Have you received a trademark warning and are not sure how to deal with it?
I will explain to you what you have to pay attention to and when you should call in a lawyer.
1.) What is a warning notice?
A warning is a request to cease and desist from a certain behavior. If the request to cease and desist is not complied with within a set period by submitting a cease and desist declaration, the warned party is threatened with further legal action. In the case of a warning notice under trademark law, it is generally the case that the person being warned is accused of having used a protected sign (e.g. a registered trademark) in the course of business without the consent of the trademark owner.
Especially in the field of industrial property rights, such a warning is often preceded by so-called “authorization inquiries”, which represent a milder means of a warning. Authorization inquiries do not yet constitute a binding warning, but serve the purpose of first “clarifying” the actual legal situation. This is usually useful if the legal situation is not yet clear for the inquirer and he does not (yet) wish to run the risk of a possible unlawful warning.
In addition, claims for information are often asserted with a trademark law warning, which serve to calculate and assert claims for damages.
2.) What should you do?
Since very high amounts in dispute (> € 50,000.00) are recognized in trademark law, it is generally advisable to seek advice from a trademark attorney regarding further steps, even when an authorization request is made.
In any case you should check
– whether you can (also) prove rights to the protected designation or raise other objections. Here, not only registered trademarks come into consideration, but also company names, which can be created by the mere use in the course of business.
– Whether deadlines must be observed. If so, you should definitely contact a lawyer with legal expertise before the deadline expires.
3.) What should you never do?
Under no circumstances should you,
– sign the penalty-based cease-and-desist declaration attached to the warning without checking it, because they can often be changed/modified in your favor.
– pay the demanded amounts (claims for damages) without having them checked by a lawyer.
We will gladly help you upon receipt of a warning notice and discuss the further necessary steps with you as part of an initial free assessment.