Litigation and Court Action

The specialist qualifications of an attorney are one of the factors influencing the successful or unsuccessful outcome of litigation. In the protection of industrial property rights legal knowledge must be supplemented by an understanding of the technical complexity of the lawsuit.

The interests of the client can best be represented by an attorney with a grasp of the technical background to the dispute, who is thus in a position to make the often complex factual circumstances understandable to the judge.

A temporary injunction is an important instrument for the rapid and systematic enforcement of a protective right. The seeking of a temporary injunction requires rapid action to be taken, for which the relevant experience is crucial.

Experience is also needed to ward off a temporary injunction by filing the requisite letters of protection with the courts concerned in which the essential points refuting the need for the issuing of a temporary injunction are laid down.

In providing defence against an infringement action it is important for the attorney to have both precise knowledge of the legal issues at stake and an awareness of the technical background, in order to work out a balanced defence strategy.

In the case of legal action before a court it is often - but not always - advisable to bring about a formal caution so as to halt the legal infringement without initiating legal proceedings. The person affected can generally demand the reimbursement of the costs incurred in the issuing of a warning. The threat of a repeat infringement can mostly be dispelled by the issuing of a cease-and-desist declaration carrying a penalty.

The person affected can demand information and the payment of compensation, for instance in the form of lost profit or a retroactive fictitious licence fee, as it is called.

Anyone wrongly cautioned can review the possibility of a counter-caution.

The attorneys at the law firm of Gulde & Partner advise and represent their clients in the prosecution of infringements and the enforcement of protective rights as well as in the provision of defence against utilisation, unjustified cautions and attacks.

Gulde & Partner provides the combined competence of patent attorneys and attorneys-at-law with a specialised focus on the protection of industrial property rights.

FAQs Website – Warning Letter

What is a warning letter?

A warning letter is a letter in which, for example, a rights holder (e.g. a patent, trade mark or design holder) objects to an infringement of their rights. The aim is to demand that the – alleged – infringer cease the infringement immediately and in future, thereby avoiding a costly legal dispute in court.
Typically, a warning letter contains

a description of the alleged infringement (e.g. patent or trade mark infringement, breach of competition law);
a request to submit a cease-and-desist declaration subject to a penalty, which is often pre-formulated;
a – usually quite short – deadline for submitting the cease-and-desist declaration;
a quantified claim for reimbursement of legal costs;
claims for damages, where applicable.

What is a so-called “warning letter firm”?

The German term “Abmahnkanzlei”, i.e. “warning letter firm” is not a legal technical term, but is used colloquially to refer to law firms that regularly send out large numbers of warning letters in the field of intellectual property law and, in some cases, also pursue “minor” infringements.

Typically, such firms represent holders of large portfolios of rights – e.g. holders of exploitation rights to film and music works (the well-known file-sharing cases) – or pursue breaches of labelling obligations in e-commerce.

Law firms such as Frommer Legal, Fareds, rka or Schulenberg & Schenk are frequently mentioned in this context.

Important: Even if a law firm frequently issues warnings, this does not automatically mean that the warning in question is unjustified.

How should I respond if I receive a justified warning letter?

If the warning letter is justified – meaning you have actually committed the infringement and are liable for it – you should proceed calmly and strategically:

Strictly adhere to deadlines: The deadlines set are often short and should be taken seriously, particularly the deadline for submitting a cease-and-desist declaration.
Do not sign anything without checking it first: Despite the short deadlines, pre-formulated cease-and-desist declarations should not be submitted without further consideration, as they are usually worded more broadly than necessary – in favour of the party issuing the warning.
Cease the infringement immediately: For example, remove infringing content, products or advertising as soon as possible.
Consult an attorney: You should always consult an attorney specialising in intellectual property law. Even in the case of a justified warning letter, they can often challenge overly broad cease-and-desist declarations or excessive claims for costs. We would be happy to assist you in this matter.

How should I respond if I receive an unjustified warning letter?

If, on the other hand, the warning letter is unjustified – i.e. if you have not committed any infringement or if this is at least doubtful – the following applies:

Do not ignore it: Even an unjustified warning letter must not be ignored, and you must not simply allow the deadlines set to pass. Otherwise, for example, a court may issue a preliminary injunction against you without you being further involved in the proceedings.
Consult an attorney: Particularly in the case of unjustified warning letters, the assistance of a specialist attorney is essential to avoid costly mistakes. They will assess the validity of the claims made in the warning letter and work with you to find the best solution. We would be happy to assist you in this matter.
Possible counterclaims: An unjustified warning letter may mean that you, in turn, have claims against the party issuing the warning. In particular, you may be entitled to reimbursement of your legal fees or to an injunction (for example, against the sending of warning letters to your customers).
Responding: As a general rule, you should respond in writing to an unjustified warning letter and reject the claims made, providing appropriate grounds for your response. Where appropriate, you may also assert counterclaims in your reply – which should ideally be drafted by an attorney.

In addition, it may be advisable to have your lawyer file a so-called protective brief in the German register of protective briefs. In a protective brief, you explain to a (German) court the reasons why the claims asserted in the warning letter are unfounded. Should the party issuing the warning letter apply for a preliminary injunction against you, the competent court will retrieve the filed protective brief. This allows you to ensure that no preliminary injunction is issued without your arguments being heard by the court.