Global Brand Protection Webinar

Enforcing Trademark Rights through Interim Injunction Proceedings in Germany

Fabian Kunkel, a German lawyer specializing in IP（trademark law, explains the process of enforcing trademark rights through interim injunction proceedings in Germany.

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1. Mr. Kunkel outlines that it's common practice to first contact the opponent with a warning letter before initiating court proceedings. An accused infringer may seek a protective writ at a central register, can claim the cost for the proceedings when a trademark owner abruptly starts interim injunction proceedings without advance warning letter and the infringer immediately acknowledges the claims asserted.

2. He emphasizes that interim injunctions are provisional and mainly focus on injunctive relief to stop trademark infringement. Fabian notes that claims for damages cannot be pursued through interim injunction proceedings and must be addressed in main proceedings.

3. Fabian then discusses the requirements for an interim injunction, which include a claim for injunction and a ground for the injunction (so-called urgency requirement).

4. Fabian further explains the urgency requirement. The presence of urgency is examined by the owner’s swiftness in seeking an interim injunction after the owner becomes aware of the infringement. Courts find the loss of urgency if the plaintiff waits too long after becoming aware of the circumstances giving rise to the claim before asserting his claim in court. The standard for the urgency may be satisfied if the owner initiates the interim injunction proceedings within one month (e.g. Munich) to 2 months (e.g. Düsseldorf) from the discovery of the infringement.

5. Regarding the jurisdiction of the German court, German courts handle not only German trademarks but also EU trademarks. Courts may also exercise jurisdiction based on the flying jurisdiction. Courts issue interim injunctions based on EU trademarks enforceable in the entire EU region if the plaintiff or the defendant is based in Germany. If the plaintiff and the defendant are based outside Germany, the order is effective only within Germany.

6. Fabian talks about the process of the interim injunction. The court examines the request, and selects one option among three: immediate issuance of an interim injunction; seeks a response from the defendant; or holds an oral hearing. If an interim injunction is issued, the plaintiff must serve the injunction on the defendant. A lost party may appeal against the order. The burden of proof of arguments is not strict in interim injunction proceedings. Prima facie case is sufficient. The parties submit affidavits and documents to prove supporting facts.

7. Fabian states that a closing statement may be requested at the conclusion of the interim injunction. At that time, the defendant can accept the interim injunction as the final relief/resolution of the dispute and submit a closing statement. This way, the defendant may avoid main court proceedings.

Fabian shares with us that he has sent warning letters to defendants located within and outside EU. He stated that the protective writ is filed with the central register of the Frankfurt am Main Higher District Court. He states that the cost of interim injunction proceedings depends on factors such as the amount at disputes. If the defendant disobeys the court order, the defendant may be penalized up to 250,000 Euro.

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The presentataion can be accessed here.