What are the causes of counterfeiting and piracy in Germany?
Unmonitored online sales are the major cause of counterfeiting and piracy in Germany.
Which are the goods that most often face counterfeiting and piracy in Germany?
Luxury accessories and goods like watches, handbags, etc.
Does Germany have a well-established framework for the enforcement of Intellectual Property Rights (IPRs)?
What are the specific laws/orders/rules laid down in Germany for the enforcement of Intellectual Property Rights?
They specific laws include - The Copyright Act (UrhG), the Patent Act (PatG), the Trademark Act (MarkenG), the Utility Model Act (GebrMG), the Designs Act (GeschMG), and the Act Against Unfair Competition (UWG).
What are the different types of IPRs protected by IPR enforcement in Germany?
Copyright, Patents, Trademarks, Utility Models, and Designs are the different types of IPRs protected by IPR enforcement in Germany.
What are the general IPR enforcement obligations in Germany?
All proceedings before a German court and the Patent and Trade Mark Office are held in German. The parties cannot agree to use a different language.
What are the essential to-dos before an IP rights holder initiates the enforcement proceedings?
A cease and desist letter is not mandatory, but the claimant should send one to avoid financial disadvantages under section 93 of the Civil Procedure Code (Zivilprozessordnung, ZPO). This states that the claimant must bear all judicial costs if the defendant's behaviour has not given rise to the claim and the defendant acknowledges the claim immediately.
However, under section 12(1) of the Act against Unfair Competition (Gesetz gegen den unlauteren Wettbewerb, UWG), a cease and desist letter should be sent before initiating court proceedings. Therefore, some courts refuse to grant a preliminary injunction in trademark infringement cases if the applicant has not sent a cease and desist letter.
Is there any limitation period for filing an infringement action?
Yes. The claims for damages and injunctive reliefs are subject to a limitation period of 03 years, commencing at the end of the year in which the claim arises and the claimant obtains knowledge of the circumstances giving rise to the claim and the infringer’s identity, or would have obtained such knowledge, had it not shown gross negligence (Sections 195 and 199 of the Civil Code). However, the statutory limitation period for claims on the basis of unjustified enrichment is 10 years.
A request for criminal prosecution must be filed within 03 months of the day on which the trademark owner becomes aware of the infringement and the infringer’s identity.
Which of the following IPR enforcement channels is/are available in Germany?
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
Are civil actions available for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in civil litigation?
Which of the following types of civil remedies is/are available in Germany?
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Are there any other civil remedies available in Germany than the ones mentioned above? If yes, then kindly explain in brief.
Other civil remedies include publication of judgments.
What is the approximate timeline of civil litigation related to IPR enforcement in Germany?
The duration of proceedings depends on the circumstances of each case. For main proceedings, the first instance usually takes 01 to 02 years.
What happens if an IP rights holder abuses the enforcement measures in civil litigation?
Are there any disadvantages of civil litigation in Germany? If yes, then kindly give 2-3 points?
Is criminal prosecution available in Germany for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in criminal prosecution?
Which is the responsible authority in Germany corresponding to the types of criminal remedies available? Also, mention the imprisonment term and the monetary fine.
A) Responsible Authority - Specialised district and small claims courts, specialised chamber of the higher courts of appeal (Oberlandesgerichte), and the Federal Court of Justice (Bundesgerichtshof)
B) Imprisonment Term - Trademark: Up to 03 or 05 years (if the infringer acted commercially); Copyright: up to 03 years
C) Monetary Fine - The infringer is obliged to compensate the damages that the trademark owner suffered if the infringer acted culpably, that is, with wilful misconduct, gross negligence, or at least simple negligence. The German law provides only for compensatory damages. Typically, the trademark owner, and in certain circumstances the exclusive licensee, is entitled to damages. In general, damages amount to the lost profits of the rights holder. As the standards to prove lost profits are high, and thus, often difficult to meet, the established German case law accepts two methods for calculating damages:
The infringer must pay a fictitious licence fee to the trademark owner calculated on the basis of the volume of the illegal sales; or
The infringer must pay the rights holder a sum that is equal to the profits resulting from the trademark infringement.
Are there any other criminal remedies available in Germany than the ones mentioned above? If yes, then kindly explain in brief.
What happens if an IP rights holder abuses the enforcement measures in criminal prosecution?
Are there any disadvantages of criminal prosecution in Germany? If yes, then kindly give 2-3 points?
Are there any alternative dispute resolution mechanisms which allow parties to resolve their dispute out of court?
The German persons or legal entities involved in intellectual property disputes can appeal to the alternative dispute resolution (ADR) methods provided by WIPO.
Arbitration and ADR methods are rarely used in Germany. However, they are possible in trademark infringement matters and an arbitral award in such cases has the same effect as a court decision. A registered trade mark cannot be invalidated by an arbitral award.
There is no specific arbitration or other dispute resolution mechanisms available for conflicts between a trade mark and a ‘.de’ domain name.
Are border control measures (customs) available in Germany for the enforcement of IPRs?
Is the IP rights holder required to present reasonable evidence to the customs authority/department to support his claims of infringement against the opposing party/importer of counterfeit goods?
What are the remedies available under border control measures (customs) in Germany?
The remedies available under border control measures (customs) in Germany include damages.
Who must bear the costs of customs intervention during enforcement?
The applicant must bear the costs of customs intervention during enforcement.
What happens if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs?
The goods are released from detention for commerce if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs.
Which are the best practices for enforcement of IPRs in Germany?
Are there any risks involved in the enforcement of IPRs in Germany? If yes, then kindly give 2-3 points.