In German proceedings for a preliminary injunction, the appeal process ends at the respective competent Higher Regional Court, so that different requirements can be made in the respective court districts with regard to the legal validity of a patent or utility model.

The courts most frequently used in patent and utility model disputes in Germany, the Düsseldorf and Mannheim courts, are, according to the case law of the Düsseldorf Higher Regional Court (cf. judgment of 11 January 2018, file no. I-15 U 66/17, marginal no. 73 – available at nrwe.de) and of the Karlsruhe Higher Regional Court (cf. last judgment of 23 September 2015, file no. I-15 U 66/17, marginal no. 73 – available at nrwe.de) of the opinion, that a patent must in principle have (due to Germany’s bifurcated system) survived s first instance validity proceeding in order for a preliminary injunction to be based on said patent or utility model; deviations from this principle are only permissible in certain exceptional cases (cf. Düsseldorf Higher Regional Court, loc. cit., marginal no. 74 et. seqq.) This standard applies even more so to utility models (cf. Düsseldorf Regional Court, judgment of 24 October 2017, file no. 4a O 90/17, marginal nos. 123 et. seq. – cited from CIP).

In recent years, the case law of the Regional and Higher Regional Court of Munich has expressly deviated from this line (cf. on patents Munich Higher Regional Court, BeckRS 2012, 16104; on utility models Munich Regional Court, judgement of 13 January 2016, ref. 21 O 22538/15 – cited from juris). As a result, a preliminary injunction could in principle also be based on patents and utility models which had not yet survived first instance validity proceedings. The validity of these rights was thus to be examined autonomously by the infringement judges on the basis of the corresponding submissions of the applicant and the objections raised by the defendant. In practice, the Munich courts were thus regularly the first choice for preliminary injunction proceedings in patent and utility model matters.

But this might now be a thing of the past:

With the decision “Leiterklemme” (judgment of 12 December 2019, file no. 6 U 4009/19 – available at gesetze-bayern.de), the Munich Higher Regional Court abandons its earlier case law and joins Düsseldorf and Karlsruhe (cf. Munich Higher Regional Court loc. cit., marginal nos. 61, 68). A positive decision on the validity of the patent or utility model can – analogous to the list of exceptions of the Düsseldorf Higher Regional Court – only be dispensed with in certain constellations (cf. Munich Higher Regional Court, loc. cit., marginal no. 61). Furthermore, utility models would, as a rule, not be considered at all as a basis for a preliminary injunction; the court does not formulate exceptions to this rule (cf. OLG Munich loc.cit., marginal no. 59).

The court sees itself induced to make this turnabout because, due to the limited possibilities of examining the validity of a patent or utility model in interim proceedings, its forecasts had from time to time turned out to be incorrect and, contrary to its summary assessment, the corresponding patents or utility models had ultimately not been considered valid by the patent offices or the Federal Patent Court respectively (cf. Munich Higher Regional Court, loc.cit., marginal no. 67).

Apart from certain exceptional cases, such as trade fair situations, is it now no longer possible to obtain interim legal protection in patent and utility model matters in Germany?

In addition to the regional courts in Düsseldorf, Mannheim and Karlsruhe, nine other regional courts in Germany have jurisdiction in patent and utility model matters. However, as these courts are less frequently called upon than the courts in Düsseldorf, Mannheim and Munich, no clear tendency can be identified here due to a lack of sufficient case law. Yet, the courts in Hamburg, Frankfurt, Braunschweig and Nuremberg, for example, do not seem to demand the secured legal validity of a patent by way of a first instance ruling (cf. e.g. Hamburg Regional Court, GRUR-RS 2015, 08240; Frankfurt Higher Regional Court, GRUR-RR 2003, 263; Braunschweig Higher Regional Court, GRUR-2012, 97, 98 and more recently Braunschweig Regional Court, GRUR-RS 2017, 126504, marginal no. 77; Nürnberg-Fürth Regional Court, BeckRS 2012, 22948). Furthermore, the Hamburg Regional Court has, in the past, issued preliminary injunctions also on the basis of a utility model (cf. Hamburg Regional Court, GRUR-RR 2015, 137).

Whether these courts will – especially in view of the turnaround of the Munich Higher Regional Court – maintain this stance in the future is, however, open.

The chances of enforcing a technical property right in preliminary injunction proceedings in Germany are thus questionable without a positive first-instance decision on its validity, irrespective of the infringement situation, and always require careful examination in each individual case.

In an eagerly awaited ruling (C-371/18), the European Court of Justice (ECJ) clarified on 29 January 2020 that EU trademarks can, as before, claim protection for goods and services to a large extent. According to this ruling, a comprehensive claim for protection is neither vulnerable to cancellation due to a lack of clarity, nor can it be regarded as being in bad faith without further ado.

The decision was based on a question submitted by the High Court of Justice (England & Wales) in connection with a dispute between the Sky broadcasting group and the cloud software provider Skykick. Skykick was sued by Skykick for infringement of its EU trademarks SKY, which also claimed protection for software in Class 9 and various other goods and services similar to cloud software and corresponding services. In the UK main proceedings Skykick had defended itself, inter alia, by arguing that the indication of goods „software“ as claimed by Sky’s trademarks was too vague, as it did not clearly and unambiguously indicate what kind of software exactly was to be understood by this. Furthermore, Skykick argued that Sky could not have intended to offer software and related services under the trademark SKY and that the trademarks had been applied for in bad faith for this reason. The High Court of Justice now wanted to know from the ECJ how the arguments presented by Skykick were to be assessed under European Union trademark law.

In the event that Skykick’s arguments would have been accepted by the ECJ, this would have had serious consequences for a large number of other European Union trademarks with a comparably broad claim to protection, which would have become vulnerable to cancellation as a result.

No legal basis for cancellation due to lack of clarity or precision

However, the ECJ has come to the conclusion that a lack of clarity or unambiguity does not constitute a ground for invalidity or cancellation, as there is no legal basis for such a ground. The ECJ was also unable to identify an infringement of public order due to lack of clarity or unambiguity of the goods or services claimed. The fact remains that a detailed specification of the goods and services claimed – as required by the US Trademark Office, for example – is not necessary in the EU.

Extensive specification of goods and services per se does not constitute bad faith

Furthermore, the ECJ has clarified that filing an application for a trademark without the intention of using it for the goods and services covered by the registration may constitute bad faith if the applicant for the trademark in question had the intention either to harm third party interests in a manner contrary to fair trade practices or to obtain an exclusive right for purposes other than those belonging to the function of a trademark even without reference to a specific third party. However, the mere fact that a trademark application was filed with a broad list of goods and services is not sufficient for the ECJ to assume that the application was filed in bad faith, even if the goods and services claimed have little or nothing to do with the applicant’s field of activity. However, the ECJ emphasises that all goods and services for which the trademark has not been used after five years from registration can of course be successfully attacked with cancellation requests.

All-clear for trademark owners

Even after the ECJ’s decision, trademark applicants will still be able to use general designations for goods and services within the scope of a (EU) trademark application, as has been the case up to now, and also have the possibility to claim trademark protection to a greater extent than is appropriate for their own activities, at least for the five-year period from registration. Such a broad claim to protection can make sense in particular if an actual expansion of one’s own activity cannot be excluded at the time of application, even if there are no concrete indications for this.