Trademark Cease-and-Desist

As a general rule, only products that the trademark owner itself has put on the market may be marked or advertised with the respective protected trademark. This is referred to as trademark exhaustion. Without a license agreement or other consent from the trademark owner, using a protected trademark can constitute trademark infringement. Using a protected trademark without the rights holder's consent qualifies as trademark infringement under Section 14 of the German Trademark Act (MarkenG).

In the field of trademark cease-and-desist letters, a whole series of hurdles must be cleared for a warning to be legally valid. For example, there must be trademark use in the course of trade. This is where the assessment needs to begin. Not every cease-and-desist letter holds up to this scrutiny.

Acting in the Course of Trade?

Many recipients of cease-and-desist letters are targeted over a private listing made through a personal account on eBay, eBay Kleinanzeigen, or similar platforms. While not everything that appears private at first glance is actually private in the legal sense, the party issuing the cease-and-desist letter may well be mistaken about the scope and extent of the activity — meaning there may in fact be no use in the course of trade at all.

An individual case assessment is always necessary. Experience has shown that not every trademark cease-and-desist letter that appears justified at first glance actually holds up to closer scrutiny.

Trademark Use

Alongside the question of a likelihood of confusion between the opposing signs — whether through identity or similarity of the signs — particular attention must be paid to one decisive point: trademark use. This requires that the specific act of use is capable of impairing one of the functions of the trademark (Federal Court of Justice, judgment of 11 April 2019, I ZR 108/18 – Damen Hose MO; CJEU, judgment of 8 July 2010, C‑558/08). Whether the trademark is used, from the perspective of the relevant public, to distinguish the origin of the product, and whether it is capable of impairing one of the trademark's functions, must be determined with regard to the labeling conventions of the relevant product sector (Federal Court of Justice, judgment of 11 April 2019, I ZR 108/18). There is no trademark use where the sign protected as a trademark is used purely for descriptive purposes (CJEU, judgment of 18 June 2009, C‑487/07 – L'Oréal/Bellure).

DREGER IP LEGAL – Specialist Lawyer for Intellectual Property in Düsseldorf

Benefit from my years of experience in competition law, trademark law, and copyright law. My track record defending against hundreds of cease-and-desist letters allows me to develop the best possible defense strategy for you. The party sending the cease-and-desist letter is represented by experienced lawyers. With my help, you level the playing field!

First Steps When You Receive a Cease-and-Desist Letter

• Don't take any hasty action!
• Don't contact the party who sent the letter!
• Pay attention to the deadlines in the letter!
• Don't sign anything or make any payments!
• Contact a specialist lawyer

Take advantage of my offer for a free initial assessment. I'm happy to advise you on this matter. Feel free to send your cease-and-desist letter by email to info@dregeriplegal.de. I will get back to you as quickly as possible with an initial assessment.

My Offer

• Free initial assessment nationwide
• Representation nationwide
• Assessment by a highly specialized attorney
• Fast and straightforward communication by email

You can find my contact form here!