A preliminary injunction issued by German courts can help protect your intellectual property in a number of ways: it can be used against infringing advertising but it could also extend to preventing the import and sale of infringing products. It may further include a request for information with regard to the infringer's suppliers and could also secure the right for destruction of the infringing goods.
It is also advisable to be prepared in case you might be seen to be infringing a competitor's rights, for example, during a trade fair in Germany. The German legal system provides means to set up an effective defence against any applications for a preliminary injunction by filing according protective letters with the competent courts.
This is why preliminary injunctions provide European rights owners or exclusive licensors with a weapon of choice in the battle against infringers.
Preliminary injunctions can be used to enforce cease-and-desist claims, to request information from the infringer, and to secure the destruction of infringing goods. They can therefore provide owners of IP rights with vital information as to distribution channels as well as preventing further infringement.
In order to secure a preliminary injunction, the applicant must demonstrate to the court that:
- The matter is urgent. The standard usually applied is that the applicant should take action within four weeks after becoming aware of the infringement;
- If the injunction is based on a patent, that its validity is beyond doubt. This criterion is met if a patent has survived an opposition or nullity procedure. Trademarks and design rights have to be registered; and
- There is a clear infringement. The judge must be able to understand the scope of IP rights/act of unfair competition without the help of an expert, which makes preliminary injunctions based on patents slightly more complicated than those based on trademarks or other non-technical rights.
A warning letter to the infringer is not required (unless based on unfair competition claims) and, in many instances, is not desirable. For example, if the applicant is concerned that the infringer may take steps to move infringing goods or other evidence. However, it must be borne in mind that if no warning letter is sent and the infringer immediately gives in upon receipt of the preliminary injunction, the applicant of the preliminary injunction will bear its costs.
The application for a preliminary injunction must not be served on the infringing party before filing it with the relevant court. Contrary to a regular law suit in Germany, the applicant doesn't need to prove the infringement, he must only make it plausible to the court. This means that an application can be put together and filed at the court quite quickly (provided all documents and/or affidavits are available) and cost effectively. This is a distinct advantage over the procedures and requirements of many other European countries.
The judge may consider the application for a preliminary injunction with or - as usually - without an oral hearing and will typically make a determination within a few hours or a couple of days upon receipt of the application. The speedy process for obtaining a preliminary injunction is particularly useful for taking action against infringements where the infringer will only be in Germany for a limited time, e.g. during a trade fair.
It is worth bearing in mind that a preliminary injunction can also be obtained in anticipation of an infringement. So, if right owners are aware that an infringer will be exhibiting at a trade fair and is likely to be exhibiting infringing goods there, an injunction can be secured in advance of the fair and served at the fair itself. This could prevent the display of the infringing goods. Plus it sends a clear message out to other infringers and secures evidence in Germany (e.g. for main proceedings).
If the court declines granting the preliminary injunction, then the application can be withdrawn or the negative decision appealed. The defendant will generally not be made aware that an application for a preliminary injunction has been made or declined, so the applicant could try to have a further attempt to secure the injunction at another court or even initiate regular proceedings against the infringer. Even if the preliminary injunction is granted at a later stage and served upon the infringer, under normal circumstances the defendant will still not be aware that the application was initially refused.
Once the preliminary injunction is issued, it must be served upon the defendant within one month for it to be enforced. If the applicant fails to do this, the preliminary injunction will cease to be enforceable. The preliminary injunction normally needs to be served on the defendant through a bailiff. If a court revokes a preliminary injunction on the basis that it was not justified when applied for, the applicant is liable for any damages which the defendant may have suffered as a result of its enforcement.
The recoverable costs of the injunction are determined by the court and will depend upon the court's view as to the economic importance of the infringed right(s). Generally, most preliminary injunction applications result in a costs award amounting from EUR 5,000 to EUR 20,000.
Once served, the defendant must then decide whether to accept or appeal the preliminary injunction. The defendant is entitled to request at any time that the applicant initiates main proceedings. If the defendant does not contest the injunction within two to four weeks of its service, the applicant could send the opponent a letter of completion seeking an undertaking that the defendant accepts the preliminary injunction as a final injunction and renounces all of his legal remedies. If this demand is not met, the applicant would have to commence main court proceedings in order to obtain a final, not just preliminary, decision on the case.
Preliminary injunctions in Germany provide a quick and cost effective tool for owners or exclusive licensors of European or German intellectual property rights as well as for fighting unfair competition. Such injunctions can be obtained ex-parte (without notice to the alleged infringer/unfair competitor), at a modest cost, and can be served – and therefore enforced – immediately on the defendant.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.