Preliminary injunctions
Germany
In Germany, PI proceedings are a potent tool for trade mark owners to rapidly stop infringements. Despite their temporary nature, PIs often pave the way for a lasting resolution of conflicts (eg through subsequent negotiations).
Urgency
Obtaining a PI is not only dependent on having an underlying claim for injunctive relief, but also on meeting the essential criterion of 'urgency'.
- German courts generally presume 'urgency' in trade mark infringement cases. However, this presumption doesn't hold when the petitioner's actions suggest that they do not regard the matter as urgent.
- The petitioner must also make their request for a PI within a specific timeframe. Different courts have varying interpretations of this timeframe. As a rule of thumb, the PI request should be made within a month of the date when the petitioner first became aware of the infringement. Some courts extend this timeframe to six weeks, and in exceptional cases, up to two months.
- A PI can be issued if a trade mark infringement has already occurred or is, at least, imminent. The filing of a trade mark application for an infringing sign can constitute such an imminent infringement.
Remedies
PIs are limited to specific types of claims, primarily those seeking injunctive relief. Claims related to damages, for instance, fall outside the scope of PIs. Main proceedings do not need to be already pending for the issue of a PI; they can be initiated simultaneously or at a later date. In practice, 'standalon requests for PIs are more common.
Evidence and level of proof
- Means of evidence are more limited, with affidavits often providing the most valuable evidence.
- In PI proceedings, the facts presented by the parties only need to seem more likely than not upon initial review to be accepted. The same level of proof is not required as in main proceedings, where judges need to be convinced beyond a reasonable doubt.
- Irreparable harm is generally not needed for a PI under German law.
Remedies
PIs are limited to specific types of claims, primarily those seeking injunctive relief. Claims related to damages, for instance, fall outside the scope of PIs. Main proceedings do not need to be already pending for the issue of a PI; they can be initiated simultaneously or at a later date. In practice, 'standalon requests for PIs are more common.
Evidence and level of proof
- Means of evidence are more limited, with affidavits often providing the most valuable evidence.
- In PI proceedings, the facts presented by the parties only need to seem more likely than not upon initial review to be accepted. The same level of proof is not required as in main proceedings, where judges need to be convinced beyond a reasonable doubt.
- Irreparable harm is generally not needed for a PI under German law.
Ex parte injunctions
A PI can be issued without a hearing if the respondent has had sufficient opportunity to present their views. For that reason, the petitioner will typically issue a warning letter prior to applying for a PI. To avoid the need for a hearing, the letter must meet specific formal criteria:
- A clear description of the allegedly infringing act.
- An unambiguous request for the respondent to issue a cease and desist declaration with a contractual penalty clause (combined with the petitioner’s threat to initiate legal proceedings upon failure to comply with that request).
- A reasonable deadline for the respondent to respond (typically one to two weeks, with shorter deadlines in exceptional cases).
Hearings
There are two different routes to obtaining a PI:
1. Without a hearing (via a court order). In this scenario, the PI becomes effective, and needs to be complied with, upon service of the court order on the respondent by the petitioner.
2. With a hearing. Alternatively, the court can schedule a hearing and subsequently decide the matter through a judgment. This typically happens when certain aspects of the case are not straightforward, and the judges require further discussion in court. A PI issued this way becomes effective through delivery of the judgment by the court.
Ex parte injunctions
A PI can be issued without a hearing if the respondent has had sufficient opportunity to present their views. For that reason, the petitioner will typically issue a warning letter prior to applying for a PI. To avoid the need for a hearing, the letter must meet specific formal criteria:
- A clear description of the allegedly infringing act.
- An unambiguous request for the respondent to issue a cease and desist declaration with a contractual penalty clause (combined with the petitioner’s threat to initiate legal proceedings upon failure to comply with that request).
- A reasonable deadline for the respondent to respond (typically one to two weeks, with shorter deadlines in exceptional cases).
Hearings
There are two different routes to obtaining a PI:
1. Without a hearing (via a court order). In this scenario, the PI becomes effective, and needs to be complied with, upon service of the court order on the respondent by the petitioner.
2. With a hearing. Alternatively, the court can schedule a hearing and subsequently decide the matter through a judgment. This typically happens when certain aspects of the case are not straightforward, and the judges require further discussion in court. A PI issued this way becomes effective through delivery of the judgment by the court.
Appeal opportunities
Once a PI is issued, the respondent has several options. They can accept the PI as binding and final, force the petitioner to bring a main action, or file an appeal. PIs can also be lifted at the request of the respondent due to a change in circumstances.
- Acceptance of the PI is a suitable option if the respondent doesn't see a chance to dispute the infringement. Accepting the PI as final is then a cost-effective measure to resolve the dispute permanently. This can also be done as part of a larger settlement, containing concessions on both/either side (eg regarding costs).
- The respondent may wish to force the petitioner to file a main action, for instance, if they see a better chance of winning the case on the merits. This applies to cases which are based on complex and disputed facts (eg aspects that can only be clarified with the involvement of experts).
- Filing an appeal (or opposition) against the PI is the typical remedy for the respondent if they are in a good position to argue that the PI should not have been issued (eg because the matter was not urgent or because there was no infringement).