admonition:

By admonition, one understands the out of court assertion for the cessation of the violation. Admonitions have a special meaning, particularly during the contention process and in addition are usual practice in trademark disputes as they serve to demand cessation of the violation and suggest the threat a lawsuit.

What really behind an admonition is that it serves to show the violator what the law says in regard to what he is doing and can potentially save the violator from an expensive lawsuit. Recently, and particularly with regard to the Internet, admonitions have fallen into disrepute. Admonitions, as a safety device, require a statement from the violator that he will not repeat the injury and that a penalty must be paid, if he does. This ensures the possibility for future claims for damages. Therefore through an admonition, an opportunity is provided to regulate the situation in a friendly and favorable way, despite any injuries that may have occurred.

Frequently, the one who receives the admonition is irritated due to the fact that the rightful owner of the brand, also requests the violator to take over those legal costs that have been incurred through the admonition. Depending upon the value of the litigation, legal costs can range between 500,00 EUR to 2.000.00 EUR and when a patent lawyer is engaged, that amount can double. If the value of the litigation is, for example, 10.000.00 EUR, the costs for the lawyer are 450.00 EUR and with a litigation value of 25.000.00 EUR, 650,00 EUR. In brand litigation cases, in particular, it is not uncommon for the value of the litigation to exceed 250.000.00 EUR for well-known brands. The legal costs of the admonition alone are almost 2.000.00 EUR. That appears to be quite a lot, but through the admonition, the violator is saved the later costs of a litigation process, which in that case would be over 14.000,00 EUR.

It is not uncommon that larger companies abuse the use of admonitions in combination with excessively high litigation values. They do this to consciously scare the readiness of the opposing party from proceeding. With the risk of litigation costs of over 25.000.00 EUR, one quickly loses the courage for going ahead with litigation, even if one actually has a good chance of success. Larger companies usually have special cash accounts for such legal proceedings, whereas smaller firms do not. For this reason alone, it is of great importance that before one uses a name for goods or services, even if only for an Internet domain, that one examines existing rights and avoids using distinguishable names, or characteristics. Generally, the proof of the abuse does not have to be done.

In the predominant majority of the cases, however, it is the trademark owner's responsibility to protect their mark from watering. In a trademark dispute, if one does not want to immediately proceed with a lawsuit, then an admonition is the correct way to bring about a solution quickly and out of court. Who carries the costs of the admonition, comes under the jurisdiction of the 'Geschaftsfuhrung Ohne Auftrag', which means 'management without order'. Because the rightful owner of the brand refers the violator to his existing rights, the violator is then obligated by law to respect those rights. Through his actions of managing the violator, the rightful owner of the brand is saving the violator an expensive lawsuit. According to Paragraph 683 of the German Civil Code, (BGB) the rightful trademark owner can request from the violator that he be reimbursed for his legal fees.

If the violator is of the opinion that the demand to cease his use is warranted, he will submit to the admonition. Here, it is important that the contractual penalty in the case of a renewed violation becomes effective. If written proof is present, this penalty becomes effective without having to examine the previous underlying trademark laws. One must consider this, before one signs such a declaration to cease use, because the contractual penalties are often no less than 5.000,00 EUR and are therefore dealt with at the regional courts level. If the violator should hurt the existing rights again, even if it was only by accident (but with negligence) for example on a hidden web page, then this contractual penalty becomes due. It is also often possible, to go on continuing to collect the contractual penalty in such cases like a publicity campaign, where the injury is repeated many times. Therefore, a great amount of caution is required, when signing such a declaration to cease use.

The admonition usually comes in writing in order to later be used as evidence in a legal proceeding. Although it is not mandatory, if it is written by a lawyer, a power of attorney should be attached. According to Paragraph 174, of the German Civil Code (BGB) it is still a contentious issue as to whether the one who receives the admonition, without the power of attorney attached, can insist upon it. To avoid any controversy and unnecessary time delays, the lawyer should, in each case, attach such a power of attorney. To avoid any misunderstanding, we point out again that an admonition is not a requirement for a later lawsuit. It only serves firstly, to avoid the cost risks of Paragraph 93 of the Civil Proceedings Regulation (ZPO) in case of an immediate acknowledgement and secondly, to save costs for the opposing party. With an immediate acknowledgement ("I won't do it again, the plaintiff could have told me beforehand.") the court can impose the costs upon a hasty plaintiff in some circumstances, even if he was actually in the right.

As opposed to the German Competition Law, if you send an unwarranted admonition out into the commercial sector, then the defending party can claim back his legal costs. Basically, the cost of the defense of an unwarranted admonition is not reimbursable in a competition offence, neither from the legal criterion of the 'management without order', nor from the influence of established and practicing businesses. However, in Trademark disputes, something else applies with regard to an unwarranted admonition. It is illegal to send out an admonition to a manufacturer or a customer, even if you believe that he is violating your patent or brand rights, unless you have legal reasons. Therefore, if a lawyer is needed in order to defend oneself against an unwarranted admonition, these costs can be claimed back. This claim for reimbursement is based on Paragraph 823, Clause 1, of the German Civil Code (BGB) under the criterion of the influence of established and practicing businesses.

print                 top

a service provided by:

www.kanzlei-flick.de
Colonnaden 18
20354 Hamburg

For any comments please send an e-mail .