A sandal, a well-known design, and suddenly there is a cease-and-desist letter (Abmahnung) on the table. Online retailers can find themselves in exactly this situation if the shoes they offer are alleged to look too similar to well-known Birkenstock models.
According to a report by attorney Tim Christian Berger, the Cologne law firm Jonas is taking action against an online retailer on behalf of Birkenstock Global Sales GmbH. The case concerns leather sandals that, in the opposing party's view, are too similar to the well-known Birkenstock model "Madrid".
For affected retailers, much more can quickly be at stake than the question of whether a particular pair of sandals has to be taken out of the shop. Among other things, the other side can demand money, information about sales and sources of supply, and a declaration that binds the retailer for the long term.
The allegation: Too close to the Birkenstock design
At the heart of the matter is the question of when a product is so similar to a well-known original that legal claims can arise from it.
One thing does not automatically follow, though: similar does not mean prohibited.
As a rule, products may pick up features of other products. It can become problematic, however, if buyers strongly associate a product's design with a specific manufacturer and further circumstances come into play. Registered designs can also play a role.
According to the original report, the case described relies both on the rules against unfair imitation and on a registered EU design.
This is precisely where a close examination can pay off. Even a registered design does not automatically mean that every claim based on it is justified. Among other things, the timing and the requirements of the registration can be relevant. The original report expresses doubts as to whether the design cited there actually has the protective effect claimed.
However, this is not a question that can be answered reliably on the basis of a product photo or a quick comparison. What matters are the specific sandals, the rights asserted and the circumstances of the individual case.
Amount in dispute of 150,000 euros, and the costs derived from it
Retailers usually pay particular attention when they look at the financial dimensions.
In the case described by Berger, an amount in dispute (Gegenstandswert) of 150,000 euros is said to have been set. This is not a claim for 150,000 euros. Rather, the amount in dispute serves as the basis for calculating certain costs. According to the original report, attorney's fees of 2,689.55 euros are being demanded in this specific case.
But that may not be the end of the matter.
According to the report, there are also demands for information on sales figures, revenue, suppliers and distribution channels. A recall of goods already delivered and damages are apparently on the table as well.
For a retailer, this can have considerable economic consequences. Anyone who has sold a product on several platforms and over a longer period of time, for example, may first have to work out where it was offered, how many units were sold and what stock is still on hand.
The signature can matter more than the first invoice
The so-called cease-and-desist declaration (Unterlassungserklärung) deserves particular caution. Put simply, the signatory promises to refrain from a certain conduct in the future. A contractual penalty may be provided for violations.
That is exactly why a pre-drafted declaration should not be treated like an ordinary form.
The key question is not only what happens immediately after signing. It also matters what obligations arise for the future.
In online retail, this can quickly become complicated. Listings may not only be in your own shop but also on Amazon, eBay or other marketplaces. On top of that come old advertisements, social media content or other places where the product can still be found online.
A declaration whose scope was not fully understood can therefore still have far-reaching consequences years later.
Additional points also deserve attention. If the document contains statements on damages, disclosure of information or a product recall, for example, it should be clarified exactly which obligations are actually being accepted with a signature.
Received a cease-and-desist letter: Don't ignore it, but don't panic either
Two reactions are particularly risky: simply leaving the letter lying around, or signing everything right away out of fear.
A systematic approach makes more sense.
First, the deadline stated should be noted. At the same time, retailers should secure all relevant documents: product images, item descriptions, invoices, supplier information, sales figures and existing inventory.
The actual reach of the listing should also be checked. Where was the product sold or advertised? Are there still active listings on marketplaces? Are there older social media posts or advertising materials?
After that, it can be assessed which claims are actually justified and which may go too far.
If an obligation to cease and desist is justified in principle, a modified declaration may be an option depending on the individual case. However, this does not mean that retailers should strike a few sentences on their own and sign the rest. It is precisely the exact wording that determines how far the obligation will later extend.
The case reveals a fundamental problem of online retail
The conflict is also interesting because retailers today can source products from suppliers with just a few clicks and offer them on several platforms at the same time.
The economic risk, on the other hand, cannot be eliminated with a click.
Anyone who takes over products from wholesalers, importers or international platforms should therefore not simply assume that a freely available product may also be sold without any problems. Especially with striking designs from well-known brands, a check before adding a product to the range can be considerably cheaper than a dispute later on.
Recht 24/7: A form with long-term effects deserves more attention than a quick signature
One thing in particular is troubling about cases like this: at first glance, a cease-and-desist declaration often looks like paperwork to those affected. In fact, it can be far more significant economically than the invoice lying next to it.
It would be just as wrong, however, to assume that a cease-and-desist letter from a large company must automatically be justified. Fame is no substitute for scrutiny. Even a prominent manufacturer has to be able to substantiate its claims.
That is why neither the size of the sender nor a short deadline should obscure the crucial question: What exactly happened, and how far do the claims really extend?
A cease-and-desist letter should be taken seriously. But there is no need to be in awe of a well-known brand name. Especially when large sums, disclosure of information about your own business and long-term obligations come together, a sober review is worth more than a quick signature.
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