A request for Preliminary Injunction based on a utility is the fastest way to take action against a potential infringer. Many courts in Germany dismiss such request on the basis of an unexamined protective right. In any case, the requirements for the grant of a Preliminary Injunction on the basis of a utility model are set very high in view of the unambiguity of the case of infringement and of its legal validity.

The characteristics of the German utility model have already been presented here in a four-part series [https://www.weickmann.de/news/news-detail/article/the-wide-scope-of-ip-protection-by-german-utility-models/]. Particularly significant are both the fast registration of the utility model (approximately two months after filing of the application) and the effect associated therewith, i.e. that the owner of the utility model can prohibit any third party from manufacturing, offering, putting on the market, using, importing or possessing a product which falls within the scope of the utility model (Section 11, German Utility Model Law (GebrMG)). The infringer may be sued for injunctive relief and damages by way of infringement proceedings before the Regional Courts (first instance) and Higher Regional Courts (second instance) (Section 24 GebrMG). According to Section 24c GebrMG, there is also the possibility of initiating a preliminary injunction procedure.

According to established case law, an injunction may only be granted in a patent dispute if both the validity of the patent and the question of patent infringement can be answered so clearly in favour of the claimant that an erroneous decision, which would have to be revised in subsequent main proceedings, is not to be expected. The issuance of a preliminary injunction therefore usually presupposes, on the one hand, the determination of a literal infringement of the patent in dispute, since the determination of an equivalent infringement in the injunction proceedings generally cannot be determined with the necessary high degree of reliability. On the other hand, in order to avoid the risk of a misjudgement of technical facts in summary proceedings, it is a prerequisite that the patent is very likely legally valid or will prove to be legally valid in pending nullity or opposition proceedings (Hanseatic Higher Regional Court GRUR-RR, 2002, 244, 245 - Spannbacke).

Stricter requirements apply to utility models, because a utility model - in contrast to a patent - is an unexamined protective right. Notably, the court must always examine the validity independently (GRUR-RR 2015, 137, 138 - Hydraulikschlauchgriffteil). The courts are therefore generally reluctant to issue preliminary injunctions on the basis of a utility model (Pantze in Loth, GebrMG, 2nd edition 2017, section 24, Rn 287). Consequently, the issuance of a preliminary injunction on the basis of a utility model is generally not considered without giving the respondent an opportunity to be heard. Generally, it is sufficient for the respondent to present a coherent and plausible statement on the invalidity of the utility model in order to defend against a claim for an injunction (Higher Regional Court of Düsseldorf, GRUR-Prax. 2012, 222).

Following established case law, the chamber of the Regional Court of Hamburg rejected a request for preliminary injunction based on a utility model related to hair strengthening agents in which our firm represents the intervenor H.S.A. Hair Styling Applications S.p.A. (Regional Court of Hamburg, 327O315/18; Hanseatic Higher Regional Court 3U207/18).

Summary

A request for a preliminary injunction based on a utility model is by far the fastest way to take action against a potential infringer. The first instance decision can be expected within 2-4 months after filing the request, i.e. within 4-6 months after filing the utility model application.

An injunction procedure based on a utility model is only promising, however, if there is a clear (literal) infringement and there are no doubts as to the utility model's validity.

As usual, the defeated party bears the costs of the proceedings. If the request for a preliminary injunction is rejected, the respondent may also pursue significant claims for damages.