What is a preliminary injunction?
A preliminary injunction is an interim measure that immediately prohibits an infringing action when granted. The action stays prohibited even if the injunction is appealed.
Preliminary injunction proceedings are swift, flexible and cost efficient. They are granted within days, sometimes even within hours. They are a right-owner friendly option for enforcing cease and desist claims that might not be effectively enforceable after the long time necessary for conducting main court proceedings.
A preliminary injunction is used to either preserve the status quo or to commit the defendant to take or refrain from taking an action. In case of intellectual property rights infringements such injunctions could prohibit the defendant to continue using a certain sign or selling a product allegedly infringing the claimant's IP rights.
However, a preliminary injunction must not stipulate a situation that is not reversible* by courts afterwards. It does not constitute a final and binding decision.
What can preliminary injunctions be obtained for?
Preliminary injunctions cover claims for cease and desist, information, and confiscation. They may be requested in all kinds of intellectual property rights infringement, whether the case relates to copyright , trademarks , designs, utility models or patents . However, preliminary injunctions are more difficult to obtain in patent cases as due to the technical nature of the right it is difficult to proof the claims sufficiently in an urgent proceeding. Preliminary injunctions in patent cases are normally only granted in clear cut cases where the patent is "sufficiently valid", i.e. reasonably likely to be found to be valid and infringed.
Claims for destruction, damages and information are – generally – excluded from preliminary injunction decisions as the outcome could be irreversible.
In addition, there are certain circumstances that justify a claim for information within an injunction. These cases are rather rare and the claimant must show massive and inequitable disadvantage in the event that the application is dismissed.
What are the requirements for filing a request for a preliminary injunction claim?
To file a preliminary injunction claim the claimant must provide prima facie evidence in support of;
- its entitlement to the claim;
- urgency of the claim.
What does prima facie evidence mean and what evidence can be submitted?
Prima facie evidence means that the claimant only has to establish facts from which it may be presumed that there is a strong likelihood that he has an entitlement to the claim and that the claim is urgent. This means that it has to be more likely that the alleged facts concerning the claim and urgency are true than vice versa. In contrast in main proceedings the court needs to be fully satisfied that a factual claim is true. The necessary degree of proof in preliminary injunctions is therefore lowered.
Means of prima facie evidence can be:
- Files of the main proceedings
- Affidavits by the party or a third person and
- Affirmations by lawyers
An affidavit is a written note concerning the relevant facts for the case. The claimant confirms that these facts are true. It is signed by the claimant. An affidavit is treated similar to a testimony under oath and it is a criminal offence to deliberately give wrong or incomplete indications in such an affidavit.
The claimant is free to provide full evidence by means of
- Submission of documents
However it is important that only means of evidence that are present are allowed. This means that only evidence that can be assessed immediately and for which the court does not need to take any further action to obtain them can be used. An application to show documents does not fulfill these standards. Witnesses and experts can therefore only be provided if an oral hearing takes place and they have to be present at the date of the oral hearing. Foreign-language documents need to be translated into German.
What does the claimant have to show with regard to the entitlement to the claim?
With regard to the entitlement to the claim, the claimant must deliver all the facts that enable the court to assess whether an infringement of the claimant's rights occurs or not. Of course, this does not include information on possible defences of the defendant. The claimant rather only argues on its own behalf. In the case of an intellectual property right infringement such request must show the following:
- the claimant is proprietor of an intellectual property right;
- the defendant is currently using or is going to use the intellectual property right without the claimant's consent.
If an infringement has not yet occurred the claimant can file pre-emptively for a preliminary injunction. The claimant must then show that such infringement is likely to occur and that court proceedings would not be sufficient to prevent the infringement.
What does the urgency requirement entail?
The claimant must show that the matter is so urgent for him that he cannot wait for the outcome of a standard court proceeding. There is no definite limit for the urgency set in German law therefore it is at the discretion of the Court to decide whether a matter is still urgent or not. Urgency is generally presumed if no more than one month to eight weeks – depending on the deciding court – have passed since the claimant gained knowledge about the infringement. As the Courts assume quite different time limits for the urgency requirement, claimants tend to file at the most lenient Courts if there is a possible problem with the urgency.
A special regulation is applicable in cases of unfair competition claims: the German Unfair Competition Act ("UWG") provides for a presumption of urgency and exempts the claimant from its obligation to prove that the matter is urgent.
Do you have to contact the defendant before filing a request for injunction?
Before filing the request for a preliminary injunction it is often recommended – but not mandatory – to send a warning letter to the defendant. This letter is the attempt to amicably – without court involvement – solve the dispute. It informs the defendant about the alleged infringement and gives him the opportunity to sign a cease and desist declaration with a contract penalty. Such declaration puts a contractual obligation upon the defendant to stop its infringing behaviour. If the defendant decides to sign the declaration, the claimant cannot request a preliminary injunction as the declaration already enables the claimant to enforce its rights by virtue of a contractual penalty.
However, in some cases it is better to refrain from sending a warning letter to the defendant. This is especially the case if there is a risk that the defendant will simply destroy evidence or take other measures to avoid a Court order. The claimant might also have an interest in testing the Court's opinion before making the other side aware of the fact that the claimant sees certain actions as infringing. Lastly there some cases are so urgent that a warning letter would delay the process of receiving a preliminary injunction in an unreasonable way.
In cases where the defendant signed a declaration and later infringes the claimant's rights again the defendant has to pay the penalty included in the declaration (usually a minimum amount of EUR 5.000,00 per infringement).
Which court has jurisdiction to grant an injunction?
The competent court is generally the court at the defendant's seat of residence or business. However, in the case of intellectual property right infringements, the claimant can also call the Court in which district the infringement occurred. Due to the fact that most of the time infringement is conducted in a broad territorial area, the claimant can choose the Court that is most preferable for its claim (the so called "fliegende Gerichtsstand").
What are the proceedings when requesting a preliminary injunction?
The written request for a preliminary injunction must be sent to Court by the claimant. The defendant is not informed about the request by the court. Usually, a preliminary injunction is issued within one to two working days. In most of the cases the Court decides on an ex parte basis, meaning it only considers the claimant's allegations without hearing the defendant. If the Court decides that based on the facts presented by the claimant the claim is valid it will issue the injunction.
What are the proceedings after the preliminary injunction has been issued?
After an injunction is issued, the Court will send the Court order to the claimant - not the defendant. This enables the claimant to decide whether he wants to officially serve the injunction on the defendant.
In order to be enforceable the injunction needs to be served officially to the defendant - generally via a court bailiff. This official serving must be arranged by the claimant - it will not be initiated by the Court.
The time limit for the official service of the injunction is one month after receipt from the Court. If the injunction is not officially served within this period the injunction is void.
Any infringement of an officially served injunction enables the claimant to request a penalty order against the defendant.
In certain circumstances, it may be preferable for the claimant to only serve the injunction on the defendant for information purposes. This gives the parties an opportunity to solve the dispute amicably, for example by signing a coexistence agreement or the defendant signing a declaration of cease and desist.
Will the other side get informed if a preliminary injunction request is denied?
If the preliminary injunction request is denied in an ex parte proceeding the defendant will normally neither be informed about the fact that the claimant requested an injunction against him nor whether the injunction was granted or not.
If the Court orders an oral hearing before deciding upon the request the defendant will be summoned to the hearing and thereby become aware of the request.
How can a preliminary injunction decision issued by the German court be appealed?
If a preliminary injunction was granted in an ex parte proceeding the defendant has the possibility to oppose to the Court's decision. Such an opposition leads to an oral hearing where the validity of the injunction is reviewed by the Court taking into account the defendant's arguments. Thus, at this stage the defendant gets the chance to comment on the claimant's request and potentially reverse the claimant's arguments. If the court revokes the injunction it becomes immediately ineffective.
There is no official time limit for raising the opposition. However, after a certain period of time and under certain circumstances the right to raise the opposition can be forfeited.
The injunction stays enforceable during the opposition proceedings. Enforcement may only rarely be stopped if the opposition is obviously going to be successful.
In cases where the injunction was granted by a judgement of a Court after an oral hearing the defendant may file an appeal to the superior Court. The time period for filing the appeal is one month.
What is a 'final declaration' with regards to preliminary injunctions?
The preliminary injunction is not a final and binding decision. To obtain a final decision the claimant must file main court proceedings and seek a judgement. Other than that the claimant can ask the defendant to recognize the injunction as final and binding. In cases where the defendant does not expect to successfully oppose to the injunction, a final declaration prevents him from further proceedings and related costs.
Can preliminary injunctions from Germany be enforced in other countries?
German preliminary injunctions may also be enforced in other Member States of the EU. The claimant needs to file a request for enforcement with the court in the Member States in which the injunction shall be enforced according to Article 38 (1) Regulation on Jurisdiction and Recognition and Enforcement of Judgements.
If the injunction was rendered ex parte, some countries within the EU do not acknowledge the decision and will not serve and enforce it. Therefore if enforcement is planned in such a country it is advisable to request an oral hearing when filing a preliminary injunction claim.
Regarding community trademarks and community designs, German courts may issue injunctions with effect for other Member States or the entire territory of the EU. The requirements are laid down in the Regulation on Community Trade Marks (CTMR) and the Regulation on Community Designs (RCD) and are very similar.
First, the claimant must be proprietor of a Community trademark or design and there must be an infringement in at least one Member State of the EU.
There are different conditions in which German courts have jurisdiction to issue an injunction in such infringement cases:
- The defendant is domiciled in Germany or, if not, has a subsidiary in Germany.
- The claimant is domiciled in Germany or, if not, has a subsidiary in Germany.
- The parties agreed on the jurisdiction of German courts.
If one of the requirements is fulfilled, German courts have jurisdiction to issue an injunction with effect to every Member State of the EU where an infringement is conducted.
What are the consequences for infringing a preliminary injunction?
If the defendant repeats the action prohibited under the injunction or takes a substantially identical action, the preliminary injunction is deemed to have been infringed.
If the defendant infringes the injunction, the claimant can file a request for a penalty order with the court. Such penalty may amount to EUR 250.000,00 maximum but normally starts at a lower amount. If the infringements continue the amount will then rise for every incident.
What are 'protective briefs'?
Protective briefs aim to prevent a Court issuing an ex parte injunction without having heard any arguments from the defendant. If you expect that someone else is going to file a preliminary injunction claim against you (e.g. if the other side sent you a warning letter) you may pre-emptively file a protective brief with the Court. This brief contains your arguments in defence for the alleged infringement case that might get filed by another party. The protective briefs do not necessarily prevent an injunction from being granted as the Court might disregard your arguments. However, in some cases it causes the Court to order an oral proceeding and not to issue the injunction ex parte. This allows the potential defendant to be heard before the Court's decision.