Legal infringements – warnings
INFRINGEMENT OF TRADEMARK LAW, DESIGN LAW OR COMPETITION LAW
You have received a warning
Have you received a warning, or have you been asked to submit a cease-and-desist declaration subject to penalty?
Are you unsure whether there has even been an infringement?
Are you wondering whether the costs of the warning (for which you have to reimburse the other party) are justified?
Is it worth engaging a lawyer?
In the event of a potential infringement of trademark law, design law or competition law, a warning is a legal instrument designed to induce the potential infringer to cease and desist. Claims for information and compensation and reimbursement are usually asserted at the same time.
Firstly, you should keep calm, and secondly you should immediately seek legal advice. The hasty submission of a cease-and-desist declaration subject to penalty or, conversely, taking no action whatsoever can both lead to considerable legal consequences.
Seek legal advice immediately
At Klinger & Kollegen, we have decades of experience in intellectual property disputes. On the one hand, we act on behalf of our clients in the event of infringements of their trademark rights. On the other hand, we naturally also represent our clients in the event of warnings from third parties. We therefore know both sides of the argument very well and are very familiar with potential tactics and solutions.
If you receive a warning, don’t panic. Especially in today’s world of the Internet and social media, the hasty submission of a cease-and-desist declaration subject to penalty may mean that you have not adequately fulfilled the conditions of the declaration in a legal sense, and that the other party may assert the contractual penalty without you being aware of any wrongdoing. On the other hand, taking no action at all can result in the opposing party obtaining an injunction against you and preventing you from being able to present your counter-arguments in court.
For these reasons, we recommend that you consult a lawyer who specializes in industrial property rights as soon as possible. At Klinger & Kollegen, we will be happy to advise you during this difficult phase. Firstly, we will check the legality of any warning and sound out potential settlement options.
If we consider a warning to be unjustified, the best thing to do is to file a so-called protective brief with the courts detailing your counter-arguments. This brief must then be taken into account in the event that the opposing party applies for an interim injunction. As a result, the application for an interim injunction will be rejected, or at the very least an oral hearing will be scheduled before a decision is made.
However, if we conclude that it makes sense to submit a – potentially modified – cease-and-desist declaration to avoid an interim injunction, it is often possible to negotiate the scope of the cease-and-desist declaration with the opposing party, as well as additional claims such as claims for information, compensation and reimbursement of legal fees. If a cease-and-desist declaration is made, we will inform you in detail about the actions to be taken in order to comply with the cease-and-desist declaration in the legal sense and to avoid paying a contractual penalty.
What should I do?
Keep calm and don’t hastily sign any cease-and-desist declarations subject to penalty.
Send us the warning letter and tell us your view of the situation.
When submitting a cease-and-desist declaration subject to penalty, follow our recommendations, especially when it comes to deletion requests and/or deletions on the Internet and social media.
In the future, get product and company names checked before you use them and protect your trademark rights before third parties do.