Copyright warnings are an integral part of the protection of intellectual property. Under German law, the party issuing the warning has the right to defend themselves effectively and swiftly against trademark infringements, just as the party receiving the warning has the right to defend themselves against unjustified complaints. Such a warning letter against unauthorised imitations of intellectual property usually contains a cease-and-desist declaration and damages claims. Both for the legal validity of a warning letter and for the defense, it is decisive whether the warning letter is precisely formulated, legally correct and based on an actual infringement.
Reasons for a Warning Letter in Germany
A warning letter may be issued if protected logos, names, or symbols are used or registered design rights are infringed. In the case of registered design rights, owners have the exclusive right of use for a specific design or appearance. They can also be sent to those who sell, distribute, import or export infringing products without permission – i.e. products that are unlawfully labelled with a trademark or design.
Warnings can also be issued for IP and trademark infringements under German competition law. For example, if the competition misleads about the product’s origin through disingenuous advertising, breaches of information obligations, unauthorized customer reviews, or unfair sales practices.
If you are concerned that your product or trademark is being imitated without authorization, it is essential to secure evidence immediately. Contact our lawyers to discuss the appropriate course of action from the outset. It should also be noted that sending warning letters for IP and trademark infringements in Germany without legal guidance can be complicated. Formal requirements for a legitimate warning are strict, and they can be deemed ineffective in case of violations. In addition, the person being warned may be able to claim compensation for their legal fees under German law if they receive an ineffective warning. Our lawyers are highly familiar with the formal requirements of issuing warning letters in Germany and will draft a legally compliant warning letter for you.
Consequences of a Warning Letter in Germany
A lawful warning leads to immediate legal consequences. The person being warned is obliged to cease and desist the infringement immediately. A legally binding declaration to cease and desist must also be submitted in this context. Such declarations are regularly subject to high fines in the event of a breach. If a cease-and-desist declaration is not submitted, an interim injunction can be obtained against the person being warned. Furthermore, the warning party can demand compensation for lost profits and the reimbursement of legal fees for the warning.
The warning party can also demand information from sellers of unauthorised imitation products as to who manufactures the products and for the products to be handed over or destroyed under supervision. Anyone selling unauthorized imitations must also expect not only civil but also criminal consequences. The German Trade Mark Act (§ 143 MarkenG) and the German Copyright Act (§ 106 UrhG) impose fines and prison sentences of up to three years. A much higher penalty may be imposed if offences under the German Criminal Code (StGB) are committed. Such penalties may include criminal liability for fraud under § 263 StGB and § 259 StGB for receiving stolen goods or even for assault under §§ 223 et seq. StGB if the counterfeit product is dangerous and causes bodily harm or damage to the user’s health.
Defense Against Unjustified Warnings: How to Proceed
IP and Trademark infringement warning letters in Germany are often intimidating, represent a financial burden, and frequently require immediate legal assessment. If you have received a warning letter, it is imperative not to act rashly or ignore it. As mentioned above, the consequences of a legitimate warning letter are far-reaching. However, hastily signing a cease-and-desist declaration can also put you in a disadvantageous position. It is not uncommon for accusations of infringements of intellectual property to be unjustified; warning letters should, therefore, be scrutinised carefully.
Our first step is to examine the content and form of the warning letter regarding its validity. This examination includes checking whether there is a sufficient basis and available evidence and whether the formal requirements are met. A warning letter that does not fulfil the formal requirements is invalid according to § 97a (2) sentence 2 UrhG. It is then necessary to assess the allegations and the legal situation and conduct a risk analysis. If the warning is unjustified, our team will draw up a comprehensive counterstatement or rebuttal to the other party. In special cases, we can even examine whether there are any claims against the warning party. Such a scenario can arise if the warning letter that was issued was abusive and intended to harm the warned party.
It is also possible to minimise the consequences in the event of a wholly or partially lawful warning. As a multidisciplinary German law firm, we have the necessary expertise and extensive experience to negotiate effectively with the opposing party, to reduce claims for damages and contractual penalties and modify the existing cease-and-desist declaration in your favour.
Our lawyers at Schlun & Elseven Rechtsanwälte stand firmly by your side. We will conduct negotiations with the other party on your behalf or represent you in a German court if the other party is unwilling to reach an agreement. We are also happy to develop prevention strategies with you and advise you on the extent to which legal disputes can be prevented – be it by obtaining licences or permissions or by correctly labelling copyright-protected content. Our legal team will work with you to develop a customised solution that best protects your interests.
Practice Group: German Intellectual Property Law
Practice Group:
German Intellectual Property Law
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