Trademark Infringement - What you can do now
If you have received a cease and desist letter due to trademark infringement, various demands are made, including removal/destruction claims, disclosure claims, and compensation. We can help you defend yourself and avoid legal pitfalls. In particular, the attached penalized declaration to cease and desist can have far-reaching consequences in the future - legal support is especially important at this point.
- Do not sign the penalized declaration to cease and desist immediately
- Take the set deadlines seriously.
- Rely on our support. We have years of experience in successfully handling cease and desist letters in trademark law..
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Use the cease and desist letter upload and send us all available documents. In order to fully represent you, booking the Unlimited or Professional membership package is necessary. In addition to representation in the case of a cease and desist letter, you benefit from many other services such as a deep shop analysis, legal text service and much more.
Why was I issued a cease and desist letter?Building a brand is time-consuming and expensive. Therefore, most trademark owners have a strong interest in monitoring their registered trademarks and ensuring that the protected goods or services are not used without authorization.
If someone receives a cease and desist letter in trademark law, they are accused of gaining a competitive advantage by using a protected trademark – for example, by copying a trademark or exploiting the reputation of a trademark. The cease and desist letter serves as a request to cease the trademark infringement.
Trademark cease and desist letters may concern, for example:
- Consciously or unconsciously dealing with counterfeits
Those who sell counterfeits not only violate the manufacturer's trademark rights but also commit a criminal offense. By the way, if a counterfeit was sold as a "genuine" product, the seller must provide the customer with the original.
- Sale of original branded products without authorization from the trademark owner
Many retailers do not realize that manufacturers can specify distribution channels. This can determine which countries the branded products may be distributed in and what qualifications (e.g. expertise) retailers must meet.
- Use of brand names in the offers of no-name accessories or spare parts
Advertising for products that are compatible with a branded product is permissible. However, the listing of compatible products must be complete and not single out any brand arbitrarily. Otherwise, a cease and desist letter may be issued.
- Use of foreign trademarks in search engine advertising ad text
Using a foreign trademark as a keyword is generally permissible. However, there are many conflicting court decisions. The foreign trademark should not appear in the ad itself.
- Original branded products are altered or deteriorated
The trademark owner does not have to tolerate his products being altered (example: decorating a Rolex watch with gemstones).
- Meta-tag advertising using protected trademarks
The use of a trademark in the HTML source code of a website, apparent for the purpose of attracting buyers to the shop via search engines, violates trademark rights.
- Newly registered trademark conflicts with an already protected trademark
Owners of older trademarks can claim the right to have identical or similar trademarks that were registered later removed. Therefore, it is always recommended to conduct a professional trademark search.
- Use of common but protected everyday terms
Names like "Inbus", "Mensch ärgere dich nicht" or "Edding" may not be used if they do not relate to the actual trademark product.
- Violations in product descriptions and images when attaching to ASIN numbers on Amazon
The risk of a cease and desist letter exists for trademark infringements not only for the retailer responsible for the texts and images, but also for all sellers who attach themselves to the corresponding product.
- Improper use of logos
Trademark names may be used, of course, if you are lawfully selling protected trademarks. However, logos are different: they cannot be used without further consideration. Even if the use of logos is usually already regulated in contracts in everyday business, it is recommended to double-check.
By the way, offering goods or services is already subject to cease and desist letters - regardless of whether a sale took place.
Is my trademark cease and desist letter justified?
Whether the cease and desist letter is justified or baseless must be determined by an expert in case of doubt. Our lawyers thoroughly review your cease and desist letter and represent you even if the infringement was due to your own fault. Because even if you have violated trademark law, the extent of the attached demands is regularly excessive, especially when a patent attorney is involved. Legal expertise is required in such cases.
However, a cease and desist letter is not always admissible. For example, a cease and desist letter cannot be issued in the following cases:
- If the trademark has not been used or has only been used for private purposes in the past five years after its registration.
- If the accused party, as the registrant of the older trademarks, has been targeted with a cease and desist letter in the case of competing entries with identical trademarks.
- If the claimant is not the owner of the trademark/exclusive licensee or does not represent them.
- If the trademark was registered in bad faith, meaning solely to create a trap for a cease and desist letter.
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What is the legal basis for sending trademark infringement cease and desist letters?
The legal basis for sending trademark infringement cease and desist letters is the German Trademark Act (MarkenG), specifically § 14 of the MarkenG, which grants the exclusive right to the owner of a trademark to demand cessation, compensation and damages.
Can a private individual receive a trademark infringement cease and desist letter?
No, using a protected trademark for private use does not constitute trademark infringement. However, be aware that as soon as you embed advertising banners or use partner programs, your presence is no longer considered private and you may be subject to a cease and desist letter. The distinction between private and commercial sales on platforms such as eBay can also be blurry in some cases. If you frequently sell new, similar products that you have recently acquired, you may be considered a trader.
How can I determine if a name is protected by trademark law?
For trademark research, you can search for German trademarks for free in the German Patent and Trademark Office (DPMA) register. If you have or plan to register your own trademark, we can assist you with our trademark service, which includes assistance with registration, similarity research, and trademark monitoring.
Is a demand for destruction of goods justified?
In principle, a trademark owner has the right to demand cessation, compensation, and information about the extent to which income has been generated using the affected trademark, and can also enforce destruction under § 18 MarkenG in connection with a cease and desist letter. This is not only the case for counterfeits, but also for genuine products in certain cases, such as when goods are imported from outside the European Union without the trademark owner's consent.
When is there a risk of confusion between trademarks?
Whether there is actually a risk of confusion between trademarks is often decided on a case-by-case basis. It is not only important how similar the words and images are, but also how similar the goods and services are. The distinctive character of a protected trademark is also important: how long and intensively has the trademark been used? What is the market share? And how high is the degree of distinctiveness? The greater the popularity of an older trademark, the greater the risk of confusion with a new trademark.
Can a trademark be protected even without registration?
Trademark law has its pitfalls, so you may already suspect that the answer is yes. Under specific conditions, a trademark can be protected even if it is not registered. This is the case, for example, when there is exceptional popularity or when the trademark has been used intensively and for a long time in competition - such as the HipHop band "Fettes Brot" or the Linux operating system.
Are there any overlaps between trademark and copyright law?
Yes, in some cases, this can lead to specific legal questions as to which legal situation takes precedence. This can happen, for example, when a company commissions an artist to design a logo without having exclusive usage rights. Even after registering a trademark, copyright law may take precedence.