Procedure

Germany

Preliminary injunction proceedings. In cases of (special) urgency, a trade mark owner can file an application for a preliminary injunction with the competent regional (civil) court of law. It should be filed within a specific time (generally one-two months, depending on the competent regional court) of becoming aware of the infringement and the infringer’s identity.

Main proceedings. If the infringer doesn’t acknowledge the preliminary injunction as final and binding, the trade mark owner must institute main proceedings before the competent main (civil) court of law. Since preliminary injunction proceedings are not compulsory, trade mark owners can also institute main proceedings "from the off". Remedies available in preliminary proceedings are generally limited to injunctive relief. Damages can only be claimed in main proceedings.

Warning letter. Before initiating infringement proceedings, the claimant should first send a cease and desist letter to the defendant, requesting a declaration in which the defendant agrees to stop using the conflicting sign immediately against a contractual penalty. In many cases, conflicts can be settled out of court following a warning letter in a cost- and time-efficient manner.

First instance. Trade mark disputes are exclusively heard by the competent regional (civil) courts, where they are often handled by specialised civil chambers or commercial chambers. Claims based on the infringement of a European Union trade mark are referred to regional courts designated as European Union Trademark Courts.

Court of Appeal. First instance decisions may be appealed to the respective higher regional court within one month of service of the first instance decision. The appellate court’s decision may, under certain circumstances (eg to ensure uniform case law or where the matter is of fundamental significance), be appealed on points of law to the German Federal Court of Justice.

In main proceedings, the means of proof are limited to documents (eg contracts, out of court correspondence, pictures), witnesses, visual inspection, expert opinions and party testimony.

In preliminary injunction proceedings, the admissible evidence is limited to means of proof that are readily available at the hearing (in particular, documents and witnesses present at the hearing). Affidavits can substitute for witness testimony and play a key role in preliminary injunction proceedings.

A general principle for the burden of proof is that the party relying on anything that is supportive of their case bears the burden of proof. For instance, the claimant bears the burden of proving the infringement, whereas the defendant bears the burden of proving that the claimant's rights were exhausted.

In main proceedings, all relevant facts must be fully proven to the satisfaction of the court (beyond a reasonable doubt). In preliminary injunction proceedings, a less strict standard of proof applies. Here, prima facie evidence is sufficient, ie the court merely has to consider the existence of the fact to be predominantly probable. In practice, the difference is rarely significant.

There is no discovery in German civil proceedings such as the discovery proceedings in, for example, the United States and United Kingdom.

A preliminary injunction can be granted within a few days to a few weeks and, in cases of special urgency (eg infringements at trade fairs), even within a few hours. Ex parte injunctions (ie injunctions without notice to the defendant) are available, provided that the defendant has been given sufficient chance to reply to the claims in out of court correspondence, in particular through a detailed cease and desist letter.

For main proceedings, a judgment can usually be expected within one year of filing the statement of claims. Appeal proceedings before the regional courts may take longer (typically, one to two years). Appeals before the Federal Court of Justice usually take around two years. However, the duration of proceedings depends on the individual case and the workload of the responsible court.

There is no discovery in German civil proceedings such as the discovery proceedings in, for example, the United States and United Kingdom.

A preliminary injunction can be granted within a few days to a few weeks and, in cases of special urgency (eg infringements at trade fairs), even within a few hours. Ex parte injunctions (ie injunctions without notice to the defendant) are available, provided that the defendant has been given sufficient chance to reply to the claims in out of court correspondence, in particular through a detailed cease and desist letter.

For main proceedings, a judgment can usually be expected within one year of filing the statement of claims. Appeal proceedings before the regional courts may take longer (typically, one to two years). Appeals before the Federal Court of Justice usually take around two years. However, the duration of proceedings depends on the individual case and the workload of the responsible court.

German law generally allows the successful party to recover their legal costs, but only on the basis of statutory fees. These fees will generally be significantly lower than the actual fees incurred for the action.

Statutory fees for an average pre-trial warning letter can also be recovered provided the claim is well founded. They will often be in the range of EUR1,500 - EUR3,000, depending on the complexity of the matter.

Statutory court and lawyer’s fees in an infringement action are calculated based on the value of the proceedings. This value is determined by the court seized, taking into account factors such as the reputation of the infringed trade mark and the scope and severity of the infringement.

Court costs can vary from around EUR3,500 (first-instance) and EUR4,500 (appeal) to around EUR17,000 (first-instance) and EUR23,500 (appeal) depending on the value of the claim.

Statutory court fees must be paid in advance by the claimant. In addition, claimants from non-EU/non-EEA countries may be obliged to provide security for the entire costs of the proceedings (including the statutory lawyer’s fees) upon demand of the defendant. This security can be provided in the form of a bank guarantee or a money deposit. It is supposed to protect the defendant from having to claim costs abroad if the claim is dismissed.

Statutory lawyer's fees are also calculated based on the (fictitious) value of the claim. Typical fees can vary from around EUR5,000 (first instance) and EUR6,000 (appeal) to around EUR15,500 (first instance) and EUR17,500 (appeal). Higher fees can be recovered in exceptional cases. Actual costs charged on the basis of hourly fee arrangements often exceed the statutory fees.

The winning party can request reimbursement of the statutory court and lawyer’s fees, but not of the actual costs exceeding these statutory amounts.