This country-specific Q&A provides an overview to intellectual property laws and regulations that may occur in Germany.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/practice-areas/intellectual-property-third-edition/
What different types of intellectual property rights exist in your jurisdiction to protect: (a) Inventions; (b) Brands; (c) Other creations, technology and proprietary interests
1 What different types of intellectual property rights exist in your jurisdiction to protect:
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
- Supplementary protection certificates (for medicinal products and plant protection products);
- Utility models;
- Confidential information and confidential know-how: protection of trade secrets is provided through the Act on the Protection of Trade Secrets (Gesetz zum Schutz von Geschäftsgeheimnissen, GeschGehG) which entered into force on 26 April 2019 and implements Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
- Registered trade marks
- Unregistered trade marks established by
- market recognition or
- notoriety within the meaning of Article 6 of the Paris Convention for the Protection of Industrial Property 1883 (Paris Convention)
- Business names: company names and work titles enjoy protection similar to trade marks under German trade mark law
- Geographical indications, designations of origin, traditional speciality
- Supplementary protection of creative property under competition law
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
- Registered design rights;
- Copyright, database rights;
- Semiconductor topography rights;
- Plant variety rights;
- Protection of confidential know-how and business information (trade secrets). Trade secrets in the sense of the Act on the Protection of Trade Secrets (Gesetz zum Schutz von Geschäftsgeheimnissen, GeschGehG) means information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question and has commercial value for that reason; and
(b) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret; and
(c) there is a legitimate interest in keeping it secret.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents are protected as of the date of filing for a maximum period of 20 years, subject to payment of the annual renewal fees starting from the second year following the filing date, Section 16 Patent Act.
Special provisions apply to inventions in the field of pharmaceuticals and plant protection products, in which case their protection period can, under certain circumstances, be extended by supplementary protection certificates for up to five years following expiry of the maximum period of protection and for a further period of up to six months in case of recognised studies on medicinal products for paediatric use, Section 16a German Patent Act, Art. 13(2), (3) Regulation 1768/92/EC.
(b) Utility models
Utility models are protected for up to 10 years from the date of filing, provided the renewal fees are paid after the third, sixth and eighth year following the filing date, Section 23 Utility Model Act.
(c) Confidential information
The Act on the Protection of Trade Secrets replaces the previously existing provisions on trade and company secrets contained in Sections 17 et seqq. Act against unfair competition. Contrary to the previous provisions, the new Act on the Protection of Trade Secrets does not stipulate a time limit for the protection of trade secrets, but trade secrets remain protected as long as they qualify for trade secrets in the sense of the Act. Under certain circumstances, the use of a third party’s know how may also be the basis for civil claims according to Sections 3 Act against unfair competition, 826 Civil Code or Sections 823(1), 1004 Civil Code.
To ensure the protection of confidential information, it is recommendable to have employees and contractual partners sign non-disclosure agreements which ideally should contain a contractual penalty for unauthorized disclosures.
(d) Trade marks and business names
Registered trade marks are protected for ten years and can be renewed indefinitely for further periods of ten years. For the renewal, it is necessary and sufficient to pay the renewal fees before the expiration of each ten year term plus a grace period of six months. Trade marks must be used in a genuine way, lack of use for an uninterrupted period of five years causes trade marks to be liable for revocation due to non-use.
Unregistered trade marks are protected as long as the acquired reputation / notoriety subsists.
Company names are protected until definite discontinuation of business or definite discontinuation of usage of the business designation. Work titles are protected until definite abandonment of the title.
(e) Geographical indications
Protection of geographical indications lasts as long as the producer complies with the relevant specifications of the protected location.
(f) Supplementary protection of creative property under competition law
Supplementary protection of creative property under Section 4 No. 3 Act against unfair competition is not an intellectual property right per se and has no general limit of duration. Subject matter of this supplementary protection is not the imitated product as such, but rather the particular manner of how a third party achievement that is eligible for protection is used and utilized for the purposes of competition.
(g) Registered designs
Design protection starts on the date of registration. The initial term of protection is five years and the protection can be renewed for another five years at the end of each term of protection by payment of the renewal fees, up to a maximum period of 25 years from the filing date, Section 27 Design Act.
(h) Copyright and database rights
Copyright protection lasts for 70 years following the end of the year of the author's death, Section 64 Act on Copyright and Related Rights. There are exceptions and different terms for special cases, such as a term of 50 years regarding rights of performers, producers and broadcasters. Databases are protected for 15 years after the publication of the database, but expire after 15 years following its production if the database was not published within that period. While copyright protection cannot be renewed, for databases, a new term of protection may apply where an existing database following a major change is considered as a new database.
(i) Semiconductor topography rights
Semiconductor topography rights are protected for ten years following the year when the protection started, Section 5(2) Semiconductor Protection Act. The protection cannot be extended.
(j) Plant variety rights
Once the plant variety right is granted, it is valid for a maximum duration of (1) 25 years and (2) 30 years in the case of hops, potatoes, wine and tree species, Section 13 Act on the Protection of Plant Varieties.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
(a) Patents/Utility models
The first owner is the inventor. However, German law distinguishes between the "right to the invention", the "right to the patent" and the "right conferred by the patent". The right to the patent (being a monetary, proprietary right) may differ from the right to the invention and may be assigned to a third party. The inventor has to be named on the application, but the applicant can be a different party.
For employee inventors, the Act on employee inventions applies and provides for an assumption that the employer has claimed the invention if the employer has not released the invention within four months following its notification by the employee.
(b) Confidential information
Certain confidential information – referred to as trade secrets – are protected under the Act on the Protection of Trade Secrets. Proprietor can be any individual or company which has obtained a trade secret, inter alia by own discovery. In that sense the "first owner" would be the respective discoverer.
(c) Trade marks and business names
The first owner of a registered individual or collective trademark is the applicant in whose name the trade mark is registered. For unregistered trademarks, the first owner is the person in whose favour the recognition or the notoriety is acquired.
The first owner of the right to a company name is the owner of the respective business. For work titles it is the author of the work and anyone who legally uses the title for the work, e.g. the publisher.
(d) Supplementary protection of creative property under competition law
Supplementary protection of creative property under competition law is not an intellectual property right per se and has no "first owner".
(e) Registered designs
The first owner of a registered design is the applicant in whose favour the design is registered.
Where a design was created by an employee in the execution of his duties or following the instructions given by his employer, the right in the design shall belong to the employer, unless otherwise provided by contract.
(f) Copyright and database rights
For copyright, the first owner of the right is the author of the work. This also applies to software developed by employees, but an automatic license is granted to the employer, see below. For database rights, it is the producer of the database.
Where an author has created the work in the fulfilment of obligations resulting from an employment or service relationship, the copyright is with the author, unless otherwise provided in accordance with the terms or nature of the employment relationship.
Where a computer program is created by an employee in the execution of his duties or following the instructions of his employer, the employer exclusively shall be entitled (licensed) to exercise all economic rights in the computer program, unless otherwise agreed.
(g) Semiconductor topography rights
The right to apply for the registration of a semiconductor topography right vests in the creator, Section 2(1) German Semiconductor Protection Act. According to Section 3(2) No. 4 German Semiconductor Protection Act, the application must include information on the entitlement of the applicant with respect to Section 2 German Semiconductor Protection Act.
Where a topography was created by an employee in the execution of his duties or following the instructions given by his employer, the right in the topography shall belong to the employer, unless otherwise provided by contract.
(h) Plant variety right
The first owner of a plant variety right is the applicant in whose favour the plant variety is registered. However the same principles as for patents, utility models and registered designs apply, Section 8, 9 Act on the Protection of Plant Varieties.
Which of the intellectual property rights described above are registered rights?
Patents, utility models, semiconductor topography rights, registered trade marks, registered design rights and plant variety rights.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
All of these intellectual property rights, except for plant variety rights, are to be applied for at the German Patents and Trademarks Office. The plant variety rights must be applied for at the German Federal Plant Variety Office.
(a) Patents, utility models, semiconductor topography rights
The German Patents and Trademarks Office does not examine whether the applicant holds the material (monetary) rights to the invention and therefore generally anyone who can provide the necessary information and documents can apply for a patent, utility model or semiconductor topography right.
In order to avoid the substantive examination of the patent/utility model application being delayed due to the need to establish the identity of the inventor, the applicant shall be deemed, in the proceedings before the German Patents and Trademarks Office, to be entitled to request the grant of the patent, Section 7 Patent Act, Section 13(3) Utility Model Act.
(b) Trademarks and registered designs
In general it is the same for trade marks and designs. However, collective trademarks can only be applied for by incorporated associations.
(c) Plant variety rights
The German Federal Plant Variety Office also does not examine whether the applicant is entitled to apply for the plant variety.
(d) Procedure for registration
By filing the application documents and paying the application fee the applicant secures the date relevant for the priority of the application. The German Patents and Trademarks Office / the German Federal Plant Variety Office then examine the application to a different extent depending on the respective IP right. If the application complies with the legal requirements and if there is no obstacle to registration, the German Patents and Trademarks Office / the German Federal Plant Variety Office enter the IP right in the respective register. The registration is published in the respective journal. The owner receives a certificate of registration.
How long does the registration procedure usually take?
The registration procedure for patents takes 24 to 30 months on average, provided that the examination request has been filed within the initial four months from the filing date and the examination fee has been paid.
The procedure for the registration of utility models is much faster and takes approximately three to four months.
In theory, the registration procedure of trade marks is completed within about seven to eight months. There is the possibility of accelerated processing which is subject to an additional fee. The trade mark will then be registered within six months after filing.
For registered design rights, the registration usually takes two to four weeks after the receipt of the application fee.
Semiconductor topography rights are similar to utility models and also unexamined IP rights, therefore the registration procedure is completed relatively fast as well.
For plant variety rights the registration procedure takes approximately 12 to 24 months.
Do third parties have the right to take part in or comment on the registration process?
Any third party can oppose a patent within nine months following publication of the grant of the patent, Section 59 German Patent Act.
The German utility model does not recognize an opposition in that sense, but third parties can apply for cancellation under Section 15 Utility Model Act. This cancellation action is similar to the opposition against a patent, as it is also filed at the German Trademarks and Patents Office as the first instance, Section 16, 17 Utility Model Act. There is no deadline for filing.
The proceedings are generally the same for semiconductor topography rights, Section 8 Semiconductor Protection Act in connection with Section 17 Utility Model Act.
The owner of an earlier trade mark can oppose a trade mark within three months after publication of the registration, Section 42 Trademark Act.
For registered design rights the German Law does not provide for an opposition period and a design can only be challenged via action for invalidity before the German Trademarks and Patents Office (Section 34a Design Act) or via counter-claim in infringement proceedings before the court.
Any third party can oppose the registration of a plant variety under Section 25 Act on the Protection of Plant Varieties. The deadline depends on the grounds of the opposition.
What (if any) steps can the applicant take if registration is refused?
An appeal to the Federal Patent Court is available against the orders/decisions of the German Patent and Trademarks Office regarding all registered rights, Section 73 Patent Act, Section 18 Utility Model Act, Section 66 Trademark Act, Section 23(4) Design Act, Section 4(4) S.3 Semiconductor Protection Act, Section 36 Act on the Protection of Plant Varieties.
What are the current application and renewal fees for each of these intellectual property rights?
With regard to patents, the application fee for online filing (including ten patent claims) amounts to EUR 40. The extra fee for each additional claim is EUR 20. The application fee for paper filing (including ten patent claims) is EUR 60 and the extra fee for each additional claim is EUR 30 in this case. The fee for the search request amounts to EUR 300. The examination fee after filing of a search request is EUR 150, without prior search request it is EUR 350. The annual fees for maintaining the patent range from EUR 70 for the third patent year to EUR 1940 for the 20th year.
(b) Utility models
For utility models the application fee is EUR 40 (EUR 30 if filed electronically). The fee for a prior search, which is not mandatory, amounts EUR 250. The 1st maintenance fee has to be paid after 3 years and amounts EUR 210. The 2nd maintenance fee in the amount of EUR 350 is to be paid after 6 years, the 3rd maintenance fee after 8 years amounts to EUR 530.
(c) Trade marks
For individual trade marks the application fee (including up to three classes) amounts to EUR 300 (EUR 290 for electronic filing). For the 4th class and for each additional class, an additional class fee of EUR 100 applies per additional class. Accelerated examination of the procedure costs an additional fee of EUR 200. The renewal fee (including class fee for up to three classes) amounts to EUR 750. The renewal fee for the 4th class and for each additional class is EUR 260.
The application fee (including class fee for up to three classes) for collective trade marks amounts EUR 900. The class fee upon filling the application for the 4th class and for each additional class is EUR 100. Accelerated examination of the procedure costs an additional fee of EUR 200. The renewal fee (including class fee for up to three classes) is EUR 1800, the class fee upon renewal for the 4th class and for each additional class is EUR 260.
(d) Registered designs
The cost of the initial term of protection of five years (with publication of the representation of the design) for an individual application of a design is EUR 60 for electronic filing. The cost of paper-based filing is EUR 70.
For multiple applications the fee is EUR 6 per design for electronic filing, but at least EUR 60. For paper-based flings it is EUR 7 per design, but a minimum of EUR 70.
For an initial period of protection of 30 months (deferment of the publication of the representation of the design), the individual application of a design costs EUR 30. For multiple applications it is EUR 3 per design, but at least EUR 30.
The extension fees after deferment of the publication of the representation are EUR 30 for an individual application, for multiple applications it is EUR 3 per design, but minimum EUR 30.
The renewal fees for each registered design (also in a multiple registration) range from EUR 90 for the 6th year to up to EUR 180 for the 25th year.
(e) Semiconductor topography rights
The application fee for the semiconductor topography rights is EUR 300.
(f) Plant variety rights
For plant variety rights the application fee is EUR 600. The annual fee starts from min. EUR 60 up to max. EUR 1,040 depending on species group and year of protection.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
For the annual fees of patents, supplementary protection certificates and patent applications, for the renewal fee of trade marks and the maintenance fee for utility models and registered designs, there is a two months deadline to pay the due fee without surcharge and a further four months to pay the fee with a surcharge of EUR 50, Section 7 Patent Cost Act. If the annual, renewal or maintenance fee is not paid at all, not paid on time or not paid in full the intellectual property right will be deleted from the register and loses its protection. For plant variety rights the consequence of not paying the annual due fee is regulated in Section 31(4) No. 3 Act on the Protection of Plant Varieties. The plant variety is cancelled if the fee is not paid after an additional deadline set by the German Federal Plant Variety Office.
What are the requirements to assign ownership of each of the intellectual property rights described in section A?
Patents, utility models, know-how and trade secrets, trade marks, registered designs, semiconductor topography rights and plan variety rights can be freely assigned to any third party. The assignment of German intellectual property rights does not require a written or other special form to be valid and can even be based on oral agreements. However, assignments should always be in writing and recorded for the purpose of evidence and clarity.
Company names are assigned when transferring the business in total; they cannot be isolated from the company. Work titles are also transferred together with the work.
According to Section 29(1) Copyright Act, the copyright cannot be assigned, but only be inherited, Section 28 Copyright Act. Instead of an assignment, parties usually grant exclusive licenses to the broadest extent possible.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Registration is not required for the validity of an assignment. However for registered rights, the respective registers grant a legal presumption of the validity and ownership, as well as of the exclusive right to use the protected IP right. Also, pending recordal of the assignment, the new owner may not be able to conduct certain proceeding before the German Patents and Trademarks Office. It is therefore advisable to register the assignment.
What are the requirements to licence a third party to use each of the intellectual property rights described in section A?
No special form is required for a patent licence; but licences should be recorded in writing for reasons of evidence. For utility models and topography rights, the same principles apply.
There are also no formal requirements for licences of trade marks and design rights under German law. Company names cannot be licenced under German law. It is controversial whether work titles can be licenced themselves or only in connection with the work.
For copyright licences, there are no formal requirements, with the exception of licences covering future works that are not specified, or are only referred to by type. These must be in writing to be valid.
There are no formal requirements for know-how licences either.
No special form is required for a plant variety licence, Section 11 Act on the Protection of Plant Varieties.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
There is no requirement to register a licence of any German intellectual property rights. Registration is not required for a licence to be effective against third parties.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Non-exclusive licensees generally need the consent of the rights owner to initiate legal proceedings.
The exclusive licensee is considered to be eligible to initiate legal proceedings regardless of the consent of the proprietor unless it has been otherwise agreed upon in the licence agreement.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Yes, there are:
An infringement of a patent right (Section 142(1) Patent Act), of an utility model (Section 25 Utility Model Act), of a topography right (Section 10(1) Semiconductor Protection Act) or acquiring, using or disclosing a trade secret without authorisation to a third party (Section 23 Act on the Protection of Trade Secrets, Section 203(1), (2) Criminal Code), an infringement of the trade mark right (Section 143(1) Trademark Act), an infringement of a registered design right (Section 51(1) Design Act), an infringement of the copyright (Sections 106 et seq. Copyright Act) and an infringement of the plant variety rights (Section 39(1) Act on the Protection of Plant Varieties) can result in imprisonment for up to three years or a fine, in case the infringement was committed deliberately.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in section A? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
- Regular civil court infringement, non-infringement and cancellation proceedings
- Preliminary injunctions
- Proceedings before the German Patents and Trademarks Office (including opposition and cancellation)
- Alternative dispute resolution
What is the length and cost of such procedures?
In regular court proceedings, the length and cost depends on the complexity of the proceedings, technical matter, service requirements to non-European defendants as well as on the court and workload.
Preliminary injunctions can in many cases be obtained within 24 to 48 hours following the filing, if the court grants the preliminary injunction without an oral hearing.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
For patents, utility models, trademarks, designs, copyright and unfair competition, the relevant pieces of legislation concentrate court proceedings with specified courts in each Federal State.
Proceedings are initiated by a complaint. The court may then order written proceedings or schedule an early oral hearing.
The time to trial depends on the procedure chosen by the court in regular proceedings, and can vary from a few months until the oral hearing to over a year. Following the oral hearing, the court will close the proceedings and issue a decision in due course.
Remedies available include injunctive relief, disclosure of information and rendering of accounts, damages, destruction of goods, publication of the decision etc.
In preliminary injunction proceedings, a decision can be obtained within 24 to 48 hours. Remedies available include, depending on the IP right involved, injunctive relief, a very limited claim for disclosure of certain information, surrender of goods to a sequester, right to inspection.
What customs procedures are available to stop the import and/or export of infringing goods?
Customs procedures may either be based on the EU Product Piracy Regulation and/or national law.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Non-court enforcement is not mandatory. However, in order to avoid bearing of costs if the defendant in court proceedings accepts the claim immediately, it is advisable to send a prior warning letter and request a declaration to cease and desist.
What options are available to settle intellectual property disputes in your jurisdiction?
Disputes can be settled out of court, but also in court as part of court proceedings.
What is required to establish infringement of each of the intellectual property rights described in section A? What evidence is necessary in this context?
To establish infringement of any intellectual property right, the plaintiff must prove all facts of the case that sum up to a prohibited act; in general regardless of fault, intent or negligence.
In the absence of the consent of the proprietor of the patent, third parties are prohibited from:
- producing, offering, putting on the market or using a patented product, or importing or possessing the product for such purposes;
- using a patented method or offering the method for use; and
- offering, putting on the market, using or importing, or possessing for such purposes, a product obtained directly from a patented manufacturing method.
This also applies to equivalent infringements, where a third party does not use a feature of the claimed invention but an equivalent feature that has the same effect as the clamed feature, Section 9 Patent Act.
In accordance with Section 10 Patent Act a third party is also not allowed to supply or to offer to supply within Germany an essential element of the invention, when the third party knows or it is obvious, that such action is suitable and intended to be used for exploiting the invention.
(b) Utility models
The grounds for infringement of utility models are the same as for patent infringements.
(c) Confidential Information / Trade Secrets
Under the Act on the Protection of Trade Secrets, a trade secret may not be obtained through either unauthorized access to, appropriation or copying of documents, objects, materials, substances or electronic files that are under the lawful control of the owner of the trade secret and that contain the trade secret or from which the trade secret may be derived; or any other conduct which, in the particular circumstances, does not comply with the principle of good faith, having regard to honest market practice. In addition, a trade secret may not be used or disclosed by someone who obtained it in breach of the Act on the Protection of Trade Secrets or by violating an obligation to restrict the use of said trade secret or by violating an obligation not to disclose a trade secret. Furthermore, a trade secret shall not be obtained, used or disclosed by anyone who has obtained the trade secret through another person and knows or ought to know at the time of its obtaining, use or disclosure that that other person has used or disclosed the trade secret in breach of the Act on the Protection of Trade Secrets, especially if such use consists in the manufacture, offering for sale, placing on the market or importing, exporting or storing for such purposes of infringing products. Exceptions exist, however, where the trade secret is obtained, used or disclosed for a legitimate interest such as the disclosure of a criminal act or in the exercise of the freedom of speech and freedom of press.
The burden of proof for a violation of the Act on the Protection of Trade Secret is with the owner of the secret whereas the person who obtained, used or disclosed the trade secret has to proof that an exception to the prohibition applies.
In addition, using a third party's trade or business secret despite being obliged by law to keep it confidential, constitutes a criminal offence and can be punished with prison of up to two years or a fine. Furthermore, disclosing a third party's business secrets, thus committing an unlawful act, can establish an act of unfair competition.
(d) Trade marks
Without prior permission of the proprietor, third parties are prohibited to use
- an identical sign for identical products or services;
- a sign, which can create confusions, because of its identity or its similarity to the other sign and the products and services for which this sign stands for;
- an identical sign for different products and services, when the use takes unfair advantage of or when the use damages without justification the distinctive character or the repute of the trade mark which has a reputation in Germany.
(e) Business names
The grounds for infringement of a protected business name are the same as for trade mark infringements.
(f) Geographical indications
Indications of geographical origin may not be used in the course of trade for goods or services which do not originate from the place, area, territory or country which is designated by the indication of geographical origin if it is likely to mislead concerning the geographical origin should such names, indications or signs for goods or services of different origin be used. If the goods or services marked by an indication of geographical origin have special properties or a special quality, the indication of geographical origin may only be used in the course of trade for the corresponding goods or services of this origin if the goods or services have these properties or this quality. If an indication of geographical origin enjoys a particular reputation, it may not be used in the course of trade for goods or services of a different origin even if it is not likely to mislead concerning the geographical origin if use provides without good cause an opportunity for goods or services of a different origin to take unfair advantage of, or be detrimental to, the reputation of the indication of geographical origin or its distinctive character.
For geographical indications that are protected as collective trademarks, please see above d) Trade marks.
(g) Supplementary protection of creative property under competition law
Subject of supplementary protection is not the imitated product as such, but the particular manner of how a third party achievement that is worthy of protection is used and utilized for the purposes of competition. An act of unfair competition occurs where a person offers goods or services that are replicas of goods or services of a competitor if he
- causes avoidable deception of the purchaser regarding their commercial origin;
- unreasonably exploits or impairs the assessment of the replicated goods or services;
- dishonestly obtained the knowledge or documents needed for the replicas.
(h) Registered Design
According to Section 38a Design Act, a design infringement action can be brought where a third party manufactures, offers, puts on the market, imports, exports or uses a product which contains or uses the registered design, or possesses such product for the mentioned reasons. Also when, in the view of an informed user, a design produces the same overall impression as the earlier design.
A copyright infringement action can be brought for violation of the owner's exclusive rights set out in Sections 12 to 23 Copyright Act,
- right to publish the work,
- Right to be named as the author,
- Rights regarding distortion and other mutilation of the work
- Right of duplication,
- Right of distribution,
- Right of exhibition,
- Right of presentation of the work,
- Right of making the work available to the public,
- Broadcasting right,
- Rights of editing and rearrangement.
Regarding database rights, it is prohibited to copy and/or distribute the data base and/or to make it available to the public, Section 87b Copyright Act.
(j) Semiconductor topography rights
Under Section 6 Semiconductor Protection Act, third parties not having the owner's consent are prohibited from reproducing the topography and from offering, putting on the market or distributing, or importing for such purposes, the topography or the semiconductor product containing the topography.
(k) Plant variety rights
A plant variety right infringement action can be brought for violation of the owners exclusive rights to
- produce, to condition for purposes of propagation, to place on the market, to import or export propagating material of the protected variety, or
- to store propagating material of the protected variety for one of the purposes designated above,
to carry out acts in accordance with aforementioned regarding other plants or parts of plants, or products obtained directly therefrom, if propagating material was used in their production without the consent of the holder of the plant variety right, and the holder of the plant variety right did not have an opportunity to exercise his/her variety protection right with regard to this utilisation.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular – a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Information must be provided by the parties to the proceedings, the Court will generally not undertake any own fact-finding. Courts may however appoint experts for technical fact-finding.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
The claimant is required to substantiate the claims and, where disputed, provide or offer evidence. The court then decides on which evidence is required. Where evidence is confidential, there are certain ways to limit disclosure to a limited amount of people only and/or exclude the public from parts of the oral hearing.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Courts can order the parties to attend the hearing and can hear the parties and/or witnesses. While cross-examination is not available under German law, the court can in principle allow the parties to address questions to the witness directly; however, in most cases, only the judges will interact with the witnesses.
What defences to infringement are available?
Defences to infringement are for example:
- Invalidity of the intellectual property right - for example cancellation for non-use of a trademark,
- statutory exemptions, for example Section 23, 24 Trademark Act (descriptive use, exhaustion),
- experimental use,
- use for making an application for market authorisation,
- non-commercial use,
- compulsory licence (FRAND cases),
- forfeiture of rights,
- statutes of limitation,
- antitrust law defence.
Invalidity of the patent is not a defence as such. However, the court can stay infringement proceedings pending the outcome of the bifurcated invalidity proceedings in front of the patent office.
Who can challenge each of the intellectual property rights described above?
Owners of prior rights based on these. In addition, anyone can file for cancellation claiming that the IP right is not eligible for protection.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Prior rights can be invoked during opposition proceedings, but also thereafter at any time. Challenges to the validity of rights can usually be done before the offices or in court and/or as counterclaim in infringement proceedings.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Intellectual property rights can be challenged before the respective office which granted the right and/or (if these proceedings fail) before the regular courts. Grounds for invalidity include e.g. non-eligibility for protection, cessation of the owner, failure to use a trade mark in a genuine way or that rights have been registered in bad faith.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?
(a) Declaratory relief
A negative declaratory relief for non-infringement can be filed with regard to all IP rights. The person seeking a declaratory judgment must show a legitimate interest in obtaining the declaration. Such legitimate interest may exist for example where that person has previously received a warning letter for alleged infringement in the respective case and wants to clarify that what he/she is doing, does not infringe the specific IP right.
(b) Licences of right
Under certain conditions, it is possible to apply for a compulsory license, for example under Section 24 Patent Act or under FRAND principles in cases of standard-essential patents. The main field of application of compulsory licensing is patents (involving antitrust considerations). In trade mark law compulsory licenses are not admissible, because they could lead to a deception of origin. In copyright law, there are provisions for compulsory licenses, but they are of hardly any practical importance.
(c) Right of prior use
As concerns patents, utility models and designs, the so called "right of prior use" is codified in Section 12 Patent Act, Section 13(3) Utility Model Act and Section 41 Design Act. The proprietor of the IP right shall not exercise rights against a third party who, before the date of filing, has in good faith commenced use in Germany, or has made effective and serious preparations to that end, of an identical invention or design which was developed independently of a registered patent, utility model or design. The third party is then entitled to use the invention / design.
(d) Exhaustion of IP rights
Parallel to the IP laws of the European Union, German law also provides for provisions on exhaustion of rights. The so called exhaustion of an IP right means that a good may freely circulate after the first legitimate sale in Germany, and the legitimate IP holder cannot oppose the successive acts of use, such as reselling.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?
- Preliminary injunctions, for example regarding restraining orders, rendering of information and seizure of goods by the court bailiff and permanent injunctions;
- declaratory relief;
- injunctive relief;
- disclosure of information and accounts;
- handing over documents in the possession or property of the infringer;
- delivery up / destruction of infringing products;
- recall of infringing products and removal from the market;
- publication of the decision, for example under Section 140e Patent Act, Section 24e Utility Model Act and Section 21 Act on the Protection of Trade Secrets;
- Reimbursement of the statutory legal costs and fees for bringing the action.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
In general, the cost of enforcement proceedings depend on the complexity of the proceedings, technical matter, service requirements to non-European defendants and the conduct of the other party.
The costs for IP right enforcement proceedings follow the general principle that the losing party bears the costs, i.e. the court fees and the costs of the successful party, in relation to the claim on which the respective party lost. In case of partial loss/win, the costs will be split accordingly. The reimbursement of the costs is based on the value of the matter in dispute and is a certain amount of fees stipulated under statutory law, i.e. it is usually not the actual cost incurred; in many cases, the actual cost incurred may be higher than the cost reimbursement.
Under Section 110(1) Civil Code, a claimant domiciled outside the EU or EEA must generally provide security for costs upon the defendant's request. However, there are several exemptions to this rule that are listed in Section 110(2) Civil Code. In patent law, this general provision is supplanted by the largely identical Section 81(6) Patent Act.