Originally published 20 August, 2008
and
Dr. Constantin Rehaag
Keywords: intellectual property, Germany, infringer, Enforcement Act, Anti-Piracy Regulation,German Trademark Act, Patent Act, Act on Utility Models, the Act on the Protection of Semiconductors, the Design Act, the Copyright Act
On 1 September 2008, the Enforcement Act ("Act") will enter into force in Germany. The most important innovations introduced by the Act are an extended right of information, a right to obtain disclosure of i.a. documents in the control of the alleged infringer of an intellectual property right, a right to recall infringing products from the channels of commerce and aright to publication of judicial decisions. The Act also introduces a simplified destruction procedure in line with Article 11 of Council Regulation (EC) No. 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights ("Anti-Piracy Regulation").
The amendments will have far-reaching consequences for holders of intellectual property rights (rightholders), infringers of such rights (infringers) as well as any other persons involved in the infringement.
Full Update
The Act amends the German Trademark Act, the Patent Act, the Act on Utility Models, the Act on the Protection of Semiconductors, the Design Act, the Copyright Act and the Act on the Protection of Plant Variety Rights by incorporating nearly identical provisions into each piece of legislation, with the exception that the Anti-Piracy Regulation does not refer to all the intellectual property rights governed by the aforementioned acts. In the following, the new provisions of the German Trademark Act will exemplify the most important changes of the law.
RIGHT OF INFORMATION, GERMAN TRADEMARK ACT, SECTION 19
The already existent claim for information against the infringer notwithstanding, the rightholder is now entitled – in the context of proceedings concerning the infringement of intellectual property rights – to request production of information on the origin, distribution channels and quantity of as well as the prices obtained for goods or services which infringe an intellectual property right. Such information may be requested from any person who was
- in possession of the infringing goods;
- using the infringing services; or
- providing services used in infringing activities or who
was indicated by the person referred to in (i), (ii) or (iii)
above as being involved in the production, manufacture or
distribution of the goods or the provision of the
services.
In addition to these prerequisites, the rightholder's request may not be disproportionate, the infringement must be obvious and the person must be acting on a commercial scale.
A similar claim may be raised against internet providers who are obliged to inform the rightholder of the infringer's IP address
RIGHT TO DISCLOSURE OF AND ACCESS TO DOCUMENTS, GERMAN TRADEMARK ACT, SECTIONS 19 A, 19 B
Where there is sufficient likelihood of an infringement, the rightholder who has identified documents which lie in the sphere of control of the infringer may now require the infringer to produce such documents. Under the same conditions, in the case of an infringement committed on a commercial scale, this claim extends to the communication of banking, financial or commercial documents under the control of the infringer. If necessary for substantiating a claim for damages and in the case of an infringement committed on a commercial scale, the rightholder may now claim access to banking, financial or commercial documents even when held by third parties. The court will provide for the protection of confidential information if necessary.
Both the right of information and the right to disclosure of and access to documents are based on strict liability. It is also noteworthy that a court may grant respective orders on the basis of an ex parte proceeding.
RIGHT TO RECALLFROM THE CHANNELS OF COMMERCE, DEFINITIVE REMOVALFROM THE CHANNELS OF COMMERCE AND TO DESTRUCTION, GERMAN TRADEMARK ACT, SECTION 18
At the rightholder's request, a court may order goods that are found to be infringing an intellectual property right to be recalled from the channels of commerce, definitively removed from the channels of commerce and destroyed at the infringer's expense if this is proportionate in view of the seriousness of the infringement and the remedies ordered as well as the interests of third parties.
RIGHT TO PUBLICATION OF JUDICIALDECISIONS, GERMAN TRADEMARK ACT, SECTION 19 C
In Germany, this right had heretofore been recognised only in relation to designs and copyrights. It now applies uninformly to all intellectual property rights.
SIMPLIFIED DESTRUCTION PROCEDURE, GERMAN TRADEMARK ACT, SECTION 150
Where customs authorities have detained or suspended the release of goods suspected of infringing a trademark, copyright or related right, design right, patent, supplementary protection certificate, plant variety right or a protected designation of origin or a protected geographical indication when being imported into the European Union, the goods may be destroyed pursuant to the simplified destruction procedure. This procedure provides for the goods to be destroyed if the rightholder
- informs the customs authorities in writing within 10
business days (or three business days in the case of
perishable goods) of receipt of the notification of the
detention or suspension that the relevant goods infringe an
intellectual property right;
- eeks written agreement of the declarant, the holder or
the owner of the goods to surrender the goods for
destruction; and
- if the declarant, the holder or the owner of the goods
was informed in writing about the infringement and has not
specifically objected to destruction within the prescribed
period of ten business days.
Generally, the amendments facilitate the enforcement of intellectual property rights and in particular reduce the difficulties and costs associated with obtaining evidence.
Learn more about our Intellectual Property practice.
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