BE PREPARED – IT’S NOT TOO LATE!
When you stroll around the fair after you have set up your booth, you may see your main competitor displaying your design; or you might see them in a meeting with your favourite distributor on the first day of the fair pulling a catalogue out of his pocket in which all your designs are shown – half price and under a brand that isn’t yours. What can you do? First of all ensure that you have tools to act swiftly and effectively in such situations. Hosea Haag from ACID Accredited law firm Hammonds in Munich gives some advice and guidelines about what you can do before the Fair
WHAT IS THE MOST EFFECTIVE LEGAL REMEDY AT HEIMTEXTIL? A PRELIMINARY INJUNCTION!
If you find someone infringing your intellectual property rights at any trade fair in Germany, what you want to achieve is a Preliminary Injunction immediately to stop them marketing and selling infringing products.
IGI members who exhibit at Heimtextil will discover that Germany is a very favourable IP legal jurisdiction in that a Preliminary Injunction may be issued by the courts only hours after it is applied for – without a warning and without an oral hearing. It usually obliges the infringer of your intellectual property rights to stop offering, distributing and displaying the infringing product immediately after it is served on the infringer by a bailiff on the fair. This includes the obligation to stop displaying catalogues, price lists, offering on the website and so forth. Any infringing products may be taken by the bailiff at the fair immediately. In some circumstances even non-infringing products maybe confiscated to secure the costs of the Preliminary Injunction proceedings.
Other remedies are not quite as effective for the fair. Any proceedings on the merits or any preparation would take more time than you have at the trade fair. They cannot stop the offering at the fair and cannot avoid that the infringer approaches your customers with copies of your products and take respective orders. Due to the territoriality of intellectual property rights, you may win proceedings on the merits in Germany but may not receive a title to interdict delivery according to an order placed at the fair if neither the infringer nor his customer is domiciled in Germany (there are exceptions to this general rule for the Community design and trade mark within the European Union). Therefore, proceedings on the merits may be a good measure to take if you want to avoid infringement without the time pressure of the fair. For the fair itself they don’t help.
You could also – perhaps because you may have had good relationships to the infringer of your intellectual property rights in the past – think about sending a warning letter first. But this also is only a real threat for the infringer if you can show that you are prepared to go to the courts, again with a Preliminary Injunction.
If the infringement or the legal situation is not clear cut, arbitration should also be considered.
Last but not least, Preliminary Injunctions are relatively cost effective in Germany. Depending largely on the complexity of the case, the average costs involved in obtaining the Injunction are probably less than 5.000 EURO. If you have done your homework – see below – it can be much less. Court fees and lawyer’s fees have to be born by the losing party according to statutory provisions in Germany. If the case is not too complex, the amounts the infringer has to reimburse to the right holder can fully compensate for the costs of a lawyer.
DO YOU HAVE THE CORRECT REGISTERED RIGHTS TO BE ABLE TO APPLY FOR A PRELIMINARY INJUNCTION?
A Preliminary Injunction can be based on any infringement of any intellectual property right. Of particular interest for the wallpaper industry may be: design rights, trade mark rights and copyright. An additional protection may derive from unfair competition law.
The easiest way to achieve a Preliminary Injunction is to assert infringement of a registered right. Of the above mentioned these are registered design rights and trade mark rights in Germany. The second, less favourable option is to show infringement of non-registered rights, for example of the so called non-registered Community design or copyright, because proving in particular the ownership of a certain right and proving the exact scope is more difficult.
WHAT STEPS CAN YOU TAKE BEFORE HEIMTEXTIL?
To have a Preliminary Injunction granted, you need a clear-cut case of infringement. If you only start acting at the fair, it may be hard to establish such a case before the fair is over. You would give up opportunities to substantially enhance your position.
BE PROACTIVE – REGISTER YOUR RIGHTS
Registration of IP rights effectively means that you have a piece of paper, a certificate which says you “own” the rights. . Of the above rights, designs and trade marks may be registered with effect for Germany. Both trade marks and design rights can be registered nationally in Germany or you can obtain a Community Trade Mark valid in 27 Member States or a registered Community Design. Trade marks and designs may also be registered internationally with the WIPO and designate the territory of Germany. The registration process in all cases requires fulfilment of only few formalities and maybe handled in a relatively short time. All necessary information can be found on the respective web pages of the German Patent- and Trademark Office (http://dpma.de/english/index.html), the Office for Harmonization in the Internal Market (http://oami.europa.eu) and of the World Intellectual Property Organisation (http://www.wipo.int). In order to get the scope of protection you actually want within a reasonable time I would nevertheless advise to consult a lawyer for registration of your IP.
In all cases, keep all records – it is mandatory if non-registered rights shall be the basis for an attack. Providing a design audit trail behind new designs is key. For those relying on non-registered rights, ACID members can make use of the free Design Data Bank which can provide valuable independent evidence of the date they are received by the ACID office.
If you want to base a Preliminary Injunction on copyright in Germany, you have to show that you are the owner of the copyright. The owner of the copyright according to German law is initially only the author. Therefore you have to get all your designers to give written declarations that your company is entitled to invoke all intellectual property rights included in designs that have been developed by your company. If you cannot show for each individual design who the author is and by which declaration the copyright in the design was passed on to you by this individual author, it is not possible to get a Preliminary Injunction based on copyright.
If you want to base your Preliminary Injunction on a non-registered Community design, you will have to prove that you were the first to introduce this design into the market but no more than three years before the trade fair. Also, whereas the registered Community design gives you an exclusive right, as an owner of a non-registered Community design you must be prepared to produce evidence that the infringer knowingly copied your design and did not develop it himself.
In order to prove the validity of your rights, which may be necessary for design rights as well as copyright, you will have to show how your rights are distinctive from what designs have been on the market before. Therefore, it is advisable to keep records on what other designs have been on the market by yourself and by competitors before you developed your design. As a consequence, all design research made by your designers should be kept.
MONITOR THE MARKET:
When the trade fair comes closer, watch the market carefully. The sooner you know about a possible infringement, the more effective an attack on infringers can be prepared. Check your competitors’ websites for advertisements of their products. Check big distributors’ websites for what they offer, possibly order products that you suspect maybe infringing your rights and maybe displayed on the fair through a dummy like your lawyer, check the exhibitors sites that want to exhibit on the trade fair and check the trade fair website. If you come across any possible infringement, talk to your specialist IP lawyers. However, as most courts in Germany do not grant Preliminary Injunctions if the infringement was known for more than one month before the Injunction was applied for, I would advise you to check for possible infringements at the earliest four weeks before the fair.
If you find an infringer, try to get all details of the company, its legal form and its legal representatives. To have this information at hand when necessary saves time and money – as is true for all the suggested steps.
Prevention is better than the cure! If you have not done any of the above so far, doing it now will help you substantially if you should suffer from an infringement of your rights. Better still would be that a fair would not have counterfeiting at all!
Hosea Haag can be contacted on 0049-(0)89-207028343 or during the exhibition by mobile 0049-(0)179-5273436 or email firstname.lastname@example.org
Below, Hosea Haag from Hammonds, Munich.