INTRODUCTION TO EU PROCEEDINGS by Prof. Marina Timoteo | University of Bologna

1. INTRODUCTION TO EU PROCEEDINGSby Prof. Marina Timoteo | University of Bologna Preservation of evidence Preliminary injunctive order proceedings at trade fairs | Germany

2. TABLEOFCONTENTS EU PROCEEDINGS: APPLICABLE RULES INTERPLAY OF SUPRANATIONAL AND NATIONAL RULES • Harmonisation of procedures and remedies throught the Enforcement Directive2004/48 EC • Implementation of the Enforcement Directive 2004/48 EC by national rules PROCEEDINGS FOR PROVISIONAL MEASURES AT TRADE FAIRS GERMANY • Preservation of evidence proceeding • Preliminary injunctive order proceeding PROCEEDING IN THE MOCK TRIAL

3. EU PROCEEDINGS: APPLICABLE RULES INTERPLAY OF SUPRANATIONAL RULES (HARMONISING PROCEDURES AND REMEDIES ) ANDNATIONAL RULES

4. SUPRANATIONAL RULES Implementing the European Union’s obligations under TRIPS the European Parliament and the Council of the EU adopted the Directive 2004/48/EC on the Enforcement of intellectual property rights

5. NATIONAL RULES IMPLEMENTATION OF THE DIRECTIVE: adoption of legislation and in addition application thereof or in any event application of pre-existing legislation by the national courts in the light of the Directive

6. ENFORCEMENT DIRECTIVE 2004/48 EC Recitals 7-8 The disparities between the systems of the Member States regarding the means of enforcing intellectual property rights are prejudicial to the proper functioning of the internal market and of an environment conducive to healthy competition

7. ENFORCEMENT DIRECTIVE 2004/48 EC The Directive seeks to approximate the legislative rules of the Member States and to promote a more uniform level of protection within the EU in particular with regard some crucial issues, such as that of provisional measures (Rec. 7)

8. ENFORCEMENT DIRECTIVE 2004/48 ONPROVISIONAL MEASURES The Enforcement Directive provides that the Member States have to provide a basis for provisional precautionary measures for the prevention of infringing acts, securing the enforcement of damage claims (Articles 9 and 10) and for provisional measures aimimg at the preservation of evidence (art. 7)

9. ENFORCEMENT DIRECTIVE 2004/48 ON MEASURES FOR PRESERVING EVIDENCE (ART.7) Member States shall establish prompt and effective measures to secure evidence even prior to court proceedings, eg the description of the infringing goods or their seizure

10. ENFORCEMENT DIRECTIVE 2004/48 ON MEASURES FOR PRESERVING EVIDENCE (ART.7) Rightholder needs to present “reasonably available evidence to support his claims” Those measures shall be taken, if necessary, without the other party having been heard beforehand, in particular - if any delay is likely to cause irreparable harm - or if there is a demonstrable risk of evidence being destroyed

11. ENFORCEMENT DIRECTIVE ON PROVISIONAL AND PRECAUTIONARY MEAURES (ART. 9) Members States shall ensure that the national courts may, at the request of the applicant, issue interlocutory injunctions to prevent any imminent infringement or to forbid the continuation of the alleged infringements of intellectual property rights

12. PROVISIONAL AND PRECAUTIONARY MEAURES (ART. 9) Applicant can be required to provide any reasonable available evidence Provisional measures may be taken without the defendant has been heard, in particular where any delay would cause irreparable harm to the rightholder

13. IMPLEMENTATION OF THE ENFORCEMENT DIRECTIVE IN GERMANY The implementation of the Enforcement Directive was delayed by more than two years Germany has implemented the Directive with the Gesetz zur Verbesserung der Durchsetzung der Rechte des Geistigen Eigentums (Act on Improving Enforcement of Intellectual Property Rights) which entered into force on September, 1st 2008, modifying the Patent Act

14. IMPLEMENTATION OF THE ENFORCEMENT DIRECTIVE IN GERMANY However, even before the "Act on Improving Enforcement of Intellectual Property Rights" came into effect, the German courts have already applied the rules contained in the Enforcement Directive by interpreting and supplementing the German law in light of the Directive

15. PRE-EXISTING GERMAN LAW ON PROVISIONAL MEASURES Provisions of Enforcement Directive partly reflect procedures already available under the German Code of Civil Procedure (Zivilprozessordnung-ZPO) and the German Civil Code (Bürgerliches Gesetzbuch-BGB), as is the case of interlocutory injunctions and precautionary measures (art. 9 Enf. Dir) Rules on urgency proceedings are contained in §§ 935 et seq. ZPO

16. PRE-EXISTING GERMAN LAW ON PROVISIONAL MEASURES Indepent proceedings (prior to any main proceeding) (Selbständiges Beweisverfahren) for the taking of evidencies are ruled in §§485 et seq. ZPO in conjunction with §809 BGB which provides a "right to inspection of an object" (Besichtigung einer Sache) ("a person who wants to obtain certainty as to whether he has a claim with respect to an object may demand production of that object for inspection")

17. LEGISLATIVE IMPLEMENTATION OF THE ENFORCEMENT DIRECTIVE In order to implement art. 7 of the Enforcement Directive the German legislator introduced new provisions into the Patent act providing for a substantive claim for inspection of potentially infringing products or methods enforceable by means of a preliminary injunction §§ 140c

18. PRESERVATION OF EVIDENCE PROCEEDING During a tradefair if the right holder discovers a probably infringing item, it is possible to demand the court (Landgericht-District court) an order for an inspection of the alleged infringing object, process or documentation aiming at taking/preserving evidencies of the infringement

19. PRESERVATION OF EVIDENCE PROCEEDING This order can be requested by the right holder or any other authorized party as an ex parte order grounded on requirements of urgency, as it is usually in the case of trade fair Urgency is excluded if the claimant has waited too long to make the claim after having discovered the potential infringement The applicant should demonstrate a sufficient degree of likelihood of infringement providing proper evidencies

20. PRESERVATION OF EVIDENCE PROCEEDING The production of a document or inspection by an expert of an object or of a process that is the subject matter of the patent: eg detailed description with or without taking of samples, taking of photographs, measurements, disassembly of the object or the putting to operation of a machine are within the scope of measures for preserving evidencies The court shall take any necessary measures to ensure the proper protection of confidential information of the adversary in the specific case

21. PRELIMINARY INJUNCTIVE ORDER PROCEEDING After having recognized the alleged infringement at trade fair or shortly before the start of the fair, the right holder can ask the court (Landgericht-District court) for a preliminary injunctive order to prevent alleged infringing activities during tradefairs

22. PRELIMINARY INJUNCTIVE ORDER PROCEEDING For it to be granted, the request for preliminary injunction shall be substantiated by prima facie evidencies of a) entitlement and reason for the injunction, togheter with b) a general presumption of urgency Preliminary injunction are only granted if the request is filed within a relatively short period from when the Claimant became aware of the infringement (at the discretion of the court; typically 4 to 8 weeks)

23. PRELIMINARY INJUNCTIVE ORDER PROCEEDING In urgent cases the court can decide with only one (the Presiding) judge Court will not appoint its own expert, while expert opinion can be submitted by parties The court can command that enforcement of the preliminary injunction is dependant from paying a security deposit before; however this is hardly ever ordered in practice

24. PRELIMINARY INJUNCTIVE ORDER PROCEEDING An ex parte preliminary injunctive order is generally granted only in cases of clearcut infringement and when the requirement of urgency in the measure is well founded Otherwise oral hearing is generally set German courts try to arrange prompt oral hearings so that they can still take place during the trade fairs This is what happens in the Mock trial that is going to be represented as EU proceeding

25. MOCK TRIAL | EU PROCEEDING After the execution of the order granting the ispection for the preservation of evidencies during the set up of a trade fair a petition for a preliminary injunctive order to prevent the alleged infringer to show and exhibit at the fair the alleged infringing product is filed

26. MOCK TRIAL | EU PROCEEDING The District court of Düsseldorf decides to give the alleged infringer the opportunity to reply to the applicant’s petition within 24 hours After the alleged infringer has filed his reply the court decides to have a hearing the same day

27. MOCK TRIAL | EU PROCEEDING Roles: The rethorician represented by Prof. Dr. Joseph Strauss The claimant represented by Prof. Dr. Heinz Goddar The respondent represented by Dr. Giovanni Casucci The judge represented by Dr. Klaus Grabinsky The expert represented by Prof. Dr. Michele A. Lupoi