Enforcement of Intellectual Property Rights under German Private Law

Intellectual property (IP) rights include patents, designs, copyright, trademarks, and others. When an IP right is infringed the rightholder can obtain an injunction ordering the infringer to cease infringing the right and/or to take measures to stop the interference with the right. The rightholder may also have payment claims against the infringer. The amount of such claims usually depends either on the damage suffered by the rightholder as a consequence of the infringement, notably his lost profit, or on the infringer’s unjust enrichment. However, it is often difficult to prove that a right has indeed been infringed, and even more so to state and prove the amount of any compensation claims.

Until recently, sanctions for IP rights infringements tended to be left aside in the course of the process of harmonisation of IP law in Europe. The Directive “on the Enforcement of Intellectual Property Rights” (2004/48/EC) is the first ambitious step by the European legislator to regulate this area of law. The laws of the member states are due to comply with the Enforcement Directive by 29 April 2006. Its objective is to establish the highest possible minimum standards in favour of the rightholders and to facilitate the enforcement of their rights. The law was passed in a hurry before the accession of the new EU members in the spring of 2004 because it was feared that the new member states would oppose the bill.

The measures the Directive provides for include the seizure of allegedly infringing goods and materials used to produce and distribute them, orders to present bank, financial and commercial documents to the rightholder or to allow him access to them, and orders to seize the defendant’s assets and to block his bank accounts. Such orders may in some cases be issued without the alleged infringer having been heard beforehand. Certain types of measures are to be available also against intermediaries that assisted others in infringing IP rights.

Instruments that appear to have influenced the European legislators in drafting the Enforcement Directive are the English “Anton Piller order” (now called “search order”) and the “Mareva injunction” (now “freezing injunction”) as well as the French “saisie-contrefaçon”. A few years after the introduction of the “Anton Piller order” by the English Court of Appeal parts of the English judiciary voiced their concern about the way these orders were being issued and carried out in practice, calling the procedure „inherently unfair“ and denouncing its use by financially potent companies to squash competition before it is hatched. In the following years the number of “Anton Piller orders” declined sharply. In the light of these experiences the German legislator ought to exercise care in drafting the German provisions implementing any new standards prescribed by the Enforcement Directive. As far as the Directive allows for it any drastic measures should be subject to precise and not too lax legal requirements and to an assessment by the courts of whether a measure appears proportionate under the circumstances of the individual case.

With regard to the computation of damages, the Enforcement Directive rules remain fragmentary and will probably not necessitate substantial changes to German law. In particular, the Commission’s proposal to introduce punitive damages was rejected – for now.