In adjudication of intellectual property cases, German courts are divided into three tiers: the first-instance court is the intermediate court composed of three professional judges; the second-instance court is the high court composed of three professional judges; and the court of last resort is the federal court composed of five professional judges. Parties must retain lawyers as their legal representatives and they cannot represent themselves in court.

1.  Normal Civil Proceedings

From the point of view of the parties, the plaintiff is the owner of right or the authorized or licensed user of the registration. If the unregistered design or competition law is involved, only the manufacturer or the seller with exclusive rights has the standing to sue. The defendant might be the retailer, wholesaler, importer, agent or manufacturer. In other words, all the individuals or companies involved in advertising or selling the infringing goods might become infringers. Theoretically, companies for advertisement design and transportation might be deemed as infringers as well. 

The plaintiff can claim his rights to stop infringement, information, damages, and destruction of infringing products. Courts dealing with IP cases in Germany are comparatively concentrated. From North to South, they are mainly located in Hamburg, Berlin, Dusseldorf (its adjudication in patent cases enjoys worldwide reputation), Cologne, Frankfurt, and Munich.

A normal civil proceeding starts when the plaintiff files an action in the court. After the plaintiff pays the legal cost to the court, the court shall set a date for hearing arranged generally in 3-6 months after the claim is filed. Consequently, the defendant shall at the same time be required by a written order of the court to respond to the action within 2-4 weeks. (Normally the plaintiff will in his claim request for a default judgment when the necessary legal conditions are fulfilled. For example, if the defendant does not respond, or not retain a lawyer to appear in court, the court can make a default judgment.) The court shall render its judgment after 3-4 weeks of the hearing. Usually, a proceeding might need 5-6 months, and the time needed for appeal might be longer. If the appellate decision needs to be reviewed by the Federal Supreme Court, the whole proceedings might last 4-6 years. During this period of time, the judgment might be enforced, but it rarely occurs before the final and conclusive judgment is delivered.

2. Preliminary Injunction

Compared with other countries, Germany has shorter terms for civil proceedings. But as far as the proprietor of right is concerned, a normal civil proceeding could not be timely and sufficient. Because if the infringers do not stop the infringement on their own initiatives, the state of infringement may continue until the final and conclusive judgment is made. Although they may claim compensation for damages to the infringer, under German law the proprietor of right has to demonstrate his loss and submits evidence to prove it, which is not so easy. Moreover, if the infringers go bankrupt, a court judgment against the infringer can not be enforced. 

Therefore, preliminary injunction, a quick and effective means of legal remedy, is frequently initiated in protection of IPR. Although it is meant to give preliminary protection theoretically, sometimes final actual protection might be achieved within several hours through this proceeding.

Practices show that in the IP litigations in Germany, 60-65% of them commence with preliminary injunction, and most of them end with this proceeding. Compared with the normal civil proceeding, preliminary injunction has the following features:
(1) the situation is critical and urgent;
(2) the applicant needs only to submit the affidavit;
(3) no hearing is required;
(4) the court renders a ruling rather than a formal judgment, which needs not be substantiated with facts and reasons (the court can thus issue a preliminary injunction within a relatively short time);
(5) the ruling can be enforced immediately. 

The following process is a description of preliminary injunction based on a real case:
A German manufacturer discovers on a webpage that a Chinese company is providing products identical with its. And later it finds from the exhibitioner list from the website of an exhibition company that this Chinese company is coming to Germany to participate in an exhibition. The German company then retains a lawyer to make preparations, including downloading the materials concerning infringing products from the website of the Chinese company. When exhibitioners are arranging their booths, manufacturer or his lawyer can go to examine on the scene whether the infringing products are actually exhibited, to collect evidence including taking pictures, or to get the promotion brochure of the product. Then, the lawyer prepares an application for preliminary injunction, and submits it to the court through an express delivery service. The court immediately adjudicates without a hearing with the defendant. If the court believes the application is justified, preliminary injunction will be issued immediately. Upon receiving the preliminary injunction, the applicant can entrust the enforcement personnel of the court to serve the preliminary injunction to the exhibitioner’s booth, and enforce the preliminary injunction. There is no need to translate the preliminary injunction because it is served within the territory of Germany. If things proceed smoothly, only 4-6 hours are needed from the application to the enforcement of preliminary injunction. In such cases, applicants are generally the leading companies in the industry and have applied many times to the court for preliminary injunction for infringement on the same products by infringing conducts of the same nature. Under such circumstances, the court can make a decision in a very short time.  

As to enforcement, a preliminary injunction usually contains this paragraph: “The respondent is prohibited from providing, promoting through advertisement, and/or introducing in other ways the involved product which is shown in the following picture for commercial purpose within the territory of Germany.
If the respondent is found having violated this injunction, for each act of the violation, the court can impose a fine of up to € 250,000, or imprisonment as a substitute, or a sentence of 6 months in prison. ”

This means that the exhibitioner must take away immediately the alleged infringing products, the catalogue or relevant booklets from the exhibition booth. If the alleged right being infringed is trademark or design, the enforcement personnel can confiscate the products on display as requested. Under this circumstance, the products on the exhibition booth of the respondent might be taken away. If the exhibitioner refuses to comply and continues to exhibit the infringing products, the kind of conduct will be regarded as violating the express provision of the preliminary injunction, and the applicant can apply to the court for a determination of fine. The amount of fine can be as high as € 250,000. Therefore, the consequence of refusing to comply with the preliminary injunction is very severe.

If the proprietor of right files an application at the same time and requests the court to detain the property of the defendant for the expenses of enforcing preliminary injunction, the enforcement personnel can detain all the valuable items in the exhibition booth, including the non-infringing items. In general, the lawyer shall file the application for legal costs together with that for preliminary injunction in order to avoid enforcement in China.

This kind of preliminary injunction against exhibition is very common in Germany. During the 2006 International Hardware Exhibition, Cologne Intermediate Court issued about 50 preliminary injunctions. 

The infringed party must take immediate action and apply to the court for a preliminary injunction within 4-6 weeks after an infringement is found out.

With preliminary injunction, the proprietor of right can demand the infringer to stop infringement. But he cannot exercise his right to information, for example, asking the infringer to provide the name and address of the supplier or the purchaser, and damages must also be claimed through normal civil proceedings.

The applicant needs not produce evidence when filing the application for preliminary injunction. Will this result in abuse of preliminary injunction? In order to enable the court to reasonably and correctly render the decision, the applicant has to state all the relevant facts in the application for preliminary injunction, including the facts both favorable and unfavorable to him. The application shall be written by the lawyer. If the lawyer intentionally distorts the facts, he is subject to punishment under the Federal Act of Lawyers and even, if there is possibility, will be excluded from appearing in the same court. In accordance with law, the applicant must compensate all the losses the respondent has suffered. Therefore, the consequence of intentional abuse of a preliminary injunction is very serious.  

If the IP rights of Chinese companies or individuals are infringed in Germany, they can also apply for preliminary injunction. IPR protection in Germany covers patent, utility model, design, trademark and copyright registered in Germany. EU design patents and EU trademarks are also protected in Germany.

3. Countermeasures against preliminary Injunction

Preliminary injunction emerges out of practical needs. IP, as intangible property, can only be actually and effectively protected through prompt and timely crackdown on infringement. In Germany, a popular saying in the circle of IP goes as “The value of a property will be just reflected through the prices paid for its protection.” An IP division in Cologne Intermediate Court tries about 1, 000 cases every year, and 60-65% of them involve preliminary injunctions. This shows that German proprietors of rights attach great importance to IPR protection. At the same time, this also proves the importance of preliminary injunction for IPR protection. Through many years’ practice, judges and professional lawyers have been well-experienced in the operation of the procedure. Together with the precise legal provisions, preliminary injunction has become an indispensable legal remedy in the field of IP.

The following countermeasures can be taken against preliminary injunction: law provides that the applicant must give a warning to the infringer in advance, require him to stop his infringing conduct, and offer him a chance for amicable settlement of dispute. If the applicant files the application for preliminary injunction without a warning in advance, the respondent, on the premise of accepting preliminary injunction, may file a cost objection through his lawyer to the court so as to be exempted from the expenses of enforcing preliminary injunction. 

Of course, if the respondent does not agree with the preliminary injunction, he can file an objection to the injunction itself to the court through his lawyer. The court shall hold a hearing, and render a judgment after hearing the arguments of the parties. Each of them may appeal if they are discontented with the judgment. The appellate judgment is the final and conclusive judgment for the procedure of preliminary injunction. If the respondent insists that no suitable evidence is produced in the procedure of preliminary injunction, and also thinks that he has a good chance of winning in the normal civil proceeding, he can compel the other party to file a civil action. If the other party refuses to do so, he can apply to the court through his lawyer and require the preliminary injunction to be revoked. If the trademark of the applicant is cancelled or the patent expires, the respondent can also request through his lawyer the court to cancel the preliminary injunction.

Would an agreement of desisting from infringement mean acknowledgment of infringement and thus result in an unfavorable situation in a civil proceeding? If the respondent agrees to accept the preliminary injunction, in order to avoid a civil proceeding to be filed by the applicant, he can send a written announcement to the applicant and express his willingness to accept the preliminary injunction. Whether such an announcement can exempt him from other civil liabilities, in other words, whether the case can “end all troubles” at this stage, shall depend on whether both parties can enter into a relevant agreement through negotiation.

The principle concerning expenses in such circumstances in Germany is like this: the losing party shall bear the legal cost and lawyer’s fee of both parties according to legal provisions. The lawyer’s fee that needs to be compensated shall be determined by the amount in dispute in accordance with law. Generally speaking, the more the amount in dispute is, the more the expenses will be.

For example, the usual amount in dispute and expenses for first instance and second instance trials are:

If one party or both parties retain additional patent lawyers, the expenses are to rise in a large margin. Patent lawyers might be engaged in cases involving technical patent, design and trademark infringement, and they can charge in accordance with law just like lawyers.

Lawyers and their clients can stipulate the charges based on the time spent, and this expense might be higher or lower than the fee provided by law. At present, Germany prohibits lawyers from determining the consultation fee based on the success or failure of the litigation. 

Finally, as a law practitioner, I would like to offer some suggestions to Chinese exhibiters. Before participating in the exhibition, they should conduct market research of and inquire into the relevant rights. The ideal method is to directly contact the German cooperators because they know well about the market condition. Furthermore, German lawyers specialized in the field of IP are very capable and very dedicated to their work, and they enjoy favorable prestige in the courts. Therefore, consultation with professional lawyers is of vital importance, because legal expertise and experience are highly required in the whole process from the statement of cease and desistence from infringement responding to a warning letter, to the final statement after receiving a preliminary injunction, until the response to civil proceedings, in order to avoid bearing bigger compensation and to resolve the dispute efficiently. Some of the Chinese exhibiters think that their cases are “closed” when the infringing items at the exhibition booths are taken away. They are totally perplexed when they still receive a preliminary injunction later. The main reason for this is the lack of knowledge of German law and the lingering Chinese mentality in Germany.

Therefore, Chinese businesspeople should in any case immediately consult lawyers when they confront disputes. They should take measures as quickly as possible, and actively seek chances of settling the dispute amicably outside the court. The earlier the countermeasures are taken, the lower the expenses would be. Because, from warning letter to preliminary injunction until civil proceeding, new expenses would be produced at every further stage. Chinese businesspeople should not take the naïve view that the judgments rendered by the German courts can not be enforced in China, and hence rest easy. If they do not want to give up the German market or the European market, Chinese businesspeople should not stay passive and trust blindly their “luck”. Instead they should face the problems actively and try to resolve the disputes as quickly as possible, because a court judgment with legal force can be enforced at another time or against other products, which might also produce an unfavorable impact on their business in Germany. Meanwhile, do not forget, the enforcement personnel of the court might be waiting for you at the next exhibition.

This article was Dieter Kehl’s speech given in Beijing in April, 2007, and was adjusted by Meiting Zhu. Dieter Kehl, the chief judge of Germany Cologne Middle Court, and Meiting Zhu, a lawyer, were invited to Beijing to give a speech by Koelnmesse.  

                                                                                             (Translated by Ma Jing)