Effective

Defense in the

Trademark law.

Trademark disputes can pose considerable challenges for companies. Our experienced team of trademark law experts will provide you with competent support in defending against trademark claims.

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Challenges due to trademark claims

Companies that are confronted with cease and desist letters and claims from a trademark owner face considerable challenges. Not only do they have to overcome legal challenges in trademark law , but they also have to consider the economic impact of these claims. Trademark claims are not always as clear-cut as cease and desist letters would often have you believe.

In cases of non-identical trademarks for identical goods and services, the question always arises as to whether one’s own trademark or commercial designations infringe the rights of the rights holder at all. Whether goods and services and the signs themselves are so similar that there is a likelihood of confusion, for example, is usually by no means clear, but can often be argued in one direction or the other. There is therefore often a realistic chance of successfully defending against such claims.

Even if a likelihood of confusion is assumed, there are ways of attacking the existence of earlier rights, e.g. for non-use, in order to remove the legal basis for attacks under trademark law.

Trademark claims

If you receive a cease and desist letter under trademark law or are already in a legal dispute in court, the following claims are usually asserted:

• Injunctive relief:
  The purpose of injunctive relief is to effectively prevent further acts of infringement. The infringer must refrain from using the trademark (or signs that can be confused with it) in the future. This claim is fulfilled out of court by submitting a cease-and-desist declaration with a penalty clause.
• Removal claim:
  The removal claim serves to eliminate existing infringements of rights or their consequences. The infringer must ensure that the infringement is removed, e.g. by removing infringing advertising or by recalling and destroying infringing goods.
• Claim for damages:
  The trademark owner can use the claim for damages to assert the damage caused by the trademark infringement. The damage can be calculated in various ways, e.g. by the loss of profit, a reasonable license fee or the infringer’s profit. For an average trademark, the damages by way of license analogy are usually between 1 and 5 % of net sales, but can also be significantly higher for well-known trademarks.
• Information and accounting claims:
  The information and accounting claim serves to determine and quantify the damage and provide information about suppliers and customers who may have committed infringements. The infringer must provide detailed information on the type, scope, duration, turnover and profit from the infringement and render accounts. The infringer is obliged to provide supporting documents such as invoices, delivery bills and orders so that the information can be verified.
• Destruction and recall claims:
  The infringer must ensure that no further trademark infringements occur and must therefore recall the products and advertising materials from the distribution channels and destroy them, insofar as this is necessary to eliminate the trademark infringement.
• Reimbursement of costs of the cease and desist letter:
  The claim for reimbursement of costs serves to relieve the trademark owner who takes action against an infringer of his laws by allowing him to demand reimbursement of the associated costs (e.g. lawyers’ fees, test purchase costs) from the infringer in the event of a justified cease and desist letter.

Effects of these claims for the defendant

Trademark claims have significant implications that not every company is readily aware of when they are confronted with these claims from a trademark owner in a cease and desist letter or. The consequences can be considerable.

• Conversion costs:
  If companies have to change the labeling of goods and services due to injunctive relief and removal claims, this is usually associated with considerable costs. Goods, advertising materials and domains with the offending labeling must be removed and replaced by those with the new labeling. This can lead to very high costs and usually also means that advertising investments in the labeling that is then to be omitted were in vain and marketing has to start all over again.
• Business interruptions:
  A ban on the use of commercial designations, especially if they are company designations, can lead to business interruptions, as economic activities cannot be continued with the sign to be prohibited.
• Reputational damage:
  Trademark disputes that become public can cause lasting damage to a company’s reputation. The same applies if commercial customers are also confronted with trademark claims. Customers’ trust can be lost, especially if there is an accusation of deliberate infringement of third-party trademark rights.
• Information and invoicing:
  The information to be provided to the trademark owner is very extensive and includes the disclosure of business relationships as well as the submission of invoices and other internal documents. This can have a lasting negative impact on these business relationships, especially as commercial customers can also become the focus of trademark law claims and can then assert recourse claims.
• Legal costs and claims for damages:
  The amount of damages is based on the loss of profit of the trademark owner, a reasonable license fee or the profit made by the infringer. Depending on the constellation, considerable amounts can be incurred here, which, in the case of justified claims, are added to the cease and desist letter and procedural costs, which are also not insignificant.
• Recall and destruction costs:
  Companies may be obliged to recall and destroy products that have already been produced and are in circulation if they infringe trademark rights. This not only leads to direct financial losses, but can also affect customer confidence.

How we defend our clients against trademark claims

We check whether and to what extent trademark claims asserted against you actually exist. We examine all possible defenses and identify the options that make the most legal and economic sense for you. We then develop targeted strategies to defend against trademark claims in the best possible way or, if a defense does not appear possible, to limit the economic consequences in the best possible way. Our law firm offers you a range of services specially tailored to the defense against trademark claims and cease and desist letters:

• Examination and analysis:
  We analyze the validity of the claims made against you and examine whether a trademark infringement has actually occurred. We also check the legal status of the opposing trademark rights.
• Strategic advice:
  Based on our analysis, we develop a tailor-made defense strategy to defend against claims in the best possible way.
• Negotiation with the other party:
  We take over the communication with the cease and desist letter in order to reach an out-of-court settlement and represent your interests in the best possible way.
• Preparation of protective briefs:
  In the event of impending interim injunctions, we prepare protective briefs in appropriate cases in order to prevent the issue of an interim injunction without an oral hearing.
• Representation in court:
  Should a legal dispute arise, we will represent you competently in court.

Our expertise – your advantage

Our law firm has many years of experience in trademark law disputes in and out of court. We know the possible defense strategies to achieve the best possible economic result for you. Our specialized lawyers combine sound legal expertise with practice-oriented strategies to resolve even difficult disputes in the best possible way. You benefit from this:

• Legal expertise:
  Regular training and an intensive exchange within our professional network ensure that we are always informed about the latest developments in trademark law.
• Experience before courts nationwide:
  We have successfully represented our clients before EU trademark and trade mark courts for many years. We therefore have a wealth of experience in the adjudication practice of courts and the approach of authorities.
• International network:
  We have a strong international network and work with law firms worldwide to assist you with cross-border or purely foreign-related disputes.
• Individual support:
  We provide you with individual support and develop customized solutions that are precisely tailored to your needs and specific requirements.
• Success-oriented action:
  Our aim is to consistently defend ourselves against unjustified claims and to enforce the best economic solution for you in the event of justified claims.

Our team

in trademark law

 

Dr. Markus Wekwerth

 

Helene Klassen-Rock

 

Roxana E. Balmes, LL.M.

 

Daniel Loncar

 

Clemens Pfitzer

 

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No use of the trademark for disposable deposits

 

Putin and public morality in trademark law