Preliminary injunctions in Germany provide a quick and cost-effective tool for owners or exclusive licensees of European or German intellectual property rights. Such injunctions can be obtained ex-parte (without notice to the alleged infringer) at a modest cost and can be served, and therefore enforced, immediately on the infringer. As such, they provide European rights owners or exclusive licensees with a vital tool in the battle against infringers.
Preliminary injunctions can be used to enforce, cease and desist claims, to request information from the infringer and to secure the destruction of infringing goods. They can therefore provide owners of IP rights with vital information as to distribution channels, as well as preventing further infringement.
In order to secure an injunction, the applicant must demonstrate to the court the following:
- That the matter is urgent. The standard usually applied is that the applicant should take action within four weeks after becoming aware of the infringement.
- Where the injunction relates to a patent, that its validity is beyond doubt. This criterion is met if a patent has survived an opposition or nullity procedure. Trade marks and design rights must be registered if they are to be relied upon (except for unregistered Community Design).
- That there is a clear infringement. The judge must be able to understand the scope of IP rights without the help of an expert. This makes injunctions based on patents slightly more complicated than those based on trade marks and design rights.
A warning letter to the infringer is not required and, in many instances, is not desirable; for example, if the applicant is concerned that the infringer may take steps to move infringing goods or other evidence. However, it must be borne in mind that if no warning letter is sent and the infringer immediately concedes upon receipt of the injunction, the applicant for the injunction will bear the infringer's costs and the court fees.
The application must not be served on the infringing party before filing it with the relevant court. Contrary to a regular law suit in Germany, the applicant does not need to prove the infringement; he must only make it plausible to the court. This means that an application for an injunction can be prepared and filed at court relatively quickly (provided that all documents and/or affidavits are available) and cost-effectively. This is a distinct advantage over the procedure and requirements of many other European countries.
The judge may consider the application with or, as is more frequently the case, without an oral hearing and will usually make a determination within a few hours or a few days after receiving the application. The speed of the process means that a preliminary injunction is particularly useful for taking action against infringements where the infringer will only be in Germany for a limited time, for example during a trade fair.
It is also worth bearing in mind that an injunction can be obtained in anticipation of an infringement. If rights owners are aware that an infringer will be exhibiting at a trade fair and is likely to be exhibiting infringing goods, an injunction can be secured in advance of the fair and served at the fair itself. This prevents the display of the infringing goods, sends a clear message to other infringers and secures evidence in Germany. The Wragge & Co Munich IP team has substantial experience of these procedures in venues around Germany.
If the court declines to grant the injunction, then the application can be withdrawn or the negative decision appealed. The opponent will not generally be made aware that an application for a preliminary injunction has been made or declined. So the applicant could seek to secure the injunction at another court, or even issue regular proceedings. Even if the injunction is granted at a later stage and served upon the infringer, the opponent will remain unaware that an application was initially refused.
If an injunction is granted, it must be served upon the opponent within one month. If the applicant fails to do so, the injunction will cease to be enforceable. The injunction usually needs to be served on the opponent through a bailiff.
The opponent must decide whether to accept or appeal the injunction. The opponent is entitled to request at any time that the applicant initiates main proceedings. If the opponent does not contest the injunction within two to four weeks of service, then the applicant could send the opponent a termination letter, seeking an undertaking that the opponent accepts the preliminary injunction as a final injunction and renouncing all of its legal remedies. If that demand is not met, then the applicant must commence legal proceedings.
The recoverable costs of the injunction are determined by the court and will depend upon the court's view as to the economic importance of the infringed right(s). Generally, most preliminary injunction applications result in a costs award amounting to between EUR 5,000 and EUR 20,000.
It is also worth noting that, if a preliminary injunction is granted and properly enforced, the applicant is liable for any damages which the opponent may have suffered as a result of its enforcement in the event that a court later finds the preliminary injunction was not justified and should not have been granted. For those familiar with the English system, this is broadly equivalent to a cross-undertaking as to damages.
A preliminary injunction issued from the German courts can have a number of uses. It can be used against infringing advertising but could extend to preventing the importation and sale of infringing products. It may further include a request for information with regard to suppliers and secure the destruction of the infringing goods.
Conversely, it is also advisable to be prepared in the event that you might be alleged to infringe a competitor's rights; for example, during a trade fair in Germany. The German legal system provides the means to set up an effective defence against any applications for a preliminary injunction by filing protective letters.