Warning for trademark infringement

Warnings can be based on various rights in the area of ​​intellectual property, such as trademark law, copyright law or design law. Warnings based on competition law (UWG) are also particularly common.

Unfortunately, it is not enough to simply stop the behavior that has been warned against and to refrain from it in the future. The background to this is that, according to case law, an infringement committed once creates a risk of repetition of future infringements. This risk of repetition can only be ruled out by submitting a cease-and-desist declaration that is subject to a penalty. But even if it makes sense in many cases to submit a cease-and-desist declaration in the event of a trademark infringement, it is important to think carefully about the form and content of the cease-and-desist declaration.

Warnings usually contain very short deadlines. The background to this is that in many cases the warning is only the preliminary stage to a so-called interim injunction. This is an expedited procedure in which a court decision can be obtained against you very quickly (sometimes within one or two days) without a hearing. However, this option is only available to the person issuing the warning if they have dealt with the matter in a hurry. Many people issuing the warning will seek legal help immediately after the deadline has expired if you do not respond or do not respond on time. Since this can result in additional costs and significantly worsen your legal position, it is absolutely necessary to respond within the deadline.

In our experience, in the vast majority of cases it is advisable not to submit the cease and desist declaration pre-formulated by the opposing party. The background to this is that there are many ways in which such a declaration can be formulated in favor of or to the detriment of one or the other party. If the opposing party attaches a pre-formulated cease and desist declaration to the warning, it is not doing this to do you a favor. As a rule, the opposing party is trying to improve its own legal position at your expense. Anyone who submits the attached declaration too quickly runs the risk of creating avoidable and expensive subsequent problems. To prevent this, it is advisable to have a specialized lawyer review the warning and, if necessary, have a modified cease and desist declaration drafted.

We see time and again that those who have received a warning letter cannot withstand the pressure created by the warning letter and, in the hope of solving the problem, submit the cease and desist declaration that is usually included with the warning letter. In fact, this can make your legal position even worse. Depending on the type of response, the other side may even claim that there is an admission of guilt and then assert further claims – in particular for damages and reimbursement of the warning letter costs. It is therefore advisable to check with a specialist lawyer how best to respond.

Tip: Possible reactions to a warning

✓  Submission of a modified cease and desist declaration
✓  Rejection of the claims by letter from a lawyer
✓  Counter-warning due to unjustified warning of intellectual property rights
✓  Filing of a negative declaratory action
✓  Depositing a so-called protective letter with the court

There are a number of law firms that are known for actively defending the rights of their clients and regularly issuing warnings to third parties.

Arnold Ruess

CBH

FPS

Grünecker

Kessler Kaier

Nordemann

Zierhut IP

Good advice doesn’t have to be expensive. Thanks to our extensive experience in defending against warnings, we can provide you with expert and efficient advice so that you benefit from low costs. Contact us.