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.

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

  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

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

  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.

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

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”

Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
Accounting and Audit
Anti-trust/Competition Law
Consumer Protection
Corporate/Commercial Law
Criminal Law
Employment and HR
Energy and Natural Resources
Environment
Family and Matrimonial
Finance and Banking
Food, Drugs, Healthcare, Life Sciences
Government, Public Sector
Immigration
Insolvency/Bankruptcy, Re-structuring
Insurance
Intellectual Property
International Law
Litigation, Mediation & Arbitration
Media, Telecoms, IT, Entertainment
Privacy
Real Estate and Construction
Strategy
Tax
Transport
Wealth Management
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates

Terms & Conditions and Privacy Statement

Mondaq.com (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 www.mondaq.com

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 Mondaq.com’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.

Disclaimer

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.

Registration

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 unsubscribe@mondaq.com 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.

Cookies

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.

Links

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.

Mail-A-Friend

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.

Security

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 webmaster@mondaq.com.

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 EditorialAdvisor@mondaq.com.

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 enquiries@mondaq.com.

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