In particularly urgent cases, intellectual property rights owners may apply for a preliminary injunction instead of, or at the same time as, proceedings on the merits. Speed is often imperative if an infringing product is launched on the market, especially if it is sold at an undercut price causing lasting damage to the intellectual property rights owner for which he is unlikely to be adequately compensated.
For a preliminary injunction to be issued there must be a clear infringement of intellectual property rights without serious doubt as to the validity of the patent or utility model. The intellectual property rights owner is also required to act quickly as soon as they become aware of all relevant circumstances of the
infringement of their rights.
Patent and utility models are basically enforced in the same way. The following therefore applies to the assertion of both patents and utility mod-els, except where express reference is made to differences.
A preliminary injunction primarily makes it possible to enforce the claim for injunctive relief quickly, such as for example stopping the display of infringing products at a trade fair or the import of the infringing products into Germany.
In case of an obvious infringement of intellectual property rights, the rights owner can also request information about the origin of the in-fringing product and its distribution channels. However, a claim for damages and the claim for rendering of accounts in preparation of the damages claim cannot be asserted by means of a preliminary injunction.
For securing the right to destroy infringing goods a safe custody by the bailiff can be ordered by the court in order to prevent their sale or delivery. However, their destruction requires a subsequent order by a court.
A request for the issuance of a preliminary injunction is submitted to the presiding judge immediately upon receipt by the court. As for the proceedings on the merits, jurisdiction is held by the specialized patent litigation chamber of any of the 12 selected regional courts in Germany. Preliminary injunction proceedings are most frequently brought before the Regional Courts of Duesseldorf, Mannheim, Munich and Hamburg.
If a preliminary examination of the request satisfies the court that the request for the issuance of a preliminary injunction has very little chance of success, the court will often notify the claimant of its assessment in order to give them the opportunity to withdraw the request. This is because withdrawal at this point in time results in considerably lower costs. However, in contrast to previous practice, on the basis of two decisions dated September 30, 2018 (docket no. 1 BvR 1783/17 and 1 BvR 2421/17) issued by the Federal Constitutional Court in the field of press law, it is to be assumed that such an indication is put on record and is sent to the opponent, so that it becomes aware of the pending request for a preliminary injunction.
If the court deems the request to be founded, it can issue a preliminary injunction without hearing the opponent (ex parte).
However, in the two aforementioned decisions, the Federal Constitutional Court clarified that in general, such ex parte injunctions for enforcing the right to procedural equality of arms only come into consideration, if the opponent was previously heard, meaning that the opponent was given the opportunity to comment on the accusations. For example, this is the case if the opponent was given the opportunity to reply to a pre-trial warning letter, either by an extrajudicial letter of response or by filing a protective letter (see item 4 in this regard) if it is ensured that the individual substantiation in the request for a preliminary injunction and in the warning letter are identical and the pre-trial responses of the opponent are available to the court in full.
According to the findings of the Federal Constitutional Court, however, there is an exception from the principle of prior hearing of the opponent if the hearing would obstruct the purpose of the preliminary injunction proceedings. Thus, it remains to be seen whether this exception will be affirmed in the case law of courts of lower instances in highly time-critical situations, such as, for example, trade fair matters, or if at least a warning on short notice is necessary.
If the opponent did not receive a pre-trial warning letter (and there is no threat of an obstruction of the purpose of the preliminary injunction proceedings either) or if, after consideration of the warning letter and a corresponding response, the court has doubts about the merits of the claim, it will order an oral hearing (inter partes proceedings). This usually takes place between three weeks and three months after the request is filed, depending on how busy the court’s schedule is. At the oral hearing, the case is extensively discussed. The court then renders its decision, usually on the same day.
An oral hearing or at least hearing the opponent’s arguments in writing may exceptionally be in the claimant’s interest if the opponent has its place of business abroad. For in case a preliminary injunction is issued without the opponent having been heard, enforcing such preliminary injunction abroad may be problematic.
A preliminary injunction issued by a court only has legal effect from the date it is served on the opponent and/or its attorney for the action. The claimant is responsible for this so-called execution (hereinafter referred to as enforcement in line with the terminology in proceedings on the merits) of the preliminary injunction. It must carry it out within one month of the date of issuance of the preliminary injunction. The claimant is not obliged to effect the enforcement as, in doing so, it assumes liability for any losses the opponent may suffer as a result of the enforcement, should the preliminary injunction be lifted by the appeal court.
Obtaining a preliminary injunction without enforcing it can nevertheless be useful in order to point out the legal situation to an essentially law-abiding opponent by informally sending them the issued preliminary injunction to induce them to observe the intellectual property right.
The opponent can lodge an objection against the granted preliminary injunction (when it has been issued without an oral hearing) or an appeal (when it has been issued following an oral hearing). Lodging an objection or an appeal cannot prevent the enforcement of the preliminary injunction, i.e. the injunction order remains in force until the court has decided on the objection or appeal. Only in very few exceptional cases can the opponent request the enforcement of the preliminary injunction to be cancelled. Objection or appeal proceedings last between two and six months, depending on the amount of business the court is dealing with. An appeal on points of law is not admissible. Should a request for the issuance of a preliminary injunction be rejected, the claimant is entitled to lodge an objection (in the case of rejection without an oral hearing) or an appeal (in the case of rejection following an oral hearing). These means are of little practical importance, since the preliminary effect is lost, especially in trade fair matters, if it is not granted immediately.
In the case of a preliminary injunction being granted, the timescale for preliminary injunction proceedings in patent and utility model matters is typically as follows:
In order to obtain a preliminary injunction, the claimant must “substantiate by prima facie evidence” that the patent-in-suit has been infringed (claim for injunctive relief) and that the enforcement of the patent-in-suit by means of the preliminary injunction, rather than by the usual, slower proceedings on the merits, is necessary and justified (grounds for an injunction).
3.1 Claim for injunctive relief
Just as in proceedings on the merits, the claimant must first demonstrate their right to an injunctive relief against the opponent. They must substantiate the facts on which this claim is based. While substantiation does not require full evidence, it must nevertheless prove an overweighing degree of probability. As means of substantiation any evidence is permissible, provided that it can be put before or presented to the court at the oral hearing, such as, for example, certificates or present witnesses. In particular, unlike in proceedings on the merits, reference may also be made to affidavits.
3.2. Grounds for an injunction
In examining the grounds for an injunction the court weighs the different parties‘ interests. The interest of the claimant in having its intellectual property right enforced immediately to prevent imminent disadvantages must be weighed against the disadvantages which the opponent might suffer as a consequence of the issuance and/or enforcement of the preliminary injunction.
What is of particular importance is urgency. The claimant must show that it has reacted as quickly as possible to the identified infringement of the intellectual property right by the opponent. Although there is no absolute or legal time limit, the claimant should wait no longer than one month from the time it obtains certain knowledge of the infringement of an intellectual property right and the infringer’s identity before filing a claim for the issuance of a preliminary injunction. On the question of urgency, rulings by the competent regional courts can differ quite considerably.
The claimant’s interests are regarded as less worthy of protection, especially if the validity of the patent-in-suit is not deemed to be sufficiently secure, i.e. if pending nullity or opposition proceedings against the patent-in-suit have a good chance of success. Previously successful nullity or opposition proceedings, or the granting of a license for the patent-in-suit to well-known competitors has an indicative effect regarding the validity of the patent-in-suit. In individual cases, and in particular according to the case law of the Düsseldorf and Mannheim courts, it may be advisable for the claimant to generally await the outcome of pending nullity or opposition proceedings before submitting the request.
In the case of a claimant wishing to enforce a utility model which has been registered by the German Patent and Trade Mark Office without examination of the protectability of the subject matter of the claim (a so-called registration property right), a detailed submission and substantiation of the protectability of the subject matter of the claim must be made.
3.3 The court’s decision
The court’s decision on the request for a preliminary injunction is a summary decision which requires the consideration of a number of factors and the assessment of the substantiation of a variety of facts. The court can subject the enforcement of the preliminary injunction to the provision of a security by the claimant in order to secure potential disadvantages the opponent may suffer due to the enforcement.
The effectiveness and risks of preliminary injunctions lie in the speed with which they are issued and the summary examination of the entitlement to the claims being asserted. Even if the relevance of surprising effects of the issuance of ex parte injunctions (without prior warning letter) decreased due to the aforementioned decisions of the Federal Constitutional Court, such ex parte injunctions are still possible.
To avoid the surprise resulting from this, in other words to ensure that an oral hearing is held, but also as a means of ensuring that the opponent’s defense arguments are heard in any case, the filing of protective letters by the defendant is provided for by law.
A protective letter is a precautionary brief by a potential opponent, which sets out all the defense arguments that could prevent the issuance of a preliminary injunction, or at least delay it. Protective letters are deposited in the central, transnational, electronic register of protective letters without reference to an already pending procedure. They shall be deleted six months after its submission. The potential claimant remains unaware of this if it does not file a claim for the issuance of a preliminary injunction.
Lodging a protective letter, however, entails the risk that a request for the issuance of a preliminary injunction is made conclusive only by the statements of the opponent in the protective letter. Further, in case of a protective letter, in particular if it is lodged in reaction to a prior warning letter, there is the risk that the court may consider the protective letter to constitute a sufficient hearing of the opponent, so that it might issue an ex parte injunction without hearing the opponent further.
The costs of a protective letter are reimbursable in proceedings for determination of costs if a request for the issuance of a preliminary injunction is in fact submitted.
A claim for the issuance of a preliminary in-junction should be considered if, as a result of an infringement of intellectual property rights, there is the risk of particular losses for which there is no compensation and hence there is an urgent need to stop the infringement as quickly as possible. This is typically the case in the run-up to or during important trade fairs, or in the case of a competitor launching an infringing product in Germany.
On the other hand, by enforcing a preliminary injunction, the claimant assumes liability should the injunction be subsequently lifted, be it because the patent-in-suit proves invalid, be it that there is insufficient evidence to justify the urgency of the claim, or be it because the infringement of the patent-in-suit is not determined.