In particularly urgent cases, intellectual proper-ty rights owners may apply for a preliminary injunction instead of, or at the same time as, proceedings in the main case. 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 he becomes aware of all relevant circumstances of the infringement of his 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 cease-and-desist claim 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 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 for 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 on receipt by the court. As for the proceedings in the main case, jurisdiction is held by the specialised patent litigation chamber of any of the 12 selected district courts in Germany. Preliminary injunction proceedings are brought most frequently before the regional courts of Duesseldorf, Mannheim, Munich, Frankfurt 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 informally in order to give him the opportunity to withdraw the request. This is because withdrawal at this point in time not only results in considerably lower costs, it also avoids the request being sent to the opposing party, who is thus not pre-warned with regard to a subsequent challenge.
If the court deems the request to be founded, it can issue a preliminary injunction without hearing the opponent (ex parte).
This is particularly common and necessary in trade fair matters because by the time the opponent has been heard a preliminary injunction would regularly be too late.
If the court has doubts about the merits of the claim, it will order an in-person oral hearing to allow the opponent to give his view (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 only evidence admissible in the oral hearing is demonstrative evidence, such as, in particular, certificates and the testimony of witnesses or experts presented by a party. The court then gives its decision, usually on the same day as the oral hearing.
An oral hearing or at least hearing the oppo-nent’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 his attorney for the action. This so-called execution (hereinafter referred to as enforcement in line with the terminology in main cases) of the preliminary injunction is in-cumbent upon the claimant. He must carry this out within one month of the date of issuanceof the preliminary injunction. The claimant is not obliged to effect the enforcement since in doing so he assumes liability for any damages which the opponent may suffer as a result of the enforcement should the preliminary injunction be lifted by a higher 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 him the issued preliminary injunction to induce him to observe the intellectual property right.
The opponent can lodge an objection against the issuance of a 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 to 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 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 to an injunction) and that the enforcement of the patent-in-suit by means of the preliminary injunction rather than by the usual, slower main proceedings, is necessary and justified (grounds for an injunction).
3.1 Claim to an injunction
The same as in principal proceedings, the claimant must first set out his entitlement to assert the injunction claim against the opponent. He 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. In particular, unlike in principal proceedings, reference may 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 his 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.
Of particular importance is the so-called urgency with respect to time. The claimant must show that he 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 o longer than one month from the time he 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 district 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 licence for the patent-in-suit to well-known competitors has an indicative effect that the patent-in-suit is valid. In individual cases, and in particular according to the case law of the Düsseldorf courts, it may be advisable for the claimant to await the outcome of a 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 (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 prelimi-nary injunction is a summary decision which requires consideration of a number of factors and the assessment of the substantiation of a variety of facts.
The court can make the enforcement of the preliminary injunction subject to the provision of security by the claimant in order to secure potential disadvantages the opponent may suffer from the enforcement.
The effectiveness and danger of preliminary injunctions lie not only in the speed with which they are issued and the summary examination of the entitlement of the claims being asserted, but principally in the surprise effect when they are issued ex parte.
Particularly in order to avoid this surprise effect, in other words to ensure that an oral hearing is held, but also as a means of ensuring that the opponent’s defence arguments are heard, the filing of protective letters by the defendant is provided for by law.
An anticipatory brief is a precautionary brief by a potential opponent, which sets out all the defence 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 he does not file a claim for the issuance of a preliminary injunction.
Lodging an anticipatory brief, 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 antic-ipatory brief. Further, the court will usually assume that the opponent comprehensively presented his legal defence in the anticipatory brief so that it might issue ex parte injunction without hearing the opponent further.
The costs of an anticipatory brief 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 danger of particular damages 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.