Pursuing trademark infringements

Pursuing trademark infringements

There are numerous options open to the proprietor of a trademark to pursue alleged infringements.

1. Cease and desist

The rights granted to the proprietor of a trademark under § 14 sub-paragraph 1 German Trademark Act are personal and exclusive. Where a third party uses the trademark, or where the likelihood arises that confusion could be caused by a new trademark, the proprietor of the older trademark may require that person to refrain from using the trademark in questions. This right can be exercised not only where an infringement has already been committed, but also to obviate the occurrence of a threatened infringement (§ 14 sub-paragraph 5 Trademark Act).

In practice the proprietor often requires from the infringer the submission of a declaration to cease and desist underpinned by a contractual penalty which becomes due should the infringement occur.

It is customary to send a warning letter to the alleged infringer with a copy of a pre-formulated declaration to cease and desist attached.

As a signed declaration to cease and desist is essentially a contract between the injured party and the infringer, there can be lasting consequences, should the declaration be inadequately drafted. The declaration should be adapted to suit each individual case and, where it is required, it should be preventative. As a result, it is advisable to seek legal advice before seeking to obtain redress from an infringer by demanding a declaration to cease and desist.

2. Compensation

Under § 14 sub-paragraph 3 Trademark Act the proprietor of a trademark can receive compensation where an infringement is intentionally or negligently committed.

Where the proprietor claims compensation, there is a choice of three bases for assessment of damages to be rewarded. The proprietor can claim either:

    • compensation for the amount of damage caused; or
    • for the infringer to account to the proprietor for the profits obtained; or
    • a reasonable amount which would have been obtained had a licence been granted

We would be happy to advise you on which measure of compensation would be most beneficial in your case and to help you to assert your rights.

3. Destruction and re-call

Where the infringement of a trademark occurs, the proprietor of the trademark has the right under § 18 sub-paragraph 1 Trademark Act to require the infringer to destroy all goods, products and equipment in his possession which infringe the trademark. It is also possible to enforce this right against third parties which hold the goods on behalf of the infringer.

Paragraph 18 Trademark Act was extended in 2008 to include the right to require illegally-identified products to be re-called and for their permanent removal from sale (§ 18 sub-paragraph 2 Trademark Act).

4. Right to disclosure

Under § 19 Trademark Act the proprietor of a trademark has a right to obtain information concerning the infringement from the alleged infringer. This right can be used to prepare a claim. Under this paragraph the infringer must divulge information on the origin of unlawfully-identified goods or services and the channels through which they are sold. The infringer must also disclose the price and amount of products or services sold.

Where a manifest infringement has occurred, the right to information can be asserted by means of an injunction (§ 19 sub-paragraph 7 Trademark Act).

Any claims must be brought within the limitation period. Furthermore a proprietor can also forfeit his rights of enforcement in certain circumstances (§ 21 Trademark Act). The consequence of this is that the proprietor of a trademark can no longer claim against an infringer.

To prevent your proprietary rights from becoming restricted, it is advisable to seek early legal advice to thoroughly assess your position.

Would you like to register a trademark? Do you have general questions about trademark law? We are here to help.

German lawyer Kilian Kost and the expert team at WILDE BEUGER SOLMECKE are available to answer your questions. Call us on +49 (0) 221 / 951 563 0.

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Christian Solmecke is a partner at the law firm WILDE BEUGER SOLMECKE. He is the author of numerous legal publications in the area of internet and IT law. He is also an associate lecturer for social media law at the Cologne University of Applied Sciences.

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