Similar risks are posed, for exhibitors of products which could potentially be the target of attacks on the basis of actual or alleged rights infringements, by a preliminary criminal investigation. This is true, in particular, as the persons responsible for assessing the existence of a suspicion of a rights infringement, as in the case above, often lack the necessary specialist knowledge. Whilst the civil courts which handle patent, trademark and copyright infringements are highly specialised, a comparative specialisation is not seen in the law enforcement agencies, i.e. public prosecutor and criminal court judge. This has the effect, especially in the case of alleged patent infringements, of increasing the risk for the “suspects” and in particular where these are foreign exhibitors. Whilst the public prosecutor tasked with evaluate the respective criminal complaints may indeed normally be in a position to check for the existence of a trademark or copyright infringement using his own knowledge and skills, in cases where an alleged patent infringement is reported, the public prosecutor usually has no possibility of understanding the special legal situation and thus of being able reliably to adjudge the legal validity of the allegedly infringed patent and the realisation of its protective characteristics. Since, however, only a reasonable initial suspicion is required for the institution of preliminary criminal proceedings and thus the ordering of a police seizure on the basis of the trade fair, there is a risk that a forcefully argued criminal complaint by a patent owner prior to a trade fair can lead to a police seizure during the fair. The consequences can be drastic for the exhibitor, in any case the success of the exhibitor's participation in the trade fair can be put in jeopardy.
II. Strategies and measures to reduce the risk
In light of the considerable risks and unknowns which in particular foreign exhibitors face in the course of trade fairs and exhibitions in connection with attacks based on – actual or only alleged – infringements of intellectual property rights, it is highly advisable, in respect of participation in such trade fairs, to prepare suitable measures in advance in order to fend off any attacks from competitors based on alleged infringements of patents, trademarks or copyrights. This requires more than simply taking individual protection measures. Rather, it is necessary to develop a consistent defence strategy in good time prior to the participation in a trade fair. Such a strategy must be aimed at first ruling out, where possible, an infringement of intellectual property rights through a thorough analysis of the situation whilst also identifying potential dangers. If such an analysis reveals indications that even just a small conflict potential exists, precautions should subsequently be taken which are suitable at least to significantly reduce the danger posed by attacks which could directly jeopardise the success of the trade fair participation.
1. Infringement (freedom-to-operate) research in advance of trade fair participation
A central element of any defence strategy must be to check, far in advance of the specific trade fair preparations, whether the products intended for presentation may possibly infringe intellectual property rights. For this, it is necessary that a decision is made at least six weeks in advance, as to exactly which products are to be presented at the trade fair or exhibition. Taking into account the complexity of the search to be then undertaken, one should allow much more time.
Once the products have been selected, it is urgently necessary to analyse these objects in respect of whether the import, exhibit or sale thereof, could infringe intellectual property rights in Germany. Depending on the type and nature of the objects to be exhibited, one must ascertain whether patent rights, trademark rights or copyrights could be infringed. This then requires the respective objects to be analysed in detail and then property rights to be identified which could be infringed. Finally, at least those protection rights for which a certain probability of an infringement exists should be checked in respect of their legal validity.
Such “freedom-to-operate” search can certainly be prepared in the exhibitor’s own country, for instance in China. The final assessment is, however, only possible in Germany as it is only here that all relevant protection rights can be identified and checked for their infringement and legal validity using German legal criteria and detailed knowledge of German law and jurisprudence.
Ultimately, a properly performed "freedom-to-operate" search can localise all possible risks and evaluate them according to their risk potential. In this way, the exhibiting company is in a position to decide on any further strategy even before the trade fair or exhibition begins.
2. Filing protective letters at the civil courts
If the “freedom-to-operate” search reveals information suggesting that a particular product intended to be shown potentially infringes a legally valid intellectual property right, it makes little sense to import that product into Germany nevertheless, for the purpose of making it the object of a trade fair presentation. This would constitute knowingly provoking an attack from the holder of the protection right.
A possible solution would be arranging licensing negotiations at short notice whereby the aim could be both the granting of a long term license or a so-called trade fair license. In any case, an integral part of the negotiations should be the demand for an agreement to abstain from any attacks based on the right to be potentially licensed, for the duration of the negotiations.
If, as a result of the “freedom-to-operate” search, attacks due to patent, trademark or copyright infringements cannot be ruled out, but reasonable doubts exist as to the existence of an infringing act or as to the legal validity of the respective right, appropriate protection measures should be put into place with the help of which unjustified attacks could be completely prevented or at least reduced in effectiveness.
The most efficient means which can be employed to defend against preliminary injunctions in civil courts is the protective letter. This legal instrument, long since standard practice in Germany, can be described as a pre-emptive pleading; it is not officially regulated within the code of civil procedure. It is widely used, however, especially in disputes involving intellectual property rights; it is customarily recognised. As such a submission does not constitute a writ as foreseen by the German code of civil procedure and thus not an act of procedure, there is no obligation to be represented by an attorney for the filing. In fact, any person can sign a protective letter and deposit it with the courts which have jurisdiction ratione loci and ratione materiae. Usually, the filing is made with all courts in Germany which are competent in terms of the subject matter, as often in matters of intellectual property rights, there exists the possibility of free choice of venue. Furthermore, there is the possibility of depositing the protective letter in the central protective letter registry, where the protective letter can be uploaded to a centrally run database. Today, many German courts who are competent in such matters utilise the central protective letter registry, hence the physical depositing of protective letters at the respective courts is superfluous. However, as some relevant courts still do not use the online registry, it is recommended to file a paper version with all competent courts in addition to the online registration.
In the protective letter, firstly the parties to the expected proceedings are named whereby where possible all potential applicants are to be listed in order to guarantee the court takes the protective letter into account. Potential applicants include the actual right holder as well as related companies and licensees or licensors. Furthermore, the party depositing the protective letter requests the court not to disclose the protective letter to the rights holder, except after the right holder will have filed a request for preliminary injunction. Such a request is always followed by the court.
Next, a short description of the protection rights on the basis of which an attack is expected follows. Thereafter, the facts of the matter and the history of the case so far should be briefly laid out. The core of the protective letter is then in the arguments, which from a legal perspective justify the refusal of injunctive relief, thus in particular which argue against the fulfilment of the constituent elements of an infringement or which show a lack of legal validity of the protection rights upon which the application is based. In many cases, one can argue that the conflict in question has existed between the parties for some time or that the assumed applicant has been aware of the alleged infringing activity for some time so that the degree of urgency necessary for a preliminary injunction to be granted is no longer given.
