Whoever deposits a protective letter is also well advised to show in detail that the matter is too extensive and complex for a decision in cursory proceedings of preliminary injunctive relief and why this is the case. As German legal practice dictates that the granting of a preliminary injunction can only be considered if the matter is simple, it is clear that the activity in question fulfils the constituent elements of an infringement and the legal validity of the protection right on which the claim is based is unambiguous, it must be the natural aim of anyone who deposits a protective letter to call these three requirements into question.

The main aim of the protective letter, however, is not necessarily to convince the competent court, through the arguments therein, to reject the feared injunction application. The court is often inclined, through the submission of a protective letter, not to grant a preliminary injunction without an oral hearing. In this way, the depositor of the protective letter obtains the possibility to make the court aware of his opinion and to argue his legal position in oral proceedings on an equal footing. The danger for the alleged infringer associated with preliminary injunctions of being confronted with an enforceable court decision dispensed ex parte, that is without the alleged infringer having been heard, is thus crucially reduced.

Generally, protective letters submitted are retained by the court for a time period of 2-6 months, the time limit in respect of the central protective letter registry is two months, this can, however, be extended.

Upon receipt of an application for injunctive relief, the court seized of the case checks whether a protective letter has been deposited in relation to the particular case in hand. This is then submitted to the court together with the injunction application. The court then examines both writs. The court is fundamentally free in its decision: it can reject the injunction application on the basis of the protective letter, it can issue a preliminary injunction despite the existence of the protective letter but it can also first hear the parties in writing or even arrange an oral hearing at short notice.

The value of a protective letter is thus in the fact that it is the only possibility for the alleged infringer to present his own legal position in the case of an injunction application. With the help of such a letter, unjust preliminary injunctions can be avoided. In particular, the protective letter provides an opportunity for the party being attacked to win some time and improves the possibilities for responding in the case of an intellectual property right based attack. It can thus be said that protective letters are the best and most effective means with which to tackle civil law attacks of aggressive rights holders.

3. Filing protective letters with the customs and law enforcement authorities

In addition to filing a protective letter at the civil courts having jurisdiction ratione materiae, it is advisable to deposit copies of this protective letter with the respective local public prosecutor as well as with the central office responsible for the Germany-wide border seizure process for intellectual property. This measure serves primarily to make the customs and law enforcement authorities aware of the fact that one should not assume the legal validity of the allegedly infringed intellectual property rights or the fulfilment of the constituent elements of infringement purely on the basis of a possibly subjectively formulated criminal complaint lodged by the rights holder. One must, in particular, take into account that customs officials, like officials from the police or the state prosecutor’s office or criminal judges generally do not possess the required technical and patent law expertise. Hence, there is always the risk that the court seized of the case follows a convincingly worded criminal complaint or application for border seizure and institute respective sanctions against alleged infringers without being able to appropriately evaluate the entire circumstances. This risk can be reduced by submitting copies of the protective letter which has been filed with the civil courts anyway. This often leads to search and seizure proceedings at trade fairs not taking place as could certainly be expected as the responsible investigating authority, due to the arguments in the protective letter, can no longer assume reasonable initial suspicion exists.

III. Summary

In light of the substantial risks which a company in Germany can be exposed to when introducing new products as well as when participating in trade fairs, if an infringement of intellectual property rights is claimed, a thorough “freedom-to-operate” search should certainly be undertaken in advance. If this or the actions of competitors or other rights holders indicate that a rights conflict is imminent, it is highly advisable to refrain from offering, exhibiting or launching products onto the market where there is a high probability that a legally valid protection right will be infringed. If, on the other hand, the search reveals that attacks by rights holders are to be anticipated however reasonable doubts exist as to the presence of an infringement of a legally valid protection right, protection letters should be formulated in good time prior to the beginning of the respective use and filed with the competent civil court as well as the central protection letter registry. Furthermore, copies of this protective letter should be filed with the locally competent state prosecutor as well as the central office for intellectual property. In this way, there is a considerable chance of avoiding a preliminary injunction being ordered without oral proceedings and to avoid confiscation of the respective goods by customs or the police.

By Prof. Dr. Heinz Goddar, Dr. Carl-Richard Haarmann

The authors are partners in the IP law firm Boehmert & Boehmert, Munich, Germany

Prof. Dr. Heinz Goddar

Dr. Carl-Richard Haarmann