On 1 September 2008, the law implementing the EU Enforcement Directive came into force. The law is intended to facilitate the fight against product piracy and at the same time strengthen the protection of intellectual property rights.
The Act implements Directive 2004/48/EC. The Act amends several laws on the protection of intellectual property. These are mainly amendments to the Patent Act, Utility Model Act, Trade Mark Act, Semiconductor Protection Act, Copyright Act, Design Act and Plant Variety Protection Act.
The claim for reimbursement of costs in the case of warnings in the context of copyright infringements is limited to 100 euros.
German law is adapted to the new EC Border Seizure Regulation.
A simplified procedure is now available for the destruction of pirated goods after seizure by customs.
Furthermore, the law contains an adaptation to an EC regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and closes a criminal liability loophole with regard to the unauthorised use of geographical indications.
On the essential content of the law:
- Cease-and-desist letter for copyright infringements
In future, the recoverable attorney's fees for the first warning notice in simple cases involving only a minor infringement of rights outside the course of business shall not exceed EUR 100. This applies to copyright infringements committed on or after September 1, 2008. This preferential treatment applies only to consumers, not to professionals.
An underage student has embedded a city map excerpt on his private homepage so that his friends can find him better. This is a copyright infringement (§§ 19a, 106 UrhG). The public prosecutor's investigation against the student was discontinued due to insignificance. A lawyer issued a warning to the student, demanded that a cease-and-desist declaration be issued and requested an amount of 1,000 euros as a lawyer's fee. In the future, the law firm can only demand reimbursement of 100 euros from the student for its legal services if the case is a simple one with only an insignificant infringement.
This limitation does not affect the lawyer's claim for remuneration against his client, i.e. the right holder. In the case of other intellectual property rights such as trade mark or patent law, this addition is not necessary, as warnings can only be issued here anyway if the right has been infringed in the course of trade.
- Claims to information
There is already a civil law right to information for the rights holder against the person who infringes intellectual property (e.g. Section 101a UrhG). Very often, however, the information required to identify the infringer is held by third parties (such as Internet providers or carriers) who are not themselves infringers. In the future, the rights holder should also have a right to information against these third parties under certain conditions. This is intended to give the rights holder the opportunity to identify the infringer by civil law means in order to better enforce his rights in court. One of the prerequisites for the right to information is that the infringer has acted on a commercial scale. There is no access to data retained for the purposes of civil-law claims for information.
In the case of significant, commercial violations, the diversions via criminal proceedings can be avoided in the future. In the case of such violations, the access provider, among others, will in principle be obliged to hand over the customer data assigned to the IP address.
However, this applies to so-called traffic data with restrictions. Traffic data is data on the circumstances of communication, such as the assignment of a number to a connection owner or the length of time a connection existed between two connections.
However, if the party obliged to provide information - like the access provider in the example - can only provide the requested information using so-called telecommunications traffic data, a prior court order on the use of the traffic data is required for the information to be provided. Damages
The previous case law on damages that, at the choice of the infringed party, the profit of the infringer or an appropriate fictitious licence fee - i.e. the remuneration that would have had to be paid for the lawful use of the right - can also serve as the basis for calculating damages, in addition to the concrete damage incurred, is now regulated in a legally binding manner.
This should lead to a nationwide standardisation of procedures.
- Production and securing of evidence
If an intellectual property right is infringed with sufficient probability, the right holder also has a claim against the infringer for the production of documents and the authorization to inspect objects, which goes beyond the possibilities already existing under the Code of Civil Procedure. If necessary, the claim also extends to the production of bank, financial and commercial documents. In order to avert the risk of their destruction or alteration, such evidence may also be secured by way of interim relief by the issuance of an interim injunction. Insofar as the infringer claims that confidential information (e.g. trade secrets) is involved, the court shall take the necessary measures to ensure confidentiality.
- Border Seizure Regulation
The EU Border Seizure Regulation, whose provisions are generally directly applicable, provides for measures to protect intellectual property directly at the EU's external borders. This is intended to prevent goods suspected of infringing intellectual property rights from being imported into the EU in the first place.
This regulation also governs the destruction of seized pirated goods. However, the applicability of this regulation depends on the member states approving it, i.e. incorporating it into their law.
Until now, the seized goods could only be destroyed if the violation of the right was established by a court. The new Border Seizure Regulation provides for a simplified procedure, according to which destruction is also possible if the person entitled to dispose of the goods does not object within a certain period of time. His silence is then deemed to be consent. This regulation, which used to apply in Germany, is now only applicable in the member states if the respective national law expressly so provides. The new law takes this into account.
- Protection of geographical indications
Civil enforcement of protection rights will also be facilitated for geographical indications in the manner described. In addition, the amendment to the Trademark Act is intended to create protection under criminal law for those geographical indications and designations of origin that are protected at European level under Council Regulation (EC) No. 510/2006 of March 20, 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ EU No. L 93 p. 12). These include the names of numerous agricultural products such as the famous "Spreewälder Gurken". Previously, such protection existed only for designations protected under purely domestic law.
- Publication of Judgment
So far, the right holder could already request publication of the court judgment in case of infringement of a copyright or design right. This possibility is extended to all intellectual property rights.
Source: Press and Public Relations Department of the
Federal Ministry of Justice
Responsible: Eva Schmierer; Editors: Dr. Henning Plöger, Dr. Isabel Jahn, Johannes Ferguson, Ulrich Staudigl
Mohrenstr. 37, 10117 Berlin
Telephone 01888 580-9030
Fax 01888 580-9046
Goldberg Attorneys at Law 2008
Alexander Goldberg; Attorney-at-law and at the same time specialist attorney for intellectual property law and specialist attorney for information technology law (IT law)