Cease & Desist Letter Received

You need to employ a solicitor with commercial expertise to write the answer for you as potential for damages far outway the cost of a solicitor

Not sure if Registered is the same as trademark, maybe BYRE another poster and expert on germany can advise

Tell them you voted leave on Brexit

Check with your solicitor, but I believe that it is important to highlight that you did not manufacture these and you bought them from a legitimate supplier. That you no longer stock the item and that it was a low volume item anyway.

Personally I wouldn't bother with a solicitor at this stage, I 'd just write back, tell them you're just a small online retailer that's sold no more than 3 of these things, that you have none in stock and stopped selling them months ago. You don't make them and you had no idea it was anyone else's brand.

Just make yourself look too insignificant to bother with. They have costs too and won't want to waste time and money on someone that doesn't have any to give them.

You could consider grassing up your supplier, they're probably more interested in him than you.

There may be a bigger carrot at the end for the German side
10 years ago an import consignment of tracksuits were sized at a warehouse in Taunton there were only 8 boxes .
The authorities were keen to find who was on the UK side as this took them to the main EU distributor

This maybe one of the roads to getting at your supplier who they may already know about

The potential plaintiff has to jump through many, many hoops before he/she/they/it can get any kind of court order enforced in the UK. In other words, they are probably whistling Dixie!

I have a paper on this subject and will dig it out, but I am being dragged away on business right now, so my full reply has to come later.

OK - here goes -

What is totally unclear from your OP is what the hell it is that you are selling. IF you are selling perfectly legitimate and original products made by this manufacturer, then you can tell them to go to hell. They are trying it on!

(It may be that they have exclusive main dealers for every area and they seek to protect these areas and your selling of their stuff has come to the attention of their local UK dealer and now they want to put the fear of God into you. As I do not know what it is that you are selling, this remains just a guess!)

What they are after is counterfeit goods and if that is what you are selling, you may (if they go the whole hog) be for the high jump. That is a criminal offence! German companies are extremely litigious - they take people to court just for fun and/or to prove a point!

Without having seen this letter (obviously!) I cannot give you a definitive answer, but it sounds like an initial out-of-court last reminder. If you do not respond to an out-of-court reminder (similar to the English 'Letter Before Action') the potential plaintiff can apply to the responsible court for an official reminder pursuant to paragraph 692 of the German civil code. The court does not (at this stage) examine the case, but merely sends the reminder.

The German courts ONLY send via the Bundespost (federal post office) and the franking stamp and registered delivery have legal status, in that you would be required to act within a certain time after the date. This would be a so-called 'Yellow Letter' because it once was printed on yellow paper. It will be sent to the official address of your company.

If you receive such a letter, you should object immediately if the claim is unfounded, because your opposition forces the court to examine whether the claim exists at all.

Most claims fall at this hurdle because (if the defendant objects to the claim) the plaintiff has to pay all initial court costs in advance.

If you reply to the letter, objecting to the claim, the plaintiff has to stump up court costs to pursue the matter. If you do nothing, the next thing will be a judgement by default.

You can nip this nonsense in the bud by simply replying that you object to the claim, as it is speculative, vexatious and totally without substance or merit and any injury to their trademark (or whatever it is that they are claiming damages for) should have been filed with the English courts as it falls outside of the jurisdiction of the German legal system.

You must point out that you have not traded in Germany at any time and the plaintiff has suffered no genuine loss i.e. the plaintiff has to go to the defendant and cannot just file a case in his home town.

If the plaintiff decides to pursue the claim, here's an outline of what the plaintiff must do to gain title in the UK (this is for the benefit of those of you playing 'The Home Game' and for the Beagles amongst us who like to count the numbers of angels on the head of a legal pin!)

Firstly, they must gain title in their local jurisdiction, i.e. win the case and thereby obtain an enforceable court order.

English law implemented EU Directive 74 (enforcement of judgements in different jurisdictions) on 10 January 2015. In general, the changes have simplified the enforcement procedure and the procedures are less time-consuming and cost-intensive. The reality, however, is that it continues to take a long time for the judgements to be registered and for a corresponding instrument to be issued.

Unlike judgements issued before January 2015, where various documents have to be obtained, the creditor must now 'only' obtain a certificate from the court of origin in the standard form set out in Annex 1 to the Brussels Directive, which proves that judgement is final.

Information about the judgement as well as details of interest and costs must also be included. The plaintiff must submit to the executing authority for enforcement a certified copy of the judgement and the deed of the court of origin. The said authority will require a certified translation of the instrument or judgement, completed by a registered court translator. Nearly always the certified translation of the entire judgement is required. In complex contentious litigation, this can easily be more than 30 or 40 pages of text, which means significant translation costs.

The creditor must submit the instrument and the judgement to the person liable for enforcement, together with a translation before the judgement can be enforced. The enforcement order under the recast Brussels Directive is assigned to the Queen's Bench Division.

After registration, the executing creditor is entitled to enforce the German judgement like an English judgement and all the procedural steps of the English legal system can be used.

All the above only applies if the case falls legitimately under German law. The German legal system requires the plaintiff to go to the courts of the defendant and cannot use his/her local courts unless it has been agreed by both parties that the area of jurisdiction (Gerichtsstand) is elsewhere.

In your case, I strongly suspect that the 'Gerichtsstand' may easily be England or Scotland and not the local German courts. N.B. Germany has 16 federal states and each one is a separate jurisdiction - similar to the US.

You'll get my thoughts tomorrow!

OK, busy day today, so I'll keep it short!

1. This is at best (assuming that what you say is "the truth, the whole truth and nothing but the truth!") just a trademark infringement. They are obviously trying to dress their case up as something it is not, in order to establish jurisdiction in Germany.

2. The demands made by the Danish manufacturers are standard OTT demands that seem to crop up again and again in such cases when German lawyers are doing their thing. The object is to frighten the other side into making admissions and agreeing to conditions that otherwise they would not contemplate. It is BTW a tactic that very often works!

3. A plaintiff can only bring a case against a defendant outside the natural jurisdiction (i.e. that of the defendant - in your case either England or Scotland) if damage or injury or the potential for such damage or injury occurred in another jurisdiction. In plain English, they can only sue for damages in Germany if you (and not a third party!) sold or tried to sell goods using their trademark IN GERMANY. Big question - did you advertise or sell your goods in Germany?

4. As this is in all probability a trademark case, any justification of injury to their trademark is down to the details. Assuming German jurisdiction applies, a German judge would have to look at the two trademarks and decide just how similar they really are. If you want to, you can either post here (or PM links to them to me) images of both marks - but I am very far from being any species of expert on German and EU trademark law.

5. Under Article 5(3) of the EU (unfair competition) Regulation, where a defendant is domiciled in a member state other than where the court is situated, proceeding for damages can be brought on the basis of an act that took place in that other member state where damage occurred in the court’s jurisdiction. The benchmark ECJ case that clarified this issue is Coty Germany GmbH v First Note Perfumes NV C-360/12 - if you want to dig it up and do some background reading!

In that case, the Belgian company, First Note, sold bottles of perfume to a German wholesaler which collected them from FN’s Belgian premises and exported them to Germany, before selling them in Germany. Coty brought proceedings for trademark infringement and unfair competition against FN in Germany. The German courts dismissed the proceedings for lack of jurisdiction, on the basis that FN had only acted within Belgium. The ECJ backed their decision and issued a series of outlines and ground rules for what does and does not establish jurisdiction in matters of tort.

My 30 cents worth to you - right now, do nothing, admit and/or agree to nothing and just gather the facts.

My 30 cents worth to the Danish manufacturer - you've spent 60€ on a lawyer's letter and no doubt put the frighteners on this bloke, but going any further and getting a judgement in Germany and then enforcing that judgement in England at the Queen's Bench Division will cost you thousands. By all means, get the German court to send out a 'Yellow Letter' and see if they allow you to win the case by default. But if they contest the case - drop it! Success is very far from certain!

Personnaly I would consult a solicitor and see if it would be sensible to reply in the following manner.

Yes you sold a couple of items. But you no longer sell them as they were not popular.
No you dispute the infringement, you do not agree that the marks are passing off.
In any case you have no intention of re-stocking the items and suggest that they drop the matter.

The idea being to make them realise that there is no point in wasting money in continuing.

Consulting some local solicitor would be a complete waste of time and money. There are very few lawyers who specialise in this field and they cost real money, as in several hundred per hour.

I have outlined the right things to do based on my experience of this situation and the facts as related by the OP. All we need now is a precise description of the advertising or sales in Germany (and nowhere else!) and the possible nature of the trademark infringement.

I run an Anglo-German company and I have to deal with issues of trademarks and copyright all the bloody time. I have been at both ends of this situation (though never with luggage!)