Not every cease-and-desist letter is justified, and often the amounts in dispute are set far too high by the other side. Therefore, you should not sign the enclosed cease-and-desist declaration immediately. Simply throwing the warning letter in the trash will not help either.
It’s better to get professional support and save time, nerves, and avoidable costs.
If you do not respond or do not respond within the set deadline to a trademark warning, the other party can apply to the court for an interim injunction. Due to the high amounts in dispute in trademark law, such proceedings can cost the losing party a five-figure sum.
What we can do for you
During our free initial review, we will give you a brief overview of the legal situation, possible costs and your options.
To enable us to assess the facts of the case appropriately, it is best if you send us the notice of warning in advance by e-mail. Since you know best what has happened, you are welcome to provide us with background information. The more we know about your case, the better we can provide an accurate assessment.
Based on the warning letter and your information, we make a legal assessment of the facts of the case. We examine the validity of the warning and discuss with you the possible reactions and their consequences, also with regard to the possible costs.
Your best strategy moving forward
If you have decided to work with us to counter the warning, we will discuss your options and risks in detail. With our help, you decide on a strategy that suits you best with regard to your situation. We will then initiate everything else for you, in particular, of course, the contact with the other party and – if it makes sense – the submission of a legally secure cease-and-desist declaration.
You have received a warning letter because of a trademark infringement? We are happy to help you!
Jennifer Leopold, attorney at law
What are the strategies for responding to a cease-and-desist letter?
Based on the specific situation and the characteristics of your company, we will work on a mutual basis to determine the best strategy within the framework of your representation.
Preventive cease-and-desist declaration
If you have received an authorization request and determine that the other party is entitled to a cease-and-desist demand, it is advisable to issue a preventive cease-and-desist declaration. The same applies if you discover violations that are not (yet) part of a cease-and-desist letter. By issuing a preventive cease-and-desist declaration, you render the other party’s cease-and-desist claim null and void and thus avoid a warning with costs.
Modified cease-and-desist declaration
Often, a warning letter is accompanied by a drafted cease-and-desist declaration. This usually covers far too much ground, i.e. you are required to do much more than the other party is legally entitled to. In addition, you are also supposed to agree to pay the costs of the cease-and-desist letter and, if applicable, damages. You should not sign such an agreement without checking it! By means of a modified cease-and-desist declaration, you only commit yourself within the framework of your legal obligations and minimize the risk of a repeated infringement.
Deliberately obtaining an injunction
It is not always the best tactic to issue a cease-and-desist agreement, even if the other party is entitled to a cease-and-desist order. If you are not one hundred percent sure that you can stop the infringing act and also eliminate the consequences of past acts, it may be better to wait for an injunction. This is because a contractual penalty, which becomes due if you issue a cease-and-desist declaration and then violate it, flows into the other party’s pocket. An administrative fine, on the other hand, which becomes due if you violate the injunction, goes to the public purse. Particularly in the area of mass warning letters, there is often no longer an application for an interim injunction, as this is far less lucrative.
Reduction of the value in dispute
The amount in dispute in trademark law is not only determined by the economic value of the trademark, but also by the dangerousness of the infringing act, the so-called attack factor. Especially in the case of less serious infringements, you can achieve a reduction of the amount in dispute – even if a preliminary injunction has already been issued – and thus minimize your costs.
Checklist: What you should do after receiving a trademark warning letter
- Check deadlines
It is essential that you stick to the deadlines set in the warning notice in order to avoid further cost-intensive measures such as an interim injunction.
- Do not contact the opposing party on your own
Even if you feel the urge to pick up the phone, it’s better not to. What you see as an attempt to clarify a supposed misunderstanding may already be seen as an admission of guilt by the law. You should therefore always first obtain a legal assessment and then decide what you want to do.
- No pre-written cease-and-desist declaration
Normally, a draft cease-and-desist declaration is already attached to the warning letter. If you sign this, a legally binding contract is concluded. You agree to pay a contractual penalty if you violate the cease-and-desist declaration. There is a risk that the cease-and-desist declaration goes much too far or that you will have to pay high sums if the infringement is not removed.
- Examine the legal situation
A lawyer who is familiar with cease-and-desist letters in trademark law will make an assessment of the legal situation and inform you of your options. It does not always make sense to issue a cease-and-desist declaration, even if there is an infringement. This is because an injunction can be advantageous in individual cases compared to the permanent risk of a contractual penalty. This is especially true if an infringement can easily occur and the warning party has an interest in collecting contractual penalties.
- End infringement permanently
If a legal violation can be identified, you may want to consider what processes need to be changed in your company to avoid future mistakes. Legal advice can help to uncover weak points.