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Reasons for a warning in intellectual property law

Have you received a cease-and-desist letter in the field of intellectual property rights and are confronted with a cease-and-desist declaration and high cease-and-desist fees?

warning in intellectual property law
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Then you should act promptly to have the legality checked and, if necessary, take action against it.

What are the reasons for a warning in intellectual property law and what are the legal consequences? We have summarized the most important information for you.


1. Reasons for a warning letter: What is industrial property protection?
2. The purpose and legal consequences of a warning in intellectual property law
3. What you can do

1. Reasons for a warning letter: What is industrial property protection?

Intellectual property is a collective term for various areas of law that deal with intellectual performance or the intellectual property of trades. Essentially, these areas of law as well as the corresponding laws and regulations are part of industrial property protection:

  • Trademark law
  • patent law
  • competition law
  • design law
  • Utility model law

The following reasons, among others, can be derived from this for a warning letter in intellectual property law:

  • Warning in trademark law
  • Warning in patent law
  • Warning in competition law
  • Warning in design law
  • Warning in utility model law

Reasons for a warning letter in trademark law

It is primarily trademark owners who are increasingly controlling the use of their patented trademarks. This applies in particular to online retailers who use protected trademarks without the trademark owner's permission.

Anyone who receives a warning letter under trademark law is accused of having gained a competitive advantage through the use of a protected trademark. In this respect, the warning letter is also to be understood as a request to cease and desist the trademark infringement.

Reasons for a warning in patent law

Section 9 of the German Patent Act (PatG) specifies when a patent infringement has occurred. Patent law protects new technical inventions whose use is limited exclusively to the patent holder.

Without the consent of the patent holder, third parties are prohibited from offering, using, placing on the market or manufacturing a product that is the subject of a patent. The same applies to the use of processes that are the subject of a patent or to the manufacture of products using a process protected by patent law.

A patent application focuses in particular on the financial benefit to which the inventor or developer of the technical invention alone is entitled.

Reasons for a warning in competition law

Many companies are affected by warnings in competition law during the course of their existence. They are issued by competitors, certain associations and competition associations.

Examples of possible reasons include misleading advertising with test results or company locations or the offer of imitations. In fact, it is mainly online retailers who have to contend with warning fees.

A warning letter in competition law often has the function of settling a dispute out of court. In this respect, it is in the interests of both the party issuing the warning and the party being warned.

Reasons for a warning in design law

If a design is registered as a design patent, it may fall under industrial property rights. This applies to the shape and coloring of products.

A warning for design infringement is justified if the original design is new and the new design infringes the original design.

If a different design is used that gives the overall impression of being similar to the patented design, a warning letter under design law may be issued.

Reasons for a warning in utility model law

Utility models protect technical inventions, including chemical substances, medicines and foodstuffs. Processes, for example manufacturing and working processes as well as measuring procedures, are excluded from protection under patent law.

As with design law, warnings are also issued in the case of utility model law because both are unexamined property rights. This means that they are registered by the patent office without official examination as to their novelty or inventive step.

This is the responsibility of the respective inventor, who, however, usually spares money and time, which can lead to duplication.

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2. The purpose and legal consequences of a warning in intellectual property law

The purpose of a warning letter in industrial property law is to pursue infringements of competition law or to assert property rights.

These are the legal consequences of a warning letter:

  • The person being warned is requested to cease and desist his behavior by submitting a cease and desist declaration.
  • The request is accompanied by a notice to pay warning fees.
  • The cease-and-desist declaration regularly contains the obligation to pay a contractual penalty in the event that the warned party repeats the cautioned action.
  • The warning party can assert a claim for damages against the warned party.
  • The warning party can demand information about when and to whom the warned act was committed.

3. What you can do

As a first step, you can have the legality of the warning letter checked by a lawyer who specializes in intellectual property rights. It must meet certain formal and substantive requirements.

There are other good reasons for checking the legality of a warning letter:

  1. It is not uncommon for warning letters to be sent by the party issuing the warning without checking their own legal position.
  2. It is also very common for warned parties to issue cease-and-desist declarations without, for example, checking the content and formal requirements of the warning.

Both types of behavior have consequences for both the person issuing the warning and the person being warned:

An unjustified warning in the form of an IP right warning is an interference with the so-called established and exercised business operations of the warned party. This means that, conversely, the person being warned can assert claims against the person issuing the warning.

Picture credits: © Jirsak / PantherMedia

Marco Bennek
I started working as a lawyer in 2006 and have been advising clients in competition and trademark law for more than 10 years. Since June 2015 I have been a specialist attorney for industrial property rights and since May 2013 a partner in the firm of HELMKE Attorneys at Law and Tax Advisors and Patent Attorneys. I studied law in Hamburg, Madrid, and Wellington (New Zealand) and hold a Master of Laws (LL.M.).
Rechtsanwalt Marco Bennek
Lawyer Marco Bennek – trademark law, copyright, competition law and IT law in Hamburg
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