Intellectual property proceedings in Germany

Despite the fact that the intellectual property law applicable in the territory of EU countries has been harmonized to a large extent, there are significant differences between the laws of the individual EU member states legal regulations within the scope of the procedures applied and ways of pursuing claims concerning the protection of intellectual property. As a result, unfamiliarity with German intellectual property law often results in legal proceedings, which could have been prevented by seeking legal advice well in advance. It is worth pointing out that in the event of receiving an interim order or a lawsuit, it is necessary to seek professional legal advice, as there is absolute legal attorney-compulsion before German courts in proceedings concerning intellectual property. 

Abmahnung – call for an infringement in Germany

The first action in intellectual property infringement proceedings, which is still taken at the pre-judicial stage, is usually to send a warning letter (German: Abmahnung) to the infringer with a request to stop infringement (violation). This warning letter is used in cases of infringement of patents, utility models, industrial designs, trademarks and copyrights. The warning letter is most often accompanied by a model of a so-called cease-and-desist declaration (German: Unterlassungserklärung).

What does the einstweiliges Verfügungsverfahren mean?

If the infringer to whom a warning letter has been issued does not sign a statement to desist from the infringement, the party whose rights have been infringed is entitled to apply for an interim court order (Einstweilige Verfügung). It is important to note that usually only a few days pass between the filing of the application and the issuance of the order, and the opposing party (the infringer) is often not informed of the ongoing proceedings against him at all.

An interim order shall be issued when the applicant identifies and substantiates the claimed claims and there is an urgent need for a decision in the case. An interim order shall be issued only if there is a danger that, in the absence of the interim order, the applicant will not be able to successfully assert his claim in the future. It becomes enforceable as soon as it is served on the other party to the proceedings.

The opposing party is entitled to an objection (Widerspruch) against the order, the filing of which is not subject to any time limit. Once an objection is filed, the court sets a date for a hearing, which is usually held within one to two months of the objection being filed. After the hearing, the court issues a judgment against which the parties are entitled to appeal (Berufung).

Proceedings initiated by the filing of a lawsuit

As the opponent is usually unable to demonstrate the urgency of the case, the application for an interim order is abandoned in favour of filing a lawsuit. The typical court proceedings initiated by the filing of a lawsuit then take place, in which the plaintiff may not only request an injunction, but also request details of the infringement, an order for the damage of the goods or compensation.

Compulsion of attorneys

In intellectual property cases, the so-called attorney-compulsion applies. This means that only attorneys who are members of the German Bar Associations may appear before German courts. Therefore, the handling of the case should be entrusted to an attorney specialised in IP law, i.e. a certified specialist attorney (Fachanwalt für gewerblichen Rechtsschutz), in order to bring the proceedings to a successful conclusion for the party.

Grau Rechtsanwälte PartGmbB has been supporting clients in the field of non-judicial and judicial intellectual property infringement proceedings throughout Germany for many years.

If you have any further questions, please contact our office on +49 (0) 40 180 364 or email office@graulaw.eu.