of-court instrument with which the owner of a registered or well-known trademark can demand immediate injunctive relief, information, removal and compensation in the event of unauthorized commercial use by third parties. The aim is to avoid expensive court proceedings by obliging the infringer to issue a cease-and-desist declaration with a penalty clause.

Why you can rely on the law firm marken medien meyen for trademark warnings

The law firm brands media meyen to lawyer and specialist lawyer for intellectual property rights Robert Maximilian Meyen have many years of expertise and have already worked in over 1.200 successfully represented clients in trademark warnings.

 You can rely on our in-depth experience in intellectual property law to enforce your interests quickly and efficiently and to fend off unjustified claims.

Warning letter Trademark law Trademark lawyer Specialist lawyer Robert Meyen
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

Introduction to warning letters under trademark law

The protection of trademarks is of central importance for companies, as the trademark not only embodies the recognition value, but also the reputation and economic value of a company. Anyone who uses another person's trademark without authorization - whether by using identical or similar signs, advertising their own products or abusing domain registrations - risks a warning letter. This is the primary means by which trademark owners enforce their rights before lengthy and costly legal proceedings occur.

A warning letter in trademark law therefore not only serves to enforce the law, but also to resolve disputes out of court. It is therefore essential for affected companies and self-employed persons to know how a warning letter works and its consequences and to know how to react correctly in an emergency.

Professional tip: It is important to remain calm in such situations and not panic straight away. Because Not every warning is justified and also the amount of the required Attorney fees is often inappropriate.

What is a trademark warning letter?

Basic definition

A warning letter under trademark law is a letter in which the owner of a trademark - or a person authorized by him - informs an alleged infringer that he has violated the exclusive rights of use of the trademark. The following claims are usually asserted in this letter:

  • Omission: The immediate termination of the trademark infringement.
  • Cease and desist declaration with penalty clause: A contractual obligation to pay a fixed contractual penalty in the event of future infringements.
  • Right to information: The demand for detailed information (e.g. on manufacturers, suppliers, distribution channels) in order to determine the scope of the trademark infringement.
  • Claims for removal and damages: The demand to undo unlawful acts that have already taken place and to compensate for damages incurred.

Purpose and significance of warning letters in trademark law

The main purpose of the warning letter is to avoid a legal dispute. Instead of entering into a lengthy and often expensive process, both parties - the trademark owner and the alleged infringer - have the opportunity to settle their differences out of court. This saves resources and offers both parties planning security.

Procedure and contents of a warning letter under trademark law

Structure of the warning letter

Typically, a warning letter in trademark law follows a clear pattern:

  1. Description of the facts: The warning letter explains the extent to which it believes that a trademark infringement has occurred. The specific circumstance that justifies the infringement is explained.
  2. Legal opinion: It is explained why the use of the trademark is unlawful and which legal provisions have been violated.
  3. Claims: The warning letter then demands:
    • The immediate Omission of unlawful use.
    • The delivery of a cease-and-desist declaration with penalty clause. This declaration obliges the infringer to pay a contractually agreed penalty in the event of a repeat offense.
    • Claims for information and removalto precisely determine the damage incurred.
    • If necessary Claims for damages and the assumption of legal costs.

Deadlines and warnings

A crucial point in every warning letter is setting a deadline. Very short deadlines (usually 8 to 15 days) are often set in order to get the infringer to react quickly. If the deadline is ignored, the warned party is threatened with further legal action, such as interim injunctions or injunctions, which can lead to considerable costs and further legal consequences.

When is a warning justified - and when is it not?

Justified warning

A warning letter is justified if a trademark infringement has actually occurred. In other words, if:

  • The brand without consent of the owner is used in the course of business.
  • One Risk of confusion exists so that the consumer could confuse the infringer's products or services with those of the trademark owner.
  • For well-known brands a Reputation exploitation takes place, even if the products are not directly comparable.

Unjustified or abusive warning letter

A warning may be unjustified if:

  • No actual trademark infringement exists. For example, if the use of the trademark is only descriptive or private.
  • The warned party not responsible for the use complained of.
  • The warning letter not as Actual owner or authorized representative of the trademark.
  • The formal requirements, such as a detailed description of the violation, are not met.
  • The warning serves exclusively to Costs for legal action or to unfairly hinder competitors.

In such cases, affected companies should have the warning letter checked immediately by a specialized lawyer in order to reject unjustified claims and possibly assert their own claims for damages.

How does a specialist lawyer check a warning letter in trademark law
A good trademark attorney examines the alleged trademark infringement in this order

The cease-and-desist declaration - content, effect and risks

Meaning and content

The Cease and desist declaration is the central element in preventing further trademark infringements. It obliges the infringer to refrain from any similar use in the future. It is important that the declaration punishable by law is. This means that a contractually agreed penalty must be paid in the event of a repeat offense. A typical cease-and-desist declaration should contain the following points:

  • A clear definition of prohibited conduct.
  • A formulation that does not impose excessive or indefinite obligations.
  • An appropriate agreement on the amount of the contractual penalty - reference is often made here to market standards in order to enable subsequent judicial reviews.

Risks of premature signing

It is strongly recommended that you do not sign any prefabricated cease-and-desist declarations without consulting a lawyer. Such declarations often contain overly far-reaching obligations that can restrict the company concerned in the long term - for example, a 30-year commitment. An experienced trademark lawyer can help to draft a Modified cease-and-desist declaration limited to the essentials to work out.

Professional tip: The warning party has no right to demand a specific cease-and-desist declaration. It is sufficient to submit a cease-and-desist declaration that eliminates the risk of repetition. It is advisable to make a Modified cease-and-desist declaration which limits the declarant's obligations to the bare minimum.

Costs and economic consequences of a warning letter

Warning costs

If the warning is justified, the infringer may incur considerable costs. Typically, the Legal fees for a warning letter - based on the amount in dispute - between 1,250 and 5,000 euros. The amount of the costs is based on factors such as

  • The economic interest of the trademark owner.
  • The severity of the injury.
  • The amount in dispute, which is often set at between 50,000 and 600,000 euros.

Compensation and other costs

In addition to the direct warning costs Claims for damages if the trademark owner has suffered economic damage as a result of the trademark infringement. This may be the case in particular if license fees are used as the basis for calculation. Even if the warning letter turns out to be unjustified, the defense costs incurred, for example for a lawyer's check, can be considerable - which is why early advice is essential.

Pro tip: 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.

Practical recommendations for action: What to do if you are warned about a trademark infringement?

First steps

  • Keep calm: Don't let the first panic attack get the better of you. Take your time to thoroughly examine the warning letter.
  • Observe deadlines: Do not ignore the deadline set in the warning letter. This deadline gives you the opportunity to respond to the letter - either by submitting a modified cease-and-desist declaration or by sending a letter of objection to a lawyer.
  • Documentation: Save all relevant documents and evidence, such as screenshots, e-mail correspondence or publications relating to the facts of the case.

Legal advice

  • Specialized lawyer: Contact a specialist lawyer for trademark law. They can:
    • Check the justification of the warning.
    • Formulate a modified cease-and-desist declaration that protects your interests.
    • Negotiate with the debt collector to mitigate excessive claims.
    • If necessary, prepare a legal defense.

Further options for action

  • Write a counterstatement: If the warning is unjustified, you should write a lawyer's reply in which you explain why there is no trademark infringement.
  • Apply for an extension of the deadline: If the deadline for submitting the cease-and-desist declaration appears to be too short, your lawyer can apply for an extension in order to carry out all the necessary checks.

Risks of an unjustified or incorrect warning letter

Abusive warnings - risk for the warning letter issuer

Not every warning is automatically justified. It happens that warnings:

  • Exclusively for this purpose, Legal fees to demand.
  • Abused in order to prevent competitors from to obstruct without authorization.
  • have formal errors because the facts have not been adequately explained or the legal requirements have not been met.

In such cases, you can - after consulting a lawyer - not only defend yourself against the warning, but possibly also assert your own claims for damages.

Consequences of non-compliance - risk for the warned party

If a justified warning is ignored, you are at risk:

  • Interim injunctions: The trademark owner can take legal action to prevent further use.
  • Court injunctions: This leads to lengthy and often expensive processes.
  • Significant costs: In addition to the warning costs already incurred, additional court costs and claims for damages may arise.

Conclusion

The warning letter under trademark law is a central instrument of industrial property protection. It enables trademark owners to enforce their rights quickly and out of court - thus preventing expensive and lengthy court proceedings. It is therefore essential for affected companies to seek professional legal advice as soon as they receive a warning letter. This is the only way to identify and defend against unjustified or exaggerated claims, while at the same time ensuring that justified claims are properly met.

Whether you have received a warning letter due to an alleged trademark infringement or would like to take action against infringements yourself as the trademark owner - this guide provides you with a comprehensive overview of the legal basis, the process, the possible costs and, above all, the important steps to take. Rely on specialized legal advice to optimally protect your interests and secure the long-term value of your brand.

Recommendations for action

Have you received a warning letter or would you like to protect yourself from legal risks? Do you want us to defend your trademark against infringements by third parties? Our team of experienced specialist lawyers is at your side.

  • Free initial assessment: Call us at 02131/4051650 or write to us at kanzlei@marken.legal.

  • Individual advice: Make an appointment today and receive a comprehensive legal analysis.

  • Quick help: Our team specializes in responding to your concerns at short notice and finding the best solutions for your situation. You can rely on our experience and expertise.

Contact us today to protect and optimally represent your legal interests. We are at your side with help and advice!

What our clients say about the defense by attorney Robert Meyen:

Tobias Loos
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TOP lawyer!!! Had an acute issue regarding a warning letter, Mr. Meyen took a lot of time to advise me on my concerns in the best possible way. Professional competence at the highest level. Many thanks again.
Sarah Teublen
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Excellent legal representation. We were extremely satisfied with the legal support we received from our lawyer Robert Meyen, whom we found in the Düsseldorf area. Especially in relation to my trademark case concerning "Louis Vuitton". I was impressed by the professionalism, expertise and effective communication. The legal matters were dealt with thoroughly and promptly, leading to a successful outcome. Strongly recommend this attorney for solid legal representation.
Björn Rißwig
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Very nice contact. Mr. Meyen inquires precisely about the facts of the case and gives a concrete assessment. I will gladly seek advice from him again.
Voriger
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