Trademark infringement

Particularly in the area of intellectual property, the focus is often on a request for injunctive relief, which can be enforced in summary proceedings. In addition, the facts of the case are rarely in dispute between the parties and are therefore more a matter of law than of fact. A hearing of evidence, such as that conducted in regular main proceedings, e.g. by hearing witnesses, is therefore generally unnecessary. For these reasons, main proceedings rarely take place in the field of intellectual property. Summary proceedings are often the quicker, cheaper and more effective way to enforce one’s rights.

Unlike regular proceedings on the merits, summary proceedings in court can initially only clarify the claim for injunctive relief, but not the so-called annex claims, such as claims for information and damages. However, this disadvantage is quickly put into perspective in practice. This is because these claims are regularly asserted as part of the warning letter even before an application for a preliminary injunction is filed. And at the latest when a preliminary injunction has been issued in accordance with the application and has become legally binding, it is usually clear that the court would also confirm the other claims in proceedings on the merits. In most cases, an interim injunction therefore generates sufficient pressure to enforce claims that go beyond the injunction claim.

From the claimant’s perspective, the warning letter has several advantages. First of all, it formally serves to give the opponent the opportunity to defend himself or to acknowledge the claim without having to go to court. If you were to go to court without a prior warning and your opponent immediately acknowledged the claim, you would win but would still have to bear the costs of the proceedings.

From the warning party’s point of view, the warning letter also offers the opportunity to build up pressure and enforce claims without the need for a court hearing, which could otherwise only be enforced in proceedings on the merits. These include, in particular, claims for information and damages.

The advantages of summary proceedings can only be claimed if the matter is dealt with urgently. In this context, the so-called urgency requirement is of central importance. Put simply, you have one month from the time you first become aware of the circumstances giving rise to the claim to apply for an interim injunction. Some courts are somewhat more flexible here. However, the later you apply for a temporary injunction, the greater the risk that it will be rejected due to a lack of urgency. For this reason, short deadlines are common and appropriate in the area of interim legal protection.

If the facts of the case are presented comprehensively in the statement of claim and the opposing party has also had the opportunity to make their view heard in court, at least indirectly, due to the warning, an oral hearing is generally unnecessary from the court’s perspective. In exceptional cases, an oral hearing may nevertheless be held, for example if the court wishes to give the opposing party the opportunity to defend itself more extensively or if the court wishes to hear the parties personally on the matter.

After the court has issued the interim injunction, you have one month to enforce it by serving it on the defendant. As soon as this has been done, he must comply with it immediately, i.e. without undue delay.

The defendant must also decide whether to recognize the temporary injunction, which is only temporary in nature, as a permanent solution and submit a so-called final declaration. He has approx. 14 days to do this. If he does not do so, he can be requested to submit such a declaration by means of a final letter subject to a fee. If the defendant does not lodge an appeal (objection) against the interim injunction, but still refuses to submit a final declaration, regular proceedings on the merits can be initiated against him. This is even advantageous for the defendant in that you can assert further claims for information and damages and file the action with the court before which you have already won the summary proceedings in the same matter.

If, exceptionally, the defendant does not comply with the interim injunction, a substantial fine of up to EUR 250,000 can be imposed on him. In exceptional cases, imprisonment may also be considered as an alternative.

The respondent has the option of filing an objection. From the respondent’s point of view, however, this is usually an “uphill battle” since the court has already decided against them. In practice, objections are therefore the exception rather than the rule. They are particularly likely to be successful if the applicant has presented the facts incorrectly or incompletely. If and to the extent that an objection is filed and is successful, this initially means that the respondent no longer has to comply with the decision. In addition, they can claim compensation for any damage that they can prove they have suffered as a result of the enforcement of the interim injunction. In return, however, the applicant then has the option of filing an appeal again in expedited proceedings or of pursuing the claims in regular main proceedings.

The Lawyers’ Remuneration Act (RVG) stipulates that, depending on the course of the dispute, fees are charged when certain milestones are reached. This is to ensure that the processing effort and the costs are in reasonable proportion to one another. Fees are incurred, for example, for out-of-court representation, an agreement, the initiation of legal proceedings, the sending of a final letter or an oral hearing.

Unless otherwise agreed, the costs are generally calculated based on the so-called object value or value in dispute. For example, the object value in the case of an infringement of a trademark used to a normal extent is usually between EUR 100,000 and EUR 150,000; for trademarks that are not used or are only used to a small extent, the value in dispute is usually EUR 50,000. In this case, a warning (out-of-court representation) would cost EUR 1,662.70 net with normal processing costs. In other areas of intellectual property law (e.g. copyright law, competition law, design law or patent law) there are also certain values ​​in dispute that courts and lawyers base their decisions on.

Whether further costs are incurred in addition to the costs for out-of-court representation depends on the reaction of the other party. If the claims are met, the costs mentioned above remain. In some cases, it makes economic sense for both parties to negotiate after the warning and seek a compromise. If this is successful, a settlement fee is charged, the costs of which should then be factored into the solution. In some cases, the other party does not give in and legal action must be taken. In addition to further lawyer’s fees, court costs are also incurred. According to the Court Costs Act (GKG), these are also based on the value of the matter. For example, the court costs for a value of EUR 50,000 and without an oral hearing are EUR 901.50. If everything goes according to plan, however, you as the applicant will not notice anything about this. This is because the court decides without you having to pay the court costs in advance and imposes these on the losing party. This is different in main proceedings, since here the plaintiff has to advance the court costs.

The law stipulates that the losing party must pay the lawyer’s fees incurred and – if legal proceedings have been initiated – court costs. The recoverable costs are limited to the amounts provided for in the RVG. If and to the extent that you settle according to the provisions of the RVG and win, the legal dispute is therefore essentially cost-neutral, i.e. you as the applicant have a claim against the respondent for reimbursement of the costs you have incurred. If, however, you lose, you have to bear the costs of the legal dispute yourself.

In the interim injunction, the court also decides who has to bear the costs of the proceedings. After the interim injunction has been served, you can apply to the court to have the costs of the proceedings recorded in a so-called cost assessment order. These can then be enforced through a bailiff. Some of the out-of-court costs cannot be recorded as they are not part of the costs of the (court) proceedings. However, it is possible to collect the costs through a reminder procedure. An alternative is to file a main action and then also claim the out-of-court costs. In practice, however, this is rarely necessary.