A warning letter for trademark infringement serves to avoid a legal dispute (e.g. in preliminary injunction proceedings) due to a trademark infringement. A warning is at the same time an offer to conclude a cease-and-desist agreement. Such a cease-and-desist agreement is concluded if the warned party submits a cease-and-desist declaration with a penalty clause and the warned party does not reject this declaration.
A warning letter is not a mandatory prerequisite for a lawsuit or an application for an injunction. However, anyone who sues without a prior warning is at risk of "immediate acknowledgement". In this case, the infringed party must usually pay the costs of the proceedings, even if he has won the case. A milder form of action than a warning is an entitlement inquiry. Whoever initiates such an inquiry, in contrast to a warning, does not risk a negative declaratory action.
Trademark lawyer Thomas Seifried has over 20 years of experience in European trademark law and has also been a German specialist attorney for intellectual property law ("Fachanwalt fuer gewerblichen Rechtsschutz") since 2007. He is an author of specialized books and has conducted many successful proceedings before courts and the trademark offices.
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Whether the claims asserted with the warning letter are justified depends on whether a trademark infringement has actually occurred. Experience shows that the following topics play a role in almost all cease-and-desist letters for trademark infringement:
A warning letter must have been received by the person being warned. The burden of proof initially lies with the person issuing the warning: Anyone who acknowledges a court decision (injunction or judgment) immediately after service and wishes to have the costs of the proceedings imposed on the plaintiff can initially plead that he did not receive the warning (so-called "simple denial" of a negative fact). The applicant or plaintiff must then provide a "qualified" explanation of why the warning must have been received. Only now must the warned party state and prove that he did not receive the warning (BGH of December 21, 2006 - I ZB 17/06 - Receipt of the warning letter).
A warning sent as an attachment to an e-mail message is only deemed to have been received if the person being warned has also opened the attachment. This is because, due to the known risk of viruses, a person who has been warned does not have to open a file attachment (OLG Hamm v. 09.03.2022 - 4 W 119/20 - e-mail warning). Sending by e-mail is therefore not sufficient to escape the risk of cost disadvantages of a judicial measure without a prior warning.
First of all, the person issuing the warning must present his own legal position. This concerns the so-called "active legitimacy", i.e. whether he is entitled to object to the alleged infringement himself. To this end, he must also state which right he is invoking, such as a registered German trademark or an EU trademark.
Statement of facts
The statement of facts in the warning notice must precisely describe the alleged infringement, e.g. which sign has allegedly infringed the trademark and by which infringement action this is supposed to have occurred.
A legal assessment of the facts of the warning notice is necessary, because without it it is often not possible to determine the subject matter of the dispute. Whoever alleges a trademark infringement must not only state whether the sign infringes a trademark or a company trademark (see BGH decision of March 24, 2011 - I ZR 108/09 - TÜV I and judgment of August 17, 2011 - TÜV II). It must also state the legal reason, e.g. likelihood of confusion under Section 14 (2) No. 2 MarkenG or use of reputation under Section 14 (2) No. 3 German Trademark Act - MarkenG (BGH loc. cit. TÜV I). Usually, the relevant paragraphs are also cited, from which the respective claims against the warned party (injunction, information, damages, possibly unjust enrichment or destruction, reimbursement of fees) arise (e.g. Sections 14, 15 German Trademark Act - MarkenG, 242 German Civil Code - BGB).
Usually, a warning notice for trademark infringement also states why the person being warned is liable for the trademark infringement ("passive legitimation"). In this case, the person can be considered as a perpetrator, co-perpetrator or participant.
The next step is usually the request to submit a cease-and-desist declaration with a penalty clause. Such a declaration can be attached to the warning letter as a pre-formulated proposal. Sometimes, however, the person issuing the cease-and-desist letter also requests the person being warned to submit his or her own declaration. If there is no request to submit a cease-and-desist declaration with penalty clause, the warning is not a warning but a (milder) request for entitlement.
Finally, the warned party is usually requested to fulfill the "follow-up claims", namely to provide information, to pay the warning costs and to acknowledge the reason for the damages (determination of damages) and possibly to agree to the destruction of the trademark-infringing goods.
"Popular actions," i.e., the assertion of third-party interests in one's own name, are very rare in German civil law. Whether someone can assert claims for trademark infringement is a question of active legitimacy. In trademark law, at any rate, only the owners of their own original or derived rights may issue a warning notice. The owner of a trademark has the right of action against the trademark infringer without further ado.
The exclusive and the simple licensee of a German trademark has the right to sue for cease-and-desist, but not for damages. This is because they do not have their own claim for damages or their own claim for information against the infringer which prepares the ground for damages ("accessory") (BGH of July 19, 2007, I ZR 93/04 - Windsor Estate, para. 32). The same applies to the licensee of an EU trademark (see BGH v. 13.9.2007, I ZR 33/05 - THE HOME STORE, para. 46). Therefore, a licensee may claim injunctive relief in a warning letter, but not payment of damages to himself.
In principle, a lawyer representing the person issuing the warning letter should enclose a power of attorney. In fact, however, there are always cases in which lawyers issue warnings on their own initiative, so to speak, without actual legitimation. For some time, some higher regional courts were of the opinion that the recipient of a warning notice can reject it if the warning notice was not accompanied by an original power of attorney document. The German Federal Court of Justice (Bundesgerichtshof) has taken a different view: Whether or not the warning was accompanied by a power of attorney has no influence on the effectiveness of the warning (BGH GRUR 2010, 1120 - Vollmachtsnachweis).
The deadlines for receipt of a cease-and-desist declaration with a penalty clause are usually tight. On the one hand, this is intended to exert pressure on the trademark infringer. On the other hand, the "urgency" for issuing a preliminary injunction must be kept in mind: Anyone who waits more than four weeks after becoming aware of an infringement before applying for a preliminary injunction is at risk of having the injunction application rejected for this reason alone. This urgency period varies between the higher regional court districts. Roughly speaking, there is a north-south divide: Higher Regional Courts in the South of Germany may consider a waiting period longer than four weeks to be detrimental to urgency.
In the case of trademark infringements, deadlines of between seven days and two weeks are common. A deadline that is too short is not dangerous for the person issuing the warning. This is because a deadline that is too short sets a reasonable deadline in motion. However, anyone who applies for legal action after a period that is too short risks losing the case if the warned party submits after the period that is too short but within a reasonable period. What is reasonable is determined by the "circumstances of the individual case".
According to the purpose of a warning letter with cease-and-desist declaration, the central concern is to request the person being warned to submit a cease-and-desist declaration with a penalty clause. This is because the risk of repetition is presumed as a result of the infringement. This can only be eliminated by issuing a cease-and-desist declaration with a penalty clause. Furthermore, the cease-and-desist declaration with a penalty clause may not be rejected. Such a declaration may be attached to the warning notice. However, this does not have to be the case. The person issuing the warning can just as well request the person being warned to issue his own declaration. The latter is often recommended.
Read here: The cease-and-desist declaration - structure, submission, modified submission, legal consequences, infringements and termination
Company ...
- "DEBTOR" -
is committed to the
Company ...
- "CREDITOR" -
1. to refrain in commercial dealings from offering, importing, placing on the market or possessing textiles for the aforementioned purposes marked with the designation "[BRAND XY] " [now follows the so-called "form of infringement":] unless these textiles are used with the consent of... GmbH into the European Union or into a Contracting State to the Agreement on the European Economic Area, in particular in the case of T-shirts, as shown in the following description
[here follows a picture of a T-shirt bearing the inscription"[BRAND XY]"]
2. to pay a contractual penalty to the creditor to be determined by the creditor for each case of future infringement of the act described in Clause 1 and to be reviewed by the District Court of Frankfurt am Main for its appropriateness in the event of a dispute, and
3. to inform the creditor of the origin and distribution channel of the illegally labelled textiles via the name and address of the manufacturer, the supplier and other previous owners; name and address of the commercial customers and sales outlets for whom the goods were intended; the number of textiles offered, imported and placed on the market, their purchase and sales prices and production costs; the net proceeds achieved and the profit made
by submitting copies of invoices and delivery notes from suppliers and commercial customers and copies of suitable banking and financial documents;
4. to compensate the creditor for any damage caused or to be caused by the infringing act described under item 1;
5. to immediately recall all illegally marked textiles and to return them to us by... - received by the signatories - to prove the recall in an appropriate form;
6. to destroy immediately all textiles in the possession of the debtor in accordance with item 1 and such textiles whose possession it has regained through the recall and to prove this to the creditor;
7. to bear the costs incurred through the use of the lawyers... in accordance with a 1.3 fee in accordance with VV 2300 plus expenses from an object value of € 100,000.00.
..............................................
[Place], [Date]
..............................................
(Debtor)
Almost always, the warned party is requested to provide information about the scope of the trademark infringement (e.g. origin of the infringing goods and commercial customers, so-called independent claim for information). In addition, he is typically requested to provide information on the calculation of damages (so-called dependent or "accessory" claim for information). Only after the information has been provided will the person issuing the warning notice calculate the damages and then request payment from the person being warned.
Usually, the injured party calculates his damages according to the license analogy or he calculates the infringer's profit. For this purpose, he needs the infringer's information. The person issuing the warning notice must specify here the actions for which he is requesting information. If he also requests invoicing, he must specify which invoices are to be submitted. If the infringed party only demands compensation for his own concrete damage, no information must be provided. This is because the infringed party can quantify this damage himself.
Only when the person being warned has provided information about the extent of the infringement can he calculate his damages. Like the claim for damages, the claim for information only exists in the event of a culpable infringement of the law by the person being warned.
In principle, the infringer must provide information about all infringements complained of. Since the decision of the German Federal Court of Justice (BGH) of July 19, 2007, Case No. I ZR 93/04 - Windsor Estate, there is no longer a time limit from the first proven infringement (see also German Federal Court of Justice decision of April 30, 2009, Case No. I ZR 191/05 - Electronic Customs Tariff). The warning party must also generally disclose its upstream suppliers and its commercial customers. This information is often particularly interesting for the person issuing the warning. In this way, he can work his way step by step to the manufacturer of a plagiarism, for example. The subsequent warning of other links in the supplier chain often increases the willingness to reach an out-of-court settlement.
As a matter of principle, the warned party must also submit invoices and other customary documents about its income and expenses relating to the infringing products. How detailed the warned party must submit invoices depends on the individual case, in particular also on the type of company of the infringer. For example, a pure distribution company - unlike the manufacturer of a plagiarism - usually does not have to provide information on manufacturing costs.
TIP: In order to avoid the warning party having to disclose its customers to the warning party, which is at the same time its competitor, the warning party can claim a so-called "auditor's reservation".
Finally, the scope of the information also depends on the way in which the infringed party wishes to calculate its damages. In addition, confidentiality interests and the principle of proportionality limit the scope of the right to information (BGH v. 6.10.2005, I ZR 322/02 - Noblesse, para. 14).
In the case of so-called "third-party information", in the event of an obvious infringement of the law or after a lawsuit has been filed, forwarding agents, warehousing companies or the operators of online platforms, for example, may also be obliged to provide information.
Anyone who has committed a trademark infringement does not have to provide information about the advertising media or the number of clicks on an infringing advertisement for the independent claim to information. This is because this information is not mentioned in Section 19 (3) of the German Trademark Act (BGH v. 14.07.2022 - I ZR 121/21 - Google Drittauskunft). However, this information may have to be provided for the accessory claim for information that prepares the claim for damages.
If the injured party can prove that the infringer provided false information, he can have the infringer forced to provide information again and to affirm the accuracy of his information in lieu of an oath. Providing false information again would then be punishable by law.
Often, the warned party is requested to acknowledge the claim for damages on the merits (determination of damages). If the rightfully warned party does not make such a declaration, the person issuing the warning can file an action to determine the damages.
It is not uncommon for a claim to be made for the destruction of the trademark-infringing goods. This claim is only enforceable if it is proportionate in the specific case.
Last but not least, in most cases the warning letter already requests the warned party to reimburse the costs of the warning letter and, if applicable, the patent attorney's fees. Not infrequently, excessive object values are set here.
Read here: Which warning costs and which patent attorney fees must be reimbursed?
The amount of the costs to be reimbursed in accordance with the German Lawyers' Fees Act (RVG) depends on the value of the claims asserted in the trademark warning. Typically, the claim for injunctive relief has the highest value. For the sake of simplicity, this claim alone is often used to calculate the value in dispute. Subject-matter values below € 50,000.00 practically do not occur in trademark law and are applied to unused or only little used trademarks. The more intensively the trademark is used and the better known the trademark, the higher the object values. In the case of averagely used trademarks, the value of the subject matter is between € 100,000.00 and € 250,000.00. The correct amount of the subject-matter value to be applied is often discussed between the person issuing the warning notice and the person being warned.
The following table contains the costs of a cease-and-desist letter under trademark law with frequently occurring object values. A 1.3 business fee including the statutory telecommunications flat rate has been applied. Higher fees than a 1.3 fee are usually not to be reimbursed. Under certain circumstances, value added tax must be added as part of the warning costs.
| Amount in dispute | Reimbursable costs of the warning notice according to RVG (1.3 business fee and telecommunications flat rate) | ||
|---|---|---|---|
| € 50.000,00 | € 1.682,70 | ||
| € 100.000,00 | € 2.171,50 | ||
| € 150.000,00 | € 2.538,10 | ||
| € 200.000,00 | € 3.004,70 | ||
| € 250.000,00 | € 3.247,90 | ||
| € 500.000,00 | € 4.620,70 | ||
| € 1.000.000,00 | € 6.764,70 |
The best way to react to a warning letter in trademark law essentially depends on whether the warning letter is justified or not.
Ignoring a warning letter and resorting to a lawsuit or an injunction is not always the worst course of action. Particularly in highly competitive industries, it regularly happens that the person issuing the warning subsequently fleeces the opponent with constant contractual penalty claims and explores the core area of the cease-and-desist promise to its limits. This may also be advisable if the warning was sent by a presumed warning lawyer and one cannot prove the abuse of rights.
It is therefore better to obtain a judgment against oneself in cases where new identical or similar infringing acts are not unlikely. In the event of a new infringement, the warning party must then enforce the judgment. The desire to do this is incomparably lower than to proceed from a contractual penalty promise. This is because the court imposes an administrative fine in the execution of the cease-and-desist order. However, it is not the person issuing the warning who receives this fine, but the state.
And some lawyers will also have to be taken to the chase in the event of a violation of an injunction. They earn nothing from this. The attorney's fees for an enforcement action are only a fraction of the fees for a penalty action. But beware: the administrative fines set by the court in enforcement proceedings also increase from violation to violation.
If the warning letter is justified, a cease-and-desist declaration in the form of a modified cease-and-desist declaration should be issued. A warning letter is justified if it is based on a claim for injunctive relief and if it shows the debtor a way to indemnify the creditor without recourse to the courts (GRUR 2010, 1120 - Vollmachtsvorlage; cf. also BGH, GRUR 2009, 502 marginal no. 11 - pcb; GRUR 2010, 354 marginal no. 8 - Kräutertee). If the warning is justified, the recipient of the warning must pay the warning costs.
Anyone who receives an unjustified warning has several options: He can file a negative declaratory action, issue a counter-warning, file a protective letter with the court or, under certain circumstances, simply ignore the warning. Under certain circumstances, he may also claim damages (e.g. for his own attorney's fees).
The unjustly warned party may also file a protective brief with the court likely to be called upon by the warning party. This prevents a temporary injunction from being issued without an oral hearing. If the court issues an injunction without an oral hearing, the course of the future proceedings is often already mapped out. Ultimately, the judges of the already issued (and despite opposition to the preliminary injunction effective) order decide on this.
A negative declaratory action may be considered as a measure in the event of an unjustified warning. With this, the person being warned goes on the counterattack, so to speak. In this way, he has the court (the court of the warned party is responsible) determine that the claim asserted by the warned party does not exist. A prior counter-warning is not required for this. The person being warned can take legal action immediately..
With a "counter-warning letter", i.e. a letter to defend against an unjustified warning, one can request the person issuing the warning to declare that the claim asserted in a warning does not exist. However, such a letter is not necessary before filing a negative declaratory action.
Some courts consider the costs for a counter-warning to be recoverable (e.g. Higher Regional Court of Munich, decision of January 8, 2008 - Ref. 29 W 2738/07 for unauthorized warning under trademark law; LG Hamburg v. November 22, 2016 - 312 O 128/16 - Spring Break, for unauthorized warning under trademark law; Regional Court of Cologne of February 7, 2017 - 31 O 308/15 for unauthorized warning due to lack of trademark use). The BGH is more reserved. It only affirms reimbursement of fees if the warning is based on incorrect assumptions and the person being warned can expect that the person issuing the warning will change his opinion if he corrects it or that the person issuing the warning will not take legal action for a longer period of time, contrary to his announcement (German Federal Court of Justice MMR 2004, 667 - Gegenabmahnung).
Lawyers occasionally recommend investigating the sender of a warning notice for infringing behavior themselves, for example by "fleeing" their website. However, some courts consider a subsequent counter-warning as a "return payment" in order to subsequently be able to offset the claims for reimbursement of costs to be an abuse of rights (e.g. LG München I, BeckRS 2008, 10678). However, the Federal Court of Justice does not consider a "return payment" to be an abuse of rights per se.
It will hardly be possible to assess whether the accusation made in the warning notice is legally correct or not without detailed knowledge of trademark law and the current case law in this regard. However, there are legal misjudgements in trademark law warning letters which can be found again and again. Such typical legal errors or cases of doubt are described below:
From time to time, warning letters are not only unjustified, but even abusive. The objection of abuse also applies in trademark law, for example in cases of inadmissible exercise of rights ( Higher Regional Court of Stuttgart of February 21, 2002, 2 U 206/01 - Hot Chili) or if the trademark owner provokes the infringement himself (Higher Regional Court of Frankfurt of October 27, 2011, 6 U 179/10 - Abusive assertion of a trademark infringement on Amazon). In practice, abuse of rights in trademark law is rarely assumed.
Damages for unjustified warnings of intellectual property rights (i.e. warnings for alleged but actually non-existent infringement of trademarks, designs, patents) are only granted by the courts in cases where there is clearly no infringement (e.g. Regional Court of Düsseldorf, judgment of 20.12.2017 - 2a O 248/16). Only then can one assume fault on the part of the person issuing the warning.
If significant questions have not yet been clarified by the highest courts, claims for damages due to unjustified warnings are ruled out (see, for example, Regional Court of Düsseldorf dated August 13, 2015 - 14c O 98/13 - Zentrierstift).
The authorization request or the property right notice is a milder form of letter to a potential infringer of an industrial property right than a warning. It merely inquires as to what a user of a right feels entitled to. The submission of a cease-and-desist declaration with a penalty clause is not required. In contrast to an unjustified warning, an authorization inquiry cannot give rise to claims for damages or the risk of a negative declaratory action.
Often, the customers (buyers) of the actual infringer are first warned in order to increase the pressure on the infringer. If such warnings are unjustified, the supplier of the warned customers can also take action against the warning party. This is because unjustified warnings can constitute an encroachment on the established and practiced business (§§ 1004, 823 I BGB). The party whose customers are unjustifiably warned can then have the warning party prohibited by court order from asserting alleged rights against the customer ("unjustified customer warning", e.g. German Federal Court of Justice (BGH) of January 19, 2006 - I ZR 217/03 - Unbegründet Abnehmerverwarnung).
Example: In its judgment of 20.12.2017, the Düsseldorf Regional Court prohibited the owner of the trademark "SAM" from issuing warning notices to the plaintiff's customers for alleged infringement of the trademark "SAM" in a certain way (LG Düsseldorf, judgment of 20.12.2017 - 2a O 248/16)
For recipients of a warning letter under trademark law, we carefully examine whether the opponent has the right to act. We examine each of the claims asserted, in particular whether a trademark infringement has occurred. If the cease-and-desist letter is justified, we usually draft a modified cease-and-desist declaration ourselves in consultation with our clients and negotiate with the opponent about the reimbursement of the cease-and-desist costs, the claim for information and any damages to be compensated. We are often able to significantly reduce the claims of the trademark owner. In some cases, we advise against issuing a cease-and-desist declaration with a penalty clause, even in the case of justified cease-and-desist letters, if the consequences cannot be calculated. In the case of unjustified or legally abusive cease-and-desist letters, we assert counterclaims, also in court.
We draft our own warning letters against trademark infringers in consultation with our clients. We enforce our clients' unfulfilled claims in court, often with the help of an interim injunction.
Everything you need to know about a warning letter in trademark law
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Author: Thomas Seifried, trademark lawyer Europe and trademark lawyer Germany
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