A brand is the figurehead of a company. It guarantees the customers consistent origin and quality of the product and the trademark owner the exclusivity of the designation. In general, action against a trademark infringer is always advisable if one of these trademark functions is in danger and a so-called dilution of the trademark is imminent.
This danger should not exist – at least from a German or European perspective – if the trademark infringer manufactures in Honduras and sells the products exclusively in this relatively small country. In this case, a lawsuit would also require the company to have its own trademark in Honduras, which many German companies do not have.
However, if the company serves the world market from Honduras and supplies those markets with the trademark-infringing products in which one is present with one’s own trademark, one should not shy away from a lawsuit after a prior warning. In this case, however, it is not advisable to sue directly in Honduras, since one does not usually own a trademark there, the legal system there does not meet European standards and local lawyers would have to be involved.
Instead, the so-called infringement chain should be traced back. The first step is to warn, for example, the retailer or supermarket chain in which the trademark-infringing product is available in Germany and, in addition to injunctive relief and damages, simultaneously demand information about the origin and distribution channel of the product. In this way, which has already been successfully practiced by our law firm on several occasions, the entire profit made in the infringement chain can be skimmed off.
In order to prevent further imports via other importers, it is also advisable to file a customs seizure application. This is possible both at the German level and at the level of the European Union. The German customs authorities in particular support companies effectively and inexpensively in preventing the import of trademark-infringing goods. More information on this can also be found on the customs website.
It is important to adequately protect one’s own trademark in all countries of interest. This can be done within the EU by means of a European Union trademark; in addition, there is the cost-effective instrument of international registration of one’s own trademark in over a hundred countries with only one application. The up-to-dateness of the list of protected goods should also be checked regularly to ensure that trademark protection adapts to the development of the company.
Your Dr. Bertram Rapp
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