German Ex Parte Injunctions against trade mark infringers – A Sharp Sword Becoming Blunt?

17th December 2018

No – but a recent decision by the German Federal Constitutional Court might make it a bit harder to handle injunction proceedings in the future.

Preliminary injunctions granted by German courts are a popular instrument against trade mark infringers in the EU/Germany. They are often granted within a few days or weeks after the application and relatively often without the defendant being heard by the court in charge (so called ex parte injunctions).

Such ex parte injunctions provide the right holders with an enforceable decision without a lengthy trial. Ex parte injunctions therefore can create the momentum necessary to finish an infringement case swiftly.

A recent decision by the German Federal Constitutional Court (Decision of 30. September 2018, File-No.: 1 BvR 1783/17) concerning a press law injunction might restrict the practice of ex parte injunctions in Germany in general.

The Federal Constitutional Court found that an ex parte injunction cannot be granted without providing the defendant at least some possibility to be heard. Otherwise the principle of “equality of arms in court procedure” would be infringed.

According to the Federal Constitutional Court the plaintiff seeking for an ex parte injunction must therefore provethat he/she has sent a warning letter to the defendant and

• that he/she has sent a warning letter to the defendant and
• that the defendant has refused to comply with the plaintiff’s claim

Furthermore, the claims raised in that letter have to be identical with the claims included in the injunction application.

If these requirements are not fulfilled, the court in charge has to hear the defendant before handing down a decision on the injunction application.

Given the similar nature of injunction proceedings in intellectual property law and press law matters this reasoning might likely apply to trade mark related injunctions, as well.

These requirements – though fair in principle – might cause difficulties for right holders, if applied to trade mark infringement cases. Sending a warning letter to the infringer has always been common practice in trade mark infringement cases. What might be problematic though are the further requirements set out by the Federal Constitutional Court.

What can be done for example, if the infringer ignores the warning letter? One could argue that the infringer had at least the chance to respond. Infringers could otherwise undermine any injunction proceeding that way.

In order to maintain a good chance to have an ex parte injunction granted by a German court in future the requirements mentioned must be taken seriously. This involves not only consistency between the warning letter and the injunction application but also ensuring sufficient evidence proving that the infringer has received that warning letter.

All in all the decision of the Federal Constitutional Court does not turn ex parte injunctions into a blunt instrument. But it might be an instrument harder to handle in future. How hard will also depend on how lower courts will interpret the requirements set by the Federal Constitutional Court in practice.