Germany: Why Torpedos have backfired

Last Updated: 25 November 2003

by Reinhardt Schuster and Clemens Rübel

A recent decision by the Hamburg District Court may end the controversial practice of taking patent cases to courts of EU countries with slow procedures.

In former years, the so-called "Italian" or "Belgian Torpedo" enjoyed rising notoriety among practitioners as a defense strategy against potential patent infringement suits in Germany. The term torpedo designates a negative declaratory action to establish non-infringement, mostly filed in certain EU countries such as Italy or Belgium, the judicial systems of which take much more time to reach a legally effective decision than in other countries, for example, Germany. Art. 24 of the Hague Convention - on which the decision of the Hamburg District Court that will be discussed in this article was partly based - served for a long time as the basis for blocking claims to injunctions for a time span of a number of years or sometimes even until the end of the life time of the patent-in-suit. By this maneuver, the torpedo-plaintiff is buying time, during which the company can market its potentially infringing product without being obstructed by property rights of third parties. An infringer would thus be gaining a competitive advantage against the patent owner, who needs to regain the expenses spent for the development of his product. In case the infringer looses the suit years later in Italy or Belgium, there is a good chance that he merely will have to pay damages to the patent owner, which will not be much higher than a reasonable license fee for utilization of the patent-in-suit (for which the patent owner might not have granted him a license voluntarily).

Such a case of an "Italien Torpedo" was subject to the above mentioned suit "Seifenverpackung" (soap packaging) at the Hamburg District Court (published in German in GRUR Int. 2002, p. 1025). The defendant in this action had sued in Milan for declaration of non-infringement by its product of, inter alia, the German part of a European patent. The plaintiff in Germany now requested a preliminary injunction at the Hamburg District Court which was swiftly issued.

In the grounds, the Court stated that the negative declaratory action in Milan had the same subject matter as the present preliminary procedure and that, for this reason, according to Art. 21 Hague Convention (today applicable for all EU countries except Denmark: Art 27, Council Regulation (EC) No. 44/2001 on jurisdiction and the recognition of enforcement of judgements in civil and commercial matters, hereinafter referred to as CR 44/2001), it was not possible to instigate a main action on the merits in Germany, since the Court which was addressed later has to declare its non-competence vis-a-vis the Court which was called upon first.

Different to German procedural law, the Hague Convention assumes an equal ranking of negative and positive declaratory actions. A negative declaratory action filed earlier in another EU country takes precedence over a later filed action in Germany.

However, the District Court Hamburg decided, that on the basis of Art. 24 Hague Convention (today: Art. 31, CR 44/2001), nothing contravenes to the issuance of a preliminary injunction and that the Court is internationally competent. The essential purpose of Art. 24 Hague Convention is to prevent parallel suits before the courts of multiple member states as well as any potentially resulting contradictory decisions. A further aim is to exclude the possibility that a decision according to Art. 27(3) (new version: Art. 34(3), CR 44, 2001) is not recognized because of it being incompatible with a decision that has been rendered concerning the same parties in the state in which the claim to admission is raised. This danger of contradicting decisions, however, does not exist with preliminary injunctions which are merely preliminary rulings until the decision in the main suit is rendered.

After the Hamburg District Court had established its competence in this manner, it had to decide on the infringement and find out whether there were sufficient grounds to issue a preliminary injunction. With preliminary proceedings, there is always the problem for the court that the legal situation cannot be examined in great detail. In many cases, the defendant is also raising a nullity action or an opposition against the patent. The result of these parallel actions cannot be awaited in the preliminary procedure; only a prognosis can be given as to their chances for success. For this reason, the court has to balance the interests of the parties: It has to weigh up the interest of the plaintiff in a swift decision against the interest of the defendant, who, in case of a false decision in the preliminary procedure, would be subjected to substantial disadvantage. The larger the positive clarity of the court's view on the infringement and validity of the patent, the more reason it has for giving preference to the interest of the plaintiff.

It is an interesting aspect of the decision of the Hamburg District Court that, in the framework of weighing this balance of interests to the disadvantage of the defendant, it took into consideration that a torpedo was pending in another EU state. With this, the Hamburg District Court is confirming a former ruling of the Düsseldorf District Court (published in german inGRUR 2000, 692 ff. - "Kontrastmittel"), according to which the interest of a patentee in a preliminary injunction is getting stronger, the longer he has to wait for a decision in the main suit. The Düsseldorf Court comments: "Already the latter legal aspect is pointing toward the direction that, in case of conflict, urgency is to be affirmed." In other words: While a torpedo in itself may not constitute a reason for a preliminary injunction, it carries considerable weight in the balancing of interests and thus leads, in controversial cases, to a sentence of the opponent to the claim, in particular, in cases when the possibility of an imminent filing for an action for performance (compensation) would lead to a rejection of the claim for a preliminary injunction.

The present decision gives reason to rethink the practice of instigating torpedo actions. This tactic was developed at a time when it was commonly understood to be practically impossible to get a preliminary injunction in patent matters. The legal and factual circumstance of patent cases were deemed to be too complex to be examined in depth in an accelerated procedure, in particular, if the validity of the patent was challenged. This assessment is no longer valid today. Over the time, the requirements with respect to the patent-in-suit have progressively diminished to the advantage of the plaintiff. With regard to the validity of the patent-in-suit, the Hamburg District Court is only speaking of "the revocation of the patent being imminent with a high degree of probability." For the attorney of the defendant in the preliminary procedure, this results in an enormous increase of the requirements for demonstrating the invalidity of the attacked patent, in comparison to the general opinion of some decades ago that the validity of a patent must be "beyond any doubt".

Consequently, a torpedo may prevent the instigation of a main suit in Germany, but the owner of the patent is almost forced to claim as quickly as possible a preliminary injunction against the torpedo-plaintiff and potential infringer, because if the patent owner is waiting longer than one or a few months (depending on the court), then the chances for the issuance of a preliminary injunction will rapidly decrease, since the patent owner is demonstrating that he is not diligent in enforcing his rights and, therefore, an accelerated procedure will not seem necessary in the eyes of the court. The torpedo plaintiff is thus confronted very quickly with an accelerated procedure in the country he intended to "block" and in which he is in a disadvantageous position legally as well as psychologically: torpedos are instigated in order to prevent a law suit in Germany which one fears to loose , and are therefore, so to speak, a sign of bad conscience.

For this reason it is questionable whether torpedos still make sense. While it is still true that in an accelerated procedure, the chances of the patent owner are smaller than in a main suit, the danger of a preliminary injunction is increasing. It has to be taken into consideration that in the torpedo brief, information may be disclosed which can be used to the disadvantage of the defendant in the German preliminary injunction procedure. Additionally, there is the danger, that in cases in which the deadline for the instigation of an accelerated procedure has already lapsed, a preliminary injunction could still be issued, because the torpedo has brought about a change of circumstance, reviving "urgency". However, this question has not yet been definitely resolved by the higher instance courts.

From the torpedo-plaintiff's point of view, notwithstanding the considerable costs of a long drawn-out procedure in Italy or Belgium, the consequences of a preliminary injunction in Germany (the chances of which have been increased by the torpedo), are now more drastic: A preliminary injunction is only a preliminary decision and is only effective until a non-preliminary, main action has been decided with the same subject matter between the same parties. Since a main action in Germany is prevented by the Belgian or Italian torpedo, the preliminary injunction remains valid until the torpedo is decided. And this can take years.

Thus, the tables are turning. The defendant in the torpedo suit now has all the time in the world and will try to delay the procedure as long as possible - in order to maintain the effects of the preliminary injunction proceedings as long as possible - as the torpedo plaintiff would have done, if it would not have come to the injunction against him, in order to prevent a main action in German as long as possible. In this sense, the torpedo has indeed backfired.

© by Reinhardt Schuster and Clemens Rübel 2003. This article was first published in Managing Intellectual Property July/August 2003.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.