Preliminary Injunction Procedures in IP Matters in Germany - Guidelines in a Nutshell

In urgent cases, it makes sense for intellectual property (IP) rights owners to apply for a preliminary injunction (PI). Especially if an infringing product is launched on the market, it is important to react quickly. We take the opportunity to briefly outline the most important aspects below. 1. Introduction A preliminary injunction is a provisional court decision establishing or maintaining a legal situation in a quick summary procedure. Regarding trademark and design infringements, a specialized IP court in Germany will take a decision within 2-3 working days. In exceptional cases, such as at trade fairs, within 1-2 hours. 2. Requirements for a preliminary injunction When examining the requirements for an injunction, the court has to balance the interests of both parties. On the one hand, the claimant wants to enforce his IP right as fast as possible to prevent imminent disadvantages. On the other hand, the defendant might suffer disadvantages as a consequence of enforcement of the preliminary injunction. A preliminary injunction in IP matters is in general granted, if the following three prerequisites are fulfilled: a) Urgency A preliminary injunction is only successful if the claimant demonstrates that urgent relief is needed. Therefore, the claimant must show that he has reacted as quickly as possible to the infringement of his intellectual property right. Although there is no time limit required by law, the claimant should not wait more than four (4) weeks from the time he receives knowledge of the infringement of his IP right. Therefore it is important that, the claimant immediately informs his attorney in order to react as fast as possible. b) Clarity The infringement has to be clearly and comprehensibly formulated because the competent judges of the German IP court will only take a decision in an IP proceeding, if they understand the problem without the help of experts. c) Validity Finally, the validity of the IP right in suit needs to be given. The validity of trademarks will normally be suspected. Something different only applies, if the trademark not has been registered yet or is subject to a cancellation action or similar. Contrary thereto, the validity of a design can only be established via prior art searches. Therefore, when filing for a PI, the prior out searches must also be submitted to the court. Generally, in patent cases, it is only possible to assume a sufficient degree of validity of an IP right for a preliminary injunction to be granted if the patent has survived a first-instance opposition or nullity proceeding. 3. Procedure a) Warning letter It is recommendable - but not required - to send a prior warning letter to the infringer. Otherwise, the claimant has to bear the costs of the procedure if no warning letter is sent and the infringer immediately concedes upon receipt of the injunction. On the other hand, if a warning letter is send, the infringer therefore has the possibility to move the infringing goods or destroy evidence b) PI Request After that, a PI request asking for the issuance of a preliminary injunction is sent to the competent court. The request explains the involved right, the accused product or process, and why there is an infringement. Characteristic for the PI is that the claimant only has to make the infringement plausible to the court and not has to prove it. Therefore, an application for a preliminary injunction can be prepared and filed at court very quickly and cost-effectively and is granted within a couple of days (or hours at trade fairs). c) (No) Oral Hearing The judge may consider the application with or without an oral hearing. The court will waive on an oral hearing in very clear cases. In these cases the court will usually make a determination within a few hours or a few days after receiving the application. In more complex cases, the court serves the PI on the defendant and sets a date for a hearing.  At the oral hearing, the parties are able to discuss about all relevant issues and the decision is rendered afterwards. d) Formal Aspects As soon as a PI is issued, the claimant must serve it on the defendant within one month. Subsequently, the defendant must decide whether to accept or appeal the injunction. Thereby, the defendant is allowed to request at any time that the applicant initiates main proceedings. If the defendant does not appeal the injunction after four weeks the applicant could send the defendant a termination letter, seeking an undertaking that the defendant accepts the PI as a final injunction and renouncing all of its legal remedies. If the defendant does not sign the demanding letter the claimant has to initiate legal proceedings. 4. Costs It is difficult to make a general cost estimate because the court fees strictly depend on the value in dispute of the case. For the first instance the claimant has to expect costs of between 5.000 to 10.000 Euro. The losing party has to refund most of the costs to the prevailing party, whereas, the reimbursement is capped according to the codified court and attorney fees. 5. Summary PI Proceedings in German y are very quick, effective and relatively inexpensive. Due to the fact that specialized IP judges and chambers decide, you will also receive a high quality decision.