Germany: Improved Enforcement Of Intellectual Property Rights

Last Updated: 21 August 2008

Originally published 20 August, 2008

Article by Daniel R. Marschollek 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.


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

  1. in possession of the infringing goods;

  2. using the infringing services; or

  3. 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


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.


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.


In Germany, this right had heretofore been recognised only in relation to designs and copyrights. It now applies uninformly to all intellectual property rights.


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

  1. 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;

  2. eeks written agreement of the declarant, the holder or the owner of the goods to surrender the goods for destruction; and

  3. 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.

Mayer Brown is a global legal services organization comprising legal practices that are separate entities ("Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP, a limited liability partnership established in the United States; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales; and JSM, a Hong Kong partnership, and its associated entities in Asia. The Mayer Brown Practices are known as Mayer Brown JSM in Asia.

This Mayer Brown article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.

Copyright 2008. Mayer Brown LLP, Mayer Brown International LLP, and/or JSM. All rights reserved.

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