Trademark infringement:
The warning letter

A warning letter under trademark law is a request by a trademark owner to a third party to refrain from using its protected trademark or a sign that could be confused with it.

The warning letter is an attempt to reach an out-of-court settlement in order to avoid a legal dispute (injunction, injunctive relief).

A warning is justified if third-party trademark rights are infringed. This is the case if the trademark is used in the course of trade without the trademark owner's consent or if there is a risk of confusion.

If a trademark owner discovers an infringement of their trademark, the suspected trademark infringement must first be documented, as a comprehensible justification and presentation of the trademark infringement is a prerequisite for being able to successfully enforce a cease-and-desist claim in court if necessary.

The cease-and-desist declaration with penalty clause

In order to protect the trademark owner from repeated trademark infringements, the warned company is requested to undertake, subject to penalty, not to use a certain sign in connection with certain goods or services in future and to pay a fixed or yet to be determined contractual penalty in the event of future infringements of this cease and desist order (cease and desist declaration subject to penalty).

The aim of the cease-and-desist declaration with penalty clause is to efficiently prevent future trademark infringements without the need for legal assistance.

In connection with the warning letter, the trademark infringer is usually also requested to provide information on the nature and scope of the trademark infringement, including details of the contractual partners, distribution channels and the turnover and profits generated by the infringing activity (right to information).

This information is used to determine the amount of the claim for damages, which the trademark owner can demand from the trademark infringer in addition to the costs of issuing the warning letter.

Very short deadlines of just a few days are usually set for issuing the cease-and-desist declaration in the case of warnings under trademark law, as the trademark owner wants to keep open the possibility of having the trademark infringement provisionally stopped by way of an interim injunction if necessary.

Warning letters should be taken seriously, as ignoring them or reacting incorrectly can result in considerable costs. It is advisable to have the warning letter with the accusation of trademark infringement checked by a lawyer before reacting. It is also possible to submit an adapted cease-and-desist declaration.