On Sept.. 1, 2008, the German Enforcement Act (Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums) entered into force. It implements the Enforcement Directive 2004/48/EC into German law. The bill aims to improve the position of holders of intellectual property rights in their battles against piracy. In this context, the Act modifies the wordings of the Patent Act (Patentgesetz), the Copyright Act (Urheberrechtsgesetz), the Trademark Act (Markengesetz), the Act on Utility Models (Gebrauchsmustergesetz), the Design Act (Geschmacksmustergesetz), the Act on the Protection of Semiconductors (Halbleiterschutzgesetz) and the Act on the Protection of Plant Variety Rights (Sortenschutzgesetz). Moreover, the German law has been adapted to the Anti-Piracy Regulation concerning customs action against goods suspected of infringing certain intellectual property rights, which introduces a simplified destruction procedure of piracy products. In addition, the rules of the Council Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs have been implemented.
The most important changes at a glance:
Right of information
Until now, the holder of intellectual property rights could only claim against the infringer to provide information on the origin and distribution networks of the goods or services that infringe an intellectual property right. However, the information about the person of the infringer often is in the possession of third parties like Internet providers. The Act gives the right-holder the new right to request the information about the infringer from those parties who:
- Were found in possession of the infringing goods
- Were found to be using the infringing services
- Were found to be providing services used in infringing activities
- Were indicated by the person referred to in point 1, 2 or 3 as being involved in the production, manufacture or distribution of the goods, or the provision of the services
This right has been a matter of considerable debate. The right-holder can only assert a claim against third parties in case of an infringement committed on a commercial scale. The right-holder can not only claim the information in the context of legal proceedings concerning the infringement of an intellectual property right, but also by means of a preliminary injunction if the infringement is obvious. In this respect, the German Enforcement Act goes even further than the provisions of the European Directive. The third party also has an opportunity for refusing to provide information, if the right to refuse to give evidence applies. It is especially important in cases where trade secrets are concerned.
In case the disclosure is only possible using the telecommunication traffic data, a previous judicial order is required.
Right to disclosure of and access to evidence
The right-holder may further require the party infringing on an intellectual property right with a sufficient likelihood (hinreichende Wahrscheinlichkeit) to produce the documents that evidence the infringement, or to make any object or proceeding that lies in the control of the opposing party available for inspection. In case of an infringement on a commercial scale, the right-holder can even require the infringer to communicate his banking, financial or commercial documents. The evidence can be preserved by means of a preliminary injunction where there is a demonstrable risk of evidence being destroyed or manipulated. The court will provide for the protection of confidential information (especially know-how), if necessary.
Right to destrudestruction, to recall and to final removal from the channels of commerce
The right-holder can require the infringer to destroy the infringing goods or copies at the infringer’s expense which the infringer posses or owns as well as the infringer’s materials and implements principally used in the manufacture of the infringing products. Alternatively, the holder of copyright and design right can claim the delivery of infringing products owned by the infringer against adequate payment which shall not exceed the cost of manufacture. Further, the holder of intellectual property rights can require the infringer to recall and definitely remove the infringing products from the channels of commerce. These rights only apply under restriction of commensurability, as well as in consideration of the interests of third parties.
The calculation of damages
The Act regulates the calculation of damages incurred. The right-holder can either calculate his damages on the basis of the actual losses, on the basis of the actual profits of the infringer, or on the basis of an adequate license fee. These provisions uphold the established practice of the courts. For reasons of practicality, the license method has been used more frequently than other calculation methods.
Right to publication of judicial decisions
In legal proceedings instituted for infringement of an intellectual property right, the courts may order, at the request of the applicant and at the expense of the infringer, the publishing of the decision. Such publication can result in a considerable damage to the infringer’s reputation. The extent, the manner of the publication and the choice of the medium depend on the scope of the justifiable interest of the prevailing party and is at the court’s discretion. This right had hitherto been recognized only in relation to copyrights and designs, and now has been extended to all intellectual property rights.