Typical structure of a warning letter in trademark law, competition law, design law, design law and internet law

In the case of warnings in trademark law, competition law, design law, Internet law, patent law, utility model law and also in copyright law, a certain structure has prevailed.

 

A warning letter typically has the following structure:

  • Presentation of your own legal position (e.g. your own trademarks, designs, etc.)
  • Description of the facts of the alleged infringement
  • Legal assessment of the infringement
  • Pre-formulated cease-and-desist declaration

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Factual presentation

In the presentation of the facts of the warning, the alleged infringement must be precisely described. For example, anyone accused of violating the Unfair Competition Act (UWG) must be given a detailed description of the action by which he or she violated the UWG. In the event of a trademark infringement, the party issuing the warning must state exactly which sign on which product infringes which trademark (e.g. registered German trademark or Union trademark) or which company logo.

In design law, on the other hand, a so-called "feature analysis" is popular for strategic reasons. This describes in words the peculiarity of the design and the difference to the known treasure of forms. This often counteracts possible doubts about the uniqueness of the allegedly infringed design.

Legal appraisal

A legal assessment of the facts of the warning is necessary because without it it it is often not possible to determine the subject matter of the dispute. For example, anyone who objects to the infringing use of a trademark must not only state whether the trademark infringes a trademark or a company trademark (see BGH decision of 24.03.2011 - I ZR 108/09 - TÜV I and judgment of 17.08.2011 - TÜV II). He must also state the legal reason (e.g. likelihood of confusion under Sec. 14 (2) No. 2 MarkenG or exploitation of publicity under Sec. 14 (2) No. 3 MarkenG) (BGH op. cit. TÜV I). The determination of the subject matter of the dispute is also decisive for the amount of the warning costs to be reimbursed if the warning is only partially justified.

Usually the corresponding paragraphs are also quoted from which the respective claims against the dunned party (omission, information, damages, possibly unjustified enrichment or destruction, refund of fees) arise (e.g. Sections 14, 15 MarkenG, 3 ff., 12 para. 1 sentence 2 UWG, 242 BGB, 97 para. 1 sentence 1 UrhG).

Time limits in the warning

Background to the short deadlines: Urgency in preliminary injunction proceedings

The time limits until receipt of the cease-and-desist declaration with penalty clause are usually tight. On the one hand, this is intended to exert pressure on the infringer. On the other hand, especially in competition law, the "urgency" of issuing a temporary injunction must be kept in mind: Anyone who waits more than four weeks after becoming aware of a violation of the law before applying for an interim injunction is threatened with rejection of the application for a injunction for this reason alone. This period of urgency varies between the districts of the Higher Regional Court. Roughly speaking, there is a north-south divide: Higher regional courts in the south may consider a longer wait than four weeks to be detrimental to urgency. At the Hanseatic Higher Regional Court in Hamburg, on the other hand, three months may not be harmful.

Appropriate deadlines in trademark law, competition law, design patents, patent law

 

In unfair competition law, seven days are usually granted. In the case of trademark infringements, seven days to two weeks are usual. A deadline that is too short is harmless for the person issuing the warning notice. Because a deadline that is too short sets an appropriate deadline in motion. However, anyone who applies for legal action after a deadline that is too short threatens to lose the case if the person concerned submits after the expiry of the deadline that is too short but within a reasonable period of time. The "circumstances of the individual case" determine what is appropriate. In design law, two weeks may often be appropriate. In patent law, periods of up to four weeks are also granted. In this case, the complainant often takes longer to examine the allegation of a violation of the law.

Request for information about the infringement

In almost all cases, the complainant is asked to provide information about the extent of the infringement (e.g. origin of the infringing goods and commercial customers (independent right to information). In addition, they are typically asked to provide information on the calculation of damages ("accessory" right to information). Only after the information has been provided will the person issuing the warning notice calculate his loss and then request payment from the dunned party.

Request to acknowledge the claim for damages on the merits

Often the dunned party is asked to acknowledge the claim for damages on its merits (determination of damages).

Request for reimbursement of attorney's fees and possible patent attorney's fees for the warning notice

Last but not least, the letter of formal notice usually already asks the complainant to reimburse the lawyer's fees and, if applicable, the patent attorney's fees. Not infrequently, either excessive item values are used here.

The annex to the warning: Pre-formulated cease-and-desist letter and declaration of commitment

Usually a warning contains a pre-formulated cease-and-desist declaration with penalty clause. But this does not have to be the case. The admonisher can just as well ask the addressee to formulate a cease-and-desist declaration with penalty clause on his own initiative. But that's hardly ever practical. Because a cautioner will typically use the strategic advantage of a self-formulated declaration. 

Call us: +49 69 915076-0

Your contact person:

Thomas Seifried, Attorney at Law (Rechtsanwalt) and Specialist Lawyer for Intellectual Property (Fachanwalt fuer gewerblichen Rechtsschutz)

Any questions?

Do you have any questions about a warning letter?
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Author: Attorney at Law (Rechtsanwalt) for Trademark Law, Competition Law and Specialist Lawyer for Intellectual Property (Fachanwalt fuer gewerblichen Rechtsschutz) Thomas Seifried

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