In a recent judgment, the Regional Court of Düsseldorf (LG Düsseldorf) demonstrates that it is willing to grant preliminary injunctions (“PIs”) even on the basis of “untested” technical IP rights.
Generally speaking, the LG Düsseldorf only grants PIs on the basis of technical IP rights which already survived the first instance in opposition proceedings or nullity action proceedings (“tested IP right”). However, in the above-mentioned case, a PI was granted on the basis of an unexamined German utility model that had been derived from a pending EP application with claims customized to the contested products’ features only shortly before. The court justified this departure from its general decision making practice with detailed deliberations regarding the utility model’s validity. According to the court, a PI can be granted on the basis of an untested utility model if the defendant’s invalidity arguments appear to be clearly baseless.
This statement leads directly to another restrictive requirement in German PI proceedings: the so-called “urgency deadline”. Depending on the individual practice of the court called upon, a PI request has to be filed within 1 to 2 months calculated from the date the plaintiff learns of the infringing activities for the first time. Obviously, it is particularly difficult to adhere to this deadline if the plaintiff must additionally convince the court of the enforced utility model’s validity. Also in this regard, the court’s findings are very helpful. It held that the plaintiff is not required to file the PI request before holding all the information and evidence necessary for successful proceedings in his hand. Moreover, the court confirmed that, in case of a utility model customized to the contested product, the “urgency deadline” cannot start before the model’s registration date.
Based on these two basic points, the LG Düsseldorf confirmed that, under the following circumstances, the PI request was timely filed:
- The often underrated German utility model can be a very effective tool in litigation proceedings. Even a PI request can successfully be based on such an untested technical IP right if the court can be convinced that the defendant’s invalidity arguments are unfounded.
- A PI request based on a customized German utility model does not necessarily need to be filed within one month as of the date of first knowledge of the infringing products. It requires, however, immediate and swift (i) evaluation of the contested product’s features, (ii) filing and prosecution of the customized utility model, and (iii) analysis of this utility model’s validity.