Your Partner for enforcing intellectual property rights
The acquisition of an intellectual property right grants you a monopole in competition. As proprietor of a property right you have the sole right to use your patented invention, your registered trademark or your registered design. A prohibition of use with respect to the protected subject-matter applies for third parties.
Your Right – what third parties are not allowed
Third parties are not allowed to either produce, offer, bring onto the market, sell, use, apply, import the patented subject-matter or possess for any of these purposes.
Third parties are not allowed to either use the protected mark in general, a similar mark for identical or similar goods or services or use identical or similar marks in total or partially as a trade name or a corporate name or to use in comparative advertising.
Third parties are not allowed to reproduce, produce, offer, distribute or sell the protected form of a design.
Within the framework of a request to show authorization an alleged infringer is asked for which reasons he believes to be entitled to use the protected subject-matter. This step is advisable particularly with respect to protective rights which have been registered without a substantive examination (utility model, trademark, design), since eventually the other party can actually prove a prior right to use, so that your protective right may possibly not be legally valid. Thus, the purpose of an authorization inquiry is to ascertain whether an infringement of a protective right exists at all.
However, if it has already been ascertained that there is an infringement of a protective right and the third party has no prior rights, an authorization inquiry is not necessary.
Cease and Desist Declaration with Penalty
The infringer can (in the case of a real infringement) as a precautionary measure submit a so-called Cease and Desist Declaration with Penalty. With this the infringer declares that it will refrain from a future infringement of your protective right and pay a contractual penalty if an infringement occurs once again.
The Cease and Desist Declaration with Penalty serves the purpose of avoiding a warning letter and the reimbursement of attorney’s fees connected therewith.
If there is an infringement of your protective right and the infringer did not submit a Cease and Desist Declaration, the infringer’s attention will within the framework of a warning letter be drawn to the unauthorized use and requested to submit a Cease and Desist Declaration with a contractual penalty. You can also demand license payments for the future and compensation for the past. Thus the purpose of the warning letter is to legally enforce your interests. The infringer bears the costs for a justified warning letter. If the other party does not respond to the warning letter or denies an infringement of the protective right, one can pursue an infringement trial.
Patent, Trademark and Design infringement trials take place before the District Courts. During an infringement trial you can claim discontinuance, removal, information, inspection as well as compensation respectively.
The right to obtain information is important for the calculation of the amount of compensation and to prevent a further sale. The right to obtain information extends to quantity, nature, and amount of turnover, origin and distribution channels of the goods as well as the names and addresses of manufacturers, suppliers, previous owners, customers and ordering parties. In the case of a trademark infringement one must note that a claim to cease and desist can lapse if the proprietor of a trademark, while being aware of the use, tolerates this use of its trademark by a third party during a consecutive five years. Furthermore, the trademark proprietor can only demand compensation if the infringer was culpable, this means by intent or slight negligence.
Our services in connection with the enforcement of protection rights include:
Development of a strategy for enforcing your interests
Effective formulation of authorization inquiries, warning letters, Cease and Desist Declarations with penalty, license agreements