Preliminary injunctions are an important remedy in the German legal system. While they have frequently been used in clear-cut unfair competition cases, the courts have also started to make this remedy readily available to patent and even utility model owners. In such cases, the main problem is usually proving the validity of the patent or utility model with sufficient certainty. In this context, the Dusseldorf Upper District Court made it clear that it had had enough of acting as an examiner when assessing validity, and announced that it would accept validity – with only a few exceptions – only in cases in which the right had survived an inter partes proceeding such as opposition, nullity or revocation (I-2 O 126/09, April 29 2010). However, other courts do not share this view.
A common problem in all preliminary injunction proceedings is proving urgency. The court will not grant potentially uncertain and damaging interim measures if the requestor has shown that the matter is not actually urgent by waiting too long to file the request. The too-long period differs from court to court, with a minimum of four weeks in the strictest courts.
This time limit runs from when the requestor became aware of the infringement. The requestor is usually a company participating in business, so the question to be dealt with is whose personal knowledge is attributed to the company. It is clear that the knowledge of the CEO or head of the legal department is attributed to the company. However, what about that of other employees such as salespeople?
This question was recently revisited by the Cologne Upper District Court (6 U 100/13, December 12 2013). In this case the requestor was a large company and the decision of whether to file a preliminary injunction request rested with the head of the legal department. It was established in the hearing that he had become aware of the alleged infringement less than four weeks before filing the request.
However, the respondent argued that the product at issue had been launched in 2011, and that it was incredible that the relevant people within the requestor's company had not noticed this activity for years.
The court argued that the long presence on the market of an illegal product did not remove urgency, provided that the infringing character was not evident. However, it also ruled that the time period for urgency began as soon as an employee of the requestor whose duty it was to inform the CEO or legal department of infringement became aware of such infringement.
For example, if the new product was shown in an exhibition and employees of the requestor became aware of its presence and the potential infringement, the time period for urgency starts to run because they should report it to the legal department immediately.
This decision, endorsing previous case law and clarifying further details, strengthens the respondent's arguments against any objections to the lack of urgency, because it removes a possible loophole whereby the requestor could allege that the person in charge (eg, the head of the legal department) obtained only late knowledge of the infringement, even if others in the company who should have reported it had earlier knowledge.
Rainer A Kuhnen
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com