The IT law firm has received a trademark warning from MV Marketing & Vertriebs GmbH for alleged trademark infringement through a similar use of the “Divina” sign for perfume. According to our research, the trademark is actually registered as a trademark and is in force.
These warnings have existed for years. In the specific case, it was about a very similar designation of the warned goods (“My Divine” for perfumes). So ultimately a case of confusion. In the warning, the addressee is asked to stop using the trademark immediately and to submit a declaration of discontinuance, which is subject to penalties.
The fact is: A protected sign may only be used as a trademark by the trademark owner or authorized third party for the protected goods or services – this also applies to signs that are similar to confusion. Please see this post for more information. But of course there are often several justifiable views, especially when it comes to the risk of confusion.
In any case, the warning should be checked by a specialist, despite the regularly short deadlines – because since trademark law in general and here in particular is about high object values, the financial risk for the person who has been warned is correspondingly high.
Tip for the clients of the IT law firm: In our blacklist, we list the brand terms that have been warned about most recently and thus provide a good overview of the no-go signs – we also point out the classic brand traps in this article.
To ask? – then maybe this can help you:
The 10 most common questions and answers about trademark warnings:
1. Why was I of all people warned?
Many trademark owners monitor their trademarks themselves or through a service provider. If a third party then registers this trademark with the trademark offices or uses this trademark offline or online without being authorized to do so, the monitoring software sounds the alarm and reports the alleged infringement. Of course, in one case or another it is also possible that an unwelcome competitor has reported the violation or the trademark owner was aware of the person who had been warned anyway due to an existing but failed business relationship – whatever: trademarks are registered in order to be monitored.
2. What is a warning?
Strictly speaking, the warning is a gift to the person who has been warned: Because the institute of the warning enables the violator to settle a legal dispute without a court decision – the person issuing the warning gives the violator the chance of an out-of-court settlement – this saves costs. But of course a warning is a hammer at first: financially and actually, because it represents a significant interference in the business activities of the person warned. And yet the warning, provided that it is justified and not abusive, is fundamentally an opportunity.
3. What do they actually want from me?
In a trademark warning, the same claims are usually asserted:
Claim for removal, claim for injunctive relief, claim for information, claim for damages, claim for destruction, claim for reimbursement of costs
If there is actually a violation of the law, all claims are usually to be affirmed – if there is no violation of the law, all (!) claims are rejected.
4. What does the injunctive relief mean for me?
If you have used a protected trademark without authorisation, the trademark owner (or an authorized person) has a claim for injunctive relief against you in accordance with Section 14 (5) MarkenG. This means that the trademark owner can demand that you stop infringing in the future. In order to protect yourself and to ensure the seriousness of your declaration in this regard, a contractual penalty will be specified in the cease-and-desist declaration. Only the submission of a sufficiently punishable cease-and-desist declaration makes the cease-and-desist claim void – for the person who has been warned, this means: He has the chance that by submitting the declaration, the cease-and-desist claim can be eliminated and judicial enforcement can be avoided.
5. Should the attached cease and desist be submitted?
However, since the submission of the declaration of discontinuance leads to a legally binding contract if accepted by the other party, you should pay close attention to what the declaration says:
The declaration pre-formulated by the opposing attorney is inevitably formulated in the interests of the trademark owner and is therefore broadly defined – it is therefore generally advisable to revise (modify) this draft so that the declaration is formulated in such a way that it satisfies the trademark owner’s claims, but at the same time burdens the infringer as little as possible. However. Under no circumstances should the cease-and-desist declaration be violated in the future, as otherwise there is a risk of a not inconsiderable contractual penalty.
6. How much does it cost now?
Brand warnings are expensive – says the vernacular. And that’s true – especially in trademark law:
Anyone who commits a trademark infringement causes the injured trademark owner to commission a lawyer with the warning – the lawyer can and will demand a fee for this. Since the reason for this assignment can be seen in the trademark infringement, the trademark owner has a claim for reimbursement of costs according to settled case law. In addition, the trademark owner is also entitled to a claim for damages due to the infringement of his trademark – the person who has been warned is therefore asked to pay twice.
And how is the payment claim calculated?
The amount of the claim for reimbursement of costs depends on the object value on which the warning is based – this is to be determined by the court in accordance with § 3 ZPO. The interest of the person issuing the warning in the prosecution of the infringing action is decisive for the amount of this value. This economic interest in enforcing claims for injunctive relief due to trademark infringement is determined by two factors:
On the one hand by the economic value of the infringed trademark and on the other hand by the extent and the danger of the infringing action (so-called “attack factor”). In trademark law, a so-called standard value in dispute of 50,000 euros has prevailed in case law, which can of course be exceeded or fallen short of in individual cases. For example, the duration and intensity of the trademark infringement, the sales achieved, the awareness and reputation of the trademark must be taken into account and evaluated separately for each individual case.
For the claim for damages itself, there are 3 types of calculation at the choice of the injured party:
the profit that the infringer lost as a result of the trademark infringement is to be compensated, or the profit made by the infringer is to be surrendered (so-called profit skimming claim) or the infringer can be required to pay a reasonable license fee (so-called damages by way of license analogy).
7. Why do I have to provide information?
In the event of an infringement, the rights holder has a right to information in accordance with § 19 MarkenG – this primarily serves to be able to calculate the compensation. Because the rights holder has no knowledge of the scope of the infringing act. The information must be given truthfully and completely – occasionally a claim for accounting is also asserted – in this case all documents relating to the infringement must be submitted.
8. And the annihilation claim?
There is also that – according to § 18 MarkenG. It plays a particularly important role in cases of plagiarism – here the brand owner has an interest in the plagiarism disappearing from the market and being destroyed once and for all. You can either commission this yourself or the goods will be handed over to the brand owner for destruction.
9. And why is a patent attorney often involved in trademark warnings?
In the case of many trademark warnings, a patent attorney is involved. This has a decisive disadvantage for the person who has been warned:
In addition to the lawyer’s fees, the costs for hiring the patent attorney must then also be reimbursed – the cost burden doubles. This practice is now heavily disputed in case law. Some courts do not consider it necessary to involve a patent attorney in the case of simple trademark infringements and therefore reject a claim for reimbursement. Most recently, the Federal Court of Justice (judgment of May 10, 2012, Az.: i ZR 70/11) stated:
“It does not follow from the fact that in a specific case it is necessary to commission a lawyer with the warning of a trademark infringement that it is also necessary to commission a patent attorney with the warning. If a lawyer alone, based on his knowledge of trademark law, is able to legally assess the case and warn the infringer, the additional involvement of a patent attorney is not necessary. A separate examination is therefore required as a matter of principle as to whether it was necessary to employ a patent attorney in addition to a lawyer order to prosecute for trademark infringement.”
It should therefore be checked carefully whether the involvement of a patent attorney was necessary.
There is more about reacting to trademark warnings here.