Trademark infringement

Your expert lawyer when it comes to the infringement of trademark rights

Using a sign to identify goods or services in business transactions always involves the risk of infringing the trademark rights of third parties. A trademark infringement usually occurs when there is a likelihood of confusion between a registered trademark and the used sign of a third party (§ Section 14 MarkenG or Art. 9 UMV). Likelihood of confusion means that the potential target groups/customers could assume that the offerings are those of the same company or associated companies due to the similarity of the signs and the respective goods and services offered. In addition, a trademark infringement can also be assumed without a likelihood of confusion if someone exploits a nationally well-known trademark in an unfair manner due to its particular reputation.

However, for the existence of trademark infringement, it is always necessary that the unauthorized use of the trademark by third parties in the course of trade is "trademark-like". If this is the case, the owner of the registered trademark can assert a number of claims against the trademark infringer. These include, in particular, claims for injunctive relief (§ Section 14 (5) MarkenG, Art. 9 para. 2 UMV), information (§ 19 MarkenG) and compensation for damages (§ Section 14 (6) MarkenG).

There are various legal options available to the trademark owner to enforce these claims. In addition to the extrajudicial enforcement e.g. by means of a trademark warning letter, the issuance of an injunction and the filing of a trademark infringement lawsuit are also possible options.

Which path is ultimately taken always depends on the specific individual case, which must be thoroughly examined beforehand. Therefore, it is highly recommended to engage a specialized lawyer for this purpose, as the examination alone of whether there is a likelihood of confusion or a trademark infringement at all is highly complex due to the large number of relevant factors. Without specialist knowledge, there is a risk of misjudgement, which can have not only financial but also extremely damaging consequences for the business.

As specialized lawyers for intellectual property, we therefore attach great importance to a torough examination of the alleged trademark infringement, on which basis we individually plan the best possible strategic approach for our clients. It goes without saying that we always advise our clients personally and represent them with outstanding expertise and many years of experience in both extrajudicial as well as judicial enforcement and defense of their trademark rights. Our range of services for potential trademark infringements naturally also includes the preservation of evidence that will stand up in court and the conducting of necessary test orders of the infringing goods.

Your trademark has been infringed and you would like to assert trademark claims? Have you received a warning letter due to a trademark infringement and should pay compensation? We will be happy to take a close look at the situation and inform you about the opportunities and possible risks of legal action in detail.

Contact us now and arrange a consultation with our experienced IP lawyers in Germany!

Your contact for trademark infringements:

Specialist lawyer for intellectual property rights

Warning letter due to trademark infringement

A warning letter is an out-of-court request to refrain from infringing behavior (e.g. trademark infringement) in the future.

As a rule, a trademark warning contains the demand for:

  • injunctive relief of future trademark infringements by submitting a cease-and-desist declaration with penalty clause (§ Section 14 (5) MarkenG and Art. 9 para. 2 UMV)
  • the issuance of information about the type and extent of thecomplained trademark infringement, § 19 MarkenG (this serves to prepare the quantification of a claim for damages),
  • the recognition of the liability for damages, § Section 14 (6) MarkenG (as well as payment of the damages to be quantified after the information has been provided) and liability for damages, § Section 14 (6) MarkenG (as well as payment of the damages to be quantified after the information has been provided) and
  • reimbursement of the lawyer's fees incurred in issuing the warning (reimbursement of warning costs).

As experienced intellectual property lawyers, we are specialized in cease-and-desist letters related to trademark and other identifier rights (e.g. company logos or protected names). We have already handeled hunderts of trademark infringement cases, and with our comprehensive expertise, we stand by the side both for those issuing warnings parties and those being warned as a competent partner.

Have you discovered a potential infringement of your trademark by a competitor or another third party? Is a third party selling counterfeit goods with your trademark? We will gladly examine your competitors and their offers and issue a warning to them in the event of a trademark infringement. For the fulfillment of all asserted claims, we set short but reasonable deadlines and threaten legal action if the deadlines are not met. We will, of course, settle the content of any warning letter with you in advance.

If you are "on the other side" and have received a tademark warning, we will also support you in your defense. For this, we first carefully examine the warning letter for its validity, as this may be unlawful for various reasons. Based on the respective outcome, we will then advise you in detail on the existing options and any subsequent proceedings and, in consultation with you, determine the best possible defense strategy firmly. Our approach is characterized in particular by a clear strategy, clever tactics and individual, personal advice in order to defend your trademark interests in the best possible way.

Conducting settlement negotiations

As disputes over trademark rights are often lengthy and expensive, we always check for you at the stage of the warning letter and at every further stage of the proceedings whether it makes sense to enter into settlement negotiations with the opposing party. If we decide, in consultation with you, to enter into settlement discussions, we negotiate fairly but firmly with the opposing party and explore whether an agreement is the best solution for you.

Preliminary injunction due to trademark infringement

The proceeding for issuing a preliminary injunction in cases of trademark infringement (§ 935 ZPO) is a preliminary court proceeding in which claims for injunctive relief are decided quickly and on an interim basis (pending a decision in the main proceedings), provided that these claims are really urgent for the applicant. This is generally assumed in cases of trademark infringement. However, this presumption does not apply if you dawdle with the judicial enforcement of your claims, i.e. if you take too much time and thus make it clear that the matter is not urgent at all. Depending on the competent higher regional court district, the permitted time between the awareness of the trademark infringement and the application for an urgent injunction is no more than four weeks to a maximum of two months. It should be mentioned here that with preliminary injunction proceedings only claims for injunctive relief can be decided provisionally, as other claims, in particular those for monetary payment (legal fees, damages) are not urgent by law.

For trademark owners, injunctive proceedings are advantageous, as they can quickly obtain a judicial ban from the competent regional court, usually within one to three weeks.For opponents, on the other hand, preliminary injunctions can be very painful, as they must immediately comply with the ban and may no longer use the offending trademak. If they continue to use the trademark and thus violate the injunction, this can be penalized with severe fines of up to € 250,000 per violation (cf. § 890 ZPO).

If the trademark infringer does not raise any objections during the injunctive proceeding, the matter is usually concluded with the issuance of a so-called "final declaration“ by the trademark infringer. If, on the other hand, this declaration is not issued because the defendant does not accept the preliminary injunction as a final settlement, the option of legal proceedings remains.

As spezialized lawyers with many years of experience in intellectual property law, we have extensive knowledge in preliminary injunction proceedings and understand exactly what is required. We enforce injunctive reliefs nationwide for you in preliminary injunction proceedings in order to stop trademark infringements quickly and prevent significant damage to your brand reputation. We also defend you as the opposing party in preliminary injunction proceedings. In particular, we draft defense pleadings or file an objection (§ 924 ZPO) against a preliminary injunction that has already been issued. Furthermore, we attend oral hearings and also appeal if it is necessary to defend against a preliminary injunction.

Filing of protective letters

As a preventive defense option against the issuance of a preliminary injunction, it is also often advisable to file a so-called protective letter in the in the German Central Electronic Register of Protective Letters (ZSSR). If the competent court receives the application for a preliminary injunction, it must check whether a protective letter has been filed and then take it into account. The aim of a protective brief is to ensure that an application for an injunction is rejected or at least that the alleged trademark infringer is granted a fair hearing.

Have you received a warning letter or other reasons to believe that a preliminary injunction could be issued against you due to an alleged trademark infringement? As experienced IP lawyers, we have already filed a large number of protective letters for our clients, which have helped successfully fending off preliminary injunctions. We will be happy to examine the facts of the case as well as the legal situation and file the corresponding protective letter for you, if this makes sense or is even necessary in your case.

Trademark infringement lawsuit

If the necessary urgency for a preliminary injunction is refuted or injunctive relief is not finally recognized in summary proceedings, it is possible to assert injunctive reliefs in court proceedings (trademark infringement lawsuit). The following claims are usually disputed in trademark infringement proceedings (especially if they have already been raised in a trademark warning but not fulfilled by the warned party):

  • Claims for information and damages to atone for the trademark infringement or to indemnify you and your company (§ 19 MarkenG - Information, § Section 14 (6) MarkenG - compensation for damages)
  • Claims for reimbursement of legal fees for issued warnings

For trademark infringement proceedings under the Trademark Act and the European Union Trademark Regulation, the regional courts have exclusive jurisdiction in the first instance (§ 140 (1) MarkenG). Since it is mandatory to be represented by a lawyer before the regional courts, it is therefore always necessary for the parties to be represented by a licensed lawyer in trademark infringement lawsuits. In view of the complexity of the matter and the high financial risk involved, it is advisable to consult a lawyer specializing in intellecutal proparty law.

Are you seeking a trademark litigation or have you been involved in one? As experienced intellectual property lawyers, we will be happy to advise you in detail on your opportunities and risks in trademark litigation after a thorough examination of the facts at hand and represent your interests before the competent trademark courts with strategic planning and in-depth expertise - this applies to both defending against unjustified attacks and enforcing your own trademark rights. It is a matter of course that you can count on our personal, top-level legal support throughout the entire proceedings, if necessary also up to the conclusion of appeal proceedings in the second instance before the competent higher regional court!