Warning trademark

Non-compliance with trademark laws through unauthorized sales of branded products, no-name advertising with well-known slogans, or counterfeit sales constitutes a violation of trademark law. These violations can lead to legal action such as cease-and-desist letters, as trademark owners enjoy comprehensive protection rights under trademark law, including claims for injunctive relief and damages. This blog post provides a comprehensive overview of cease-and-desist letters in trademark law and practical advice for dealing with such a situation.

Trademark infringements can occur quickly and unintentionally, resulting in serious legal and financial consequences. Therefore, it's essential to familiarize yourself with the legal basics and know the correct procedure when receiving a cease and desist letter. We share valuable insights and tips for handling this situation.

• Exclusive trademark rights: Brand owners have the exclusive right to use their trademark commercially.

• Trademark infringement: The unauthorized use of a trademark by third parties constitutes an infringement of these rights.

• Response to infringements: Brand owners can respond to infringements of their rights with warnings.

• Cease and desist declaration: Infringers must promise to refrain from violations and to pay a contractual penalty in the event of a repeat violation.

• Damages: Trademark owners can claim damages and legal fees.

According to Section 14 of the Trademark Act, a trademark infringement occurs if:

• The trademark is used in commercial transactions.
• The trademarks are identical or confusingly similar.
• The classes of goods and services concerned are identical or similar.
• The person being warned uses the third party’s trademark as a trademark.

Unjustified warnings

Not every warning letter is legally justified. If no violation of law has been committed, the warning letter can be dismissed. Likewise, a trademark that has not been used in the last five years or has only been used for private purposes is not protected by trademark law and therefore cannot be subject to a warning letter.

Consequences of a trademark warning

A justified warning under trademark law has several consequences for the person receiving the warning:

• Cease and desist declaration and contractual penalty: The person receiving the warning must sign a cease-and-desist declaration, subject to a penalty clause, to refrain from the trademark infringement. In the event of a repeat violation, a contractual penalty will be imposed, the amount of which can be substantial depending on the severity of the violation.

• Claims for information and disclosure: The trademark owner has the right to request information about sales of the illegally marked goods. He or she may also demand that the illegally marked goods be either returned or destroyed.

• Damages and legal fees: If the infringer acts intentionally or with gross negligence, the trademark owner is entitled to damages. In addition, legal fees may be claimed, which are calculated based on the value of the warning and can be substantial.

If you have any further questions or would like more detailed information, please do not hesitate to contact me!

Here are some tips for dealing with a warning letter for trademark infringement:

1. Keep calm and respect deadlines: Avoid panicking and read the warning letter thoroughly. Note all deadlines so you can respond appropriately.
2. Examination of the warning: Carefully review whether the warning is justified. Is there actually a trademark infringement? Also check the legitimacy of the sender and whether they are authorized to issue the warning.
3. Obtain legal advice: It's advisable to consult a trademark attorney. A specialized attorney can review the cease and desist letter for legality and provide you with sound advice on your next steps.
4. Modified cease and desist declaration: Don't sign the cease-and-desist letter too quickly. Have your attorney review it and amend it if necessary. A modified cease-and-desist letter can help you avoid excessive obligations and ensure the contractual penalty is appropriate.
5. Defense against unjustified warnings: If you believe the warning is unjustified, you can reject the claims. Draft a letter explaining the reasons why the warning is inadmissible. If the warning is unjustified, you can also claim damages for the legal fees incurred.

These steps will help you respond appropriately to a trademark infringement warning and protect your legal interests. If you have further questions or need additional support, I'm happy to assist you.

If you, as a trademark owner, wish to take action against infringements of your trademark, you should follow these steps:

1. Documentation and preservation of evidence: Carefully document the suspected trademark infringement. Collect all relevant evidence, such as screenshots of online stores offering the infringing products. Thoroughly securing evidence is the foundation for a successful cease and desist letter.
2. Formulating legal advice and warnings: Hire a lawyer specializing in intellectual property or trademark law. They will review the situation and draft a legally effective cease and desist letter. They can also help you determine the amount of the contractual penalty and any potential damages.
3. Risks and costs: Ensure your warning letter is legally sound to avoid potential counterclaims. Qualified legal advice will help you minimize the risks and ensure your warning letter is effective.

Through careful preparation and professional support, you as a trademark owner can effectively combat trademark infringements and successfully enforce your rights.