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

2. EU PROCEEDINGS: APPLICABLE RULES
TABLE OF CONTENTS
EU PROCEEDINGS: APPLICABLE RULES
INTERPLAY OF SUPRANATIONAL AND NATIONAL RULES
Harmonisation of procedures and remedies throught the Enforcement Directive 2004/48 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 )
AND NATIONAL 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 ON PROVISIONAL 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. Member States shall establish prompt and effective measures
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
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