Litigation

Your intellectual property rights in court: patent infringement proceedings

In many cases, going to court is in fact the only sensible solution. For decades, we have been representing our clients in infringement proceedings. We enforce their property rights in court or defend them against unjustified third-party claims. Infringement proceedings almost always involve the law governing immunity from liability suits / intellectual property rights. In Germany, particularly in the case of technical property rights such as patents, this happens in parallel proceedings. We are therefore also active on behalf of our clients before the Federal Patent Court, the Federal Supreme Court, and the patent and trademark offices. Düsseldorf, the location of our firm’s head office, has been the leading court location in Germany for patent infringement proceedings since the founding of the Federal Republic. And proceedings led by COHAUSZ & FLORACK, for example in the area of entertainment and communications technology, have also made a big contribution in this respect. Of course, we also represent our clients at all other courts in Germany—whether concerning infringements of patents and utility models, infringements of trademarks or designs, contractual matters or competition law infringements.
On plaintiffs side we have successfully represented our clients against Apple, Samsung, Huawei, Lenovo, HTC, ZTE, Daimler, Dell and TCL.

Trademark opposition and cancellation proceedings

Let's assume that one of your competitors has applied for a new trademark that is confusingly similar to your own: Then you, as the owner of the older trademark (which has been applied for or already registered), have the possibility to file an opposition against German trademarks and Union trademarks within three months after publication of the registration of the trademark (for the German trademark) or publication of the application (for the Union trademark). Within this period, the fee of (at least) 250 Euro to the DPMA or 320 Euro to the EUIPO must also be paid. By means of an opposition procedure, you can have the newly registered trademark cancelled in the case of German trademarks or the application for a Union trademark refused.

In addition to the official opposition proceedings, you can also file official cancellation proceedings against the registered trademark at the DPMA or the EUIPO. Depending on the circumstances, you can claim either initial invalidity or a subsequent revocation of the new trademark in these proceedings.

In addition to a cancellation due to existing older rights, a trademark can also be cancelled due to revocation grounds – namely, if after a grace period of five years of use, the trademark has not been significantly used for the registered goods and services within a period of five years. Furthermore, absolute grounds for refusal can also lead to cancellation. These grounds exist, for example, if the trademark is not eligible for protection per se (e.g. a commonly used designation for the goods or services in question) or if an applicant was acting in bad faith when filing the application, for example, if the applicant knows or ought to know that the trademark is already being used by a third party and intends to prevent this.

Further information on opposition, nullity and revocation proceedings, in particular on time limits, fees and formalities, can be found on the DPMA website as well as the EUIPO website.

If the competitor already uses their new trademark, opposition or cancellation proceedings are no equivalent substitute for asserting infringement claims.

Alternative dispute resolution and arbitration

The German judiciary is overburdened, which is why judicial proceedings at state courts often take an unnecessarily long time. One possible solution: arbitration. We also have extensive experience with this alternative form of dispute resolution. We are not only active as counsel, but also as a referee before important institutions—for example, at the International Court of Arbitration (ICC) in Paris or the Club Espanol de Arbitraje in Madrid. We have often experienced that negotiations can actually lead to good arrangements—arrangements that duly reflect the interests better than a judgment after possibly lengthy and exhausting legal proceedings. We will ascertain whether your case might also benefit from such an opportunity. We’ll support you in settlement negotiations and advise you in all matters related to the organization, initiation, and implementation of alternative dispute resolution procedures—for example, through mediation, arbitration opinions or dispute review boards.

Measures against counterfeiting

Many companies that are dependent on the success of their innovations know the situation: the constant worry that counterfeits of their products may be in circulation. Unfortunately, this fear is often justified. According to the Federation of German Chambers of Industry and Commerce (DIHK), counterfeiting is taking on ever more drastic proportions. In 2013, the organization estimated the damage to the German economy at more than 50 billion Euros annually. And closely connected to the loss of revenue is also the loss of valuable employees—without which innovations would not be possible in the first place. Not to mention the damage to a company’s image caused by inferior counterfeit products. Theregistration of property rights is a prerequisite to being able to assert your own claims in the first place. And we’ll gladly support you in doing so! Which also applies for other measures to combat the counterfeiting of your products effectively.

Find out more in our CFUpdate: Intellectual property rights at trade fairs.

Stopping counterfeits: border seizure

If you suspect that your property rights have been violated through counterfeiting, you should quickly contact investigators, attorneys, and authorities in the country from which the counterfeits allegedly come. The more evidence you are able to gather, the better. Import and export control at customs are particularly effective in the fight against international counterfeiting. This is where goods that violate the property rights of others can be confiscated at the outer borders of the EU or Germany. Anyone who wants to use this procedure, can apply for a so-called “border seizure” at the Industrial Property Rights Department of German Customs Authorities in Munich.  Together with this application you also have the possibility of providing training for the customs officers in order to give them deeper insights into your own products and potential counterfeiting.