Can I Send a Cease-and-Desist Letter to a Company Abroad?
What German Trade Mark Proprietors and Online Retailers Should Know
In day-to-day business, trade mark proprietors and online retailers regularly come across infringements that originate from a provider abroad: an imitation product in another seller’s range, a disparaging comparative advertisement by another competitor, a third-party domain that takes up their own distinctive sign. As soon as such an infringement is discovered, the practical question arises of whether action can be taken against it under German law at all and whether the effort is worthwhile.
The answer is more nuanced than in a purely domestic case. It depends less on where the infringer is based than on the targeting of its offering and on whether a claim won in court can ultimately also be enforced.
Typical Triggers: When a Cease-and-Desist Letter with a Foreign Element Arises
The situation rarely arises by design, but out of day-to-day business, as soon as competition and distribution take place digitally and across borders. The recurring cases are above all:
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Trade mark use on foreign websites and marketplaces.
A provider based abroad uses an identical or confusingly similar sign in product names, domains or marketplace listings that can also be accessed in Germany. -
Comparative and disparaging advertising.
A competitor based abroad presents your own product inaccurately or disparagingly in a comparison table, a benchmark or a campaign. -
Product and listing piracy in online retail.
Counterfeits, design imitations or misleadingly labelled products are distributed to Germany via international platforms. -
Misleading advertising claims or claims impermissible under regulatory rules.
Health, environmental or price-related claims that are impermissible by German or EU-law standards reach the German market through a foreign offering. -
Domains that infringe distinctive signs.
A domain holder based abroad registers or uses a domain that takes up a German distinctive sign.
However different the cases are: the act is always located abroad in technical terms, but its effect is intended to occur, wholly or in part, in Germany. It is at this interface that it is decided whether German law applies.
Applicable Law: Does German Law Apply at All?
The starting point is not the infringer’s place of business but the effect of its conduct.
For claims under competition law, the market-place principle (Art. 6 Rome II Regulation) applies: the law of the market that is affected governs. German unfair competition law therefore applies only insofar as the commercial practice has a noticeable effect on the German market.
For claims under trade mark and distinctive-sign law, the country-of-protection principle applies (Art. 8 Rome II Regulation): a German trade mark supports claims only in respect of infringing acts with a link to Germany. Conversely, a foreign trade mark does not give rise to a claim for injunctive relief under German or EU law.
The Federal Court of Justice (BGH) has set the standard for this: not every foreign internet offering that can be accessed in Germany gives rise to claims; what is required is an economically relevant link to Germany (BGH, judgment of 13 October 2004 – I ZR 163/02, GRUR 2005, 431 – HOTEL MARITIME). Mere technical accessibility is not enough.
International Jurisdiction: Where Can the Claim Be Enforced?
If German law is applicable, the question of the competent court follows. It is answered by reference to where the opponent is based.
If the infringer is based in an EU Member State, the rights holder can bring a claim against it for trade mark and competition infringements at the place where the harmful event occurred – and therefore also in Germany (Art. 7 no. 2 Brussels Ia Regulation). The court route is open.
If the infringer is based in a third country such as the USA, jurisdiction is governed by German law. For tort claims, the place where the act was committed in Germany establishes a place of jurisdiction, provided the necessary link to Germany exists. A German court can therefore often be reached – the real hurdle lies not here but in the later enforcement.
Because the Brussels Ia Regulation does not apply to defendants from third countries, international jurisdiction is governed by autonomous German law and follows, by virtue of the dual function of the rules on local jurisdiction, from the place-of-commission jurisdiction under § 32 ZPO, whereby the place where the damage occurs presupposes the economically relevant link to Germany required by the case law (BGH, HOTEL MARITIME).
A Noticeable Link to Germany: Targeting Rather Than Accessibility
Applicable law and jurisdiction turn on the same consideration: is the offering, as intended, directed at the German market? The Court of Justice of the EU (CJEU) has compiled the indications that point that way (CJEU, judgment of 7 December 2010 – C-585/08 and C-144/09, NJW 2011, 505 – Pammer and Hotel Alpenhof). Depending on the individual case, the following may point to this, among other things:
- German-language content or a selectable German-language version,
- prices in euros,
- a .de domain or the deliberate use of neutral extensions such as .com or .eu to address German customers,
- targeted search-engine or platform advertising directed at German users,
- shipping, payment processing or customer service for Germany,
- international telephone dialling codes, travel directions or a reference to an international clientele that includes German customers.
The link to Germany is denied, by contrast, where the offering has its actual centre of gravity abroad and the effect on the German market is merely an incidental consequence of worldwide accessibility (cf. BGH, judgment of 9 November 2017 – I ZR 134/16 – Resistograph; BGH, judgment of 7 November 2019 – I ZR 222/17 – Club Hotel Robinson). What counts is the overall picture, not the individual feature.
In terms of preparation, this means: the indications that the offering targets Germany should be secured and documented early – ideally by means of dated screenshots of the offering. Anyone who cannot prove the link to Germany takes an avoidable risk.
The Cease-and-Desist Letter Itself: Form, Language, Delivery
Once these requirements are met, the general requirements for a cease-and-desist letter apply, supplemented by a few special features of the cross-border case.
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Form and content.
Here too, the minimum particulars under § 13 para. 2 UWG must be complied with; this includes a comprehensible explanation of the basis of the sender’s standing under § 8 para. 3 UWG. Where trade marks and distribution are spread across different group companies, it is worth establishing in advance which company holds which claim – this avoids later objections and strengthens one’s own position. -
Language.
A particular language is not a condition of validity. In practice, when addressing a foreign recipient it is advisable to use the local language or English, so that the recipient cannot call the content into question. -
Delivery.
Receipt can be harder to prove in a cross-border case and should be arranged from the outset in a way that provides reliable proof. At the latest, this matters for the urgency of preliminary injunction proceedings or for the consequences as to costs.
Enforcement and Execution
Within the EU, German injunctions are in principle recognised and enforced under the Brussels Ia Regulation without a separate procedure. Judicial enforcement against infringers in the EU is therefore readily manageable.
With regard to third countries, in particular the USA, there is no comparable treaty. US courts regularly do not enforce foreign injunctions and penalty-payment orders; in the case of orders with a speech-law dimension, the SPEECH Act even imposes an express bar. An order obtained in Germany often remains without practical effect there.
This leads to an obvious shift of emphasis: where the court order is difficult to enforce, the cease-and-desist declaration backed by a contractual penalty may carry all the more weight. It binds the infringer on its own legal basis: the contractual penalty falls due without any need for a foreign judgment to be recognised. If the foreign opponent can be persuaded to submit, this often achieves more than an order that is worth something only on the German market.
Strategic Alternatives to the Classic Cease-and-Desist Letter
In many cross-border cases, out-of-court and platform-based routes can also help alongside the cease-and-desist letter. They therefore deserve the first look rather than the last.
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Platform notice-and-action procedures.
Notice-and-takedown on marketplaces, app stores or search engines often removes infringing content within days. The Digital Services Act has harmonised and tightened platforms’ notice-and-action obligations. -
Domain level.
Against domains that infringe distinctive signs, a UDRP procedure can lead to transfer or cancellation without a state court having to be involved. -
Border seizure by customs.
For physical goods, the Product Piracy Regulation (Regulation [EU] No 608/2013) permits seizure at the EU’s external border – a powerful lever, especially against imports from third countries.
When Taking Action Is Worthwhile
Whether the effort pays off is ultimately an economic question. Three factors tip the balance: how reachable the infringer is; the country of enforcement, which within the EU supports the court route but, with respect to third countries, instead points towards contractual submission or platform routes; and finally the question of whether a platform or customs procedure achieves the same objective faster and more cheaply.
Taking action against a foreign infringer is possible and in many cases sensible – but far from automatic. Anyone who clarifies in advance whether German law applies, where the claim can be enforced and whether an order will ultimately be enforceable, and who realistically assesses costs and duration, makes a sound decision instead of an expensive reflex. Often the fastest and cheapest route is not the classic cease-and-desist letter but the platform or customs procedure. The art lies in choosing the right lever – not in pulling one at all.
Do you want to take action against a trade mark or competition infringement with a foreign element? We will review at short notice whether German law applies, where the claim can be enforced and which route – cease-and-desist letter, platform procedure or customs – is the most effective in the specific case.
Frequently Asked Questions
Can I issue a cease-and-desist letter against a foreign company in Germany?
Yes, provided the infringing act has a noticeable link to the German market. The mere accessibility of a foreign website in Germany is not sufficient; what is required is an economically relevant link to Germany, which arises from the offering being directed, as intended, at German customers.
Which law applies to trade mark or competition infringements with a foreign element?
For competition infringements, the market-place principle applies (Art. 6 Rome II Regulation): the law of the market that is affected governs. For trade mark infringements, the country-of-protection principle applies (Art. 8 Rome II Regulation): the law of the state for which protection is claimed governs.
What does a cease-and-desist letter with a foreign element cost?
Legal fees are based on the value of the matter in dispute. In cross-border cases, there are additional costs for translations, foreign correspondent lawyers and formal service abroad. Where the cease-and-desist letter is justified, there is a claim for reimbursement; it can be enforced, however, only insofar as the infringer can be reached.
Is a German injunction enforceable abroad?
Within the EU, German injunctions are in principle recognised and enforced under the Brussels Ia Regulation without a separate procedure. With respect to third countries such as the USA, there is no enforcement treaty; a German injunction is regularly not enforceable there. In these cases, the cease-and-desist declaration backed by a contractual penalty is often the more effective instrument.
Have you discovered an infringement of competition law and/or trade mark law and would like advice?
