Trade fairs are one of the key marketing tools used by companies. In addition to increasing awareness and helping maintain customer relationships, they are primarily a means of showcasing new products.
It is not uncommon for an entrepreneur visiting a competitor’s trade fair stand to lay eyes on a new product that infringes his or her own technological IP rights. Attempts to challenge the infringing item at this early stage and prevent it from coming to market are understandable. A preliminary injunction is a powerful weapon that can quickly put a stop to patent infringement. It also enables the patent proprietor to demonstrate that it is taking action against imitations, thereby making its presence felt and strengthening its market position.
Legal and practical challenges
The German courts rightly impose strict requirements on the issuance of a preliminary injunction based on patent infringement. In practice, not all patents can be enforced at trade fairs. The technology in question must be relatively easy to understand, and it must be possible to reliably determine the infringement in the preliminary proceedings.
The courts also demand that the legal validity of the patent be sufficiently assured. The patent must usually have made it through inter partes proceedings (opposition or nullity). As the case may be, other circumstances may also be sufficient.
From a practical perspective, there is a considerable shortage of time in a trade fair situation. If a trade fair only lasts two or three days, obtaining a preliminary injunction will be a challenge.
Enforcement can also be difficult, for example if the removal of large patent-infringing machinery requires cranes or if the infringing device is part of a larger unit that must be dismantled first.
Enforcing rights
These challenges require a well-considered and coordinated approach.
- Before the trade fair: preparation. Ideally, enforcing patents will begin prior to the trade fair. Potential infringers can be identified by reviewing the list of exhibitors. The product portfolio and especially product innovations of these competitors should be analysed. Potentially infringed IP rights should then be identified. All information should be quickly made available to the lawyers so that drafts of injunction motions or cease and desist letters can be prepared.
The patent proprietor should ensure access to a technological contact person and to the management – which is often difficult to contact in trade fair situations – so that strategic decisions can be made or affidavits can be issued rapidly.
- Injunction motion. In the injunction motion, particular attention must be paid to explaining both the patented teaching and the infringement in a comprehensible manner. The primary objective of the motion is to obtain a cease and desist order. A motion to have the infringing item held in custody can be filed in order to secure evidence for an action on the merits. The injunction motion can also be combined with a motion for attachment with regard to the costs of the injunction proceedings if the enforcement of the claim for costs would otherwise be prevented or materially impeded.
Despite the need to act swiftly, it should be considered whether it is worth issuing a cease and desist letter with a very short deadline (perhaps only a few hours) in advance in order to avert the cost risk.
The courts at the major German trade fair locations are prepared for injunction proceedings under patent law. The court will issue its decision promptly – usually by the next day or sometimes even within hours.
- Enforcement. The enforcement of a preliminary injunction is carried out by a bailiff, who should be contacted in advance. Take into account practical requirements such as workmen, special tools or means of transport. It is often prudent for the lawyers to be present during the enforcement. An attachment order can also be enforced directly at the trade fair stand by seizing exhibits, for example.
- Other options. In the case of clear infringements, a cease and desist letter alone may be successful and sufficient. Actions or cost assessment orders from previous disputes can be served to foreign infringers at the trade fair and thus in Germany, avoiding expensive and time-consuming procedures for service abroad
Defence
The legal options described above are of course particularly unpleasant if you are the suspected infringer. Fending off a preliminary injunction that has already been issued is usually impossible in the trade fair situation – an objection is normally not tried until after the trade fair ends. Especially in the case of leading trade fairs that are held at intervals of several years, an injunction often effectively makes it difficult to market the product in question for years to come. Asserting damages claims due to the enforcement of a wrongfully issued preliminary injunction (sec. 945 of the German Code of Civil Procedure) will be of limited help to a party against which legal action is taken without reasonable grounds. This makes it all the more important to have the best possible defence.
The key is thorough preparation in advance of the trade fair. This includes identifying where potential challenges could come from and any relevant IP rights as early as possible. The owner’s product innovations should be critically reviewed to establish whether any patent infringement (justified or not) could be alleged. On this basis, the defence should be prepared prior to the trade fair. A protective brief can be submitted to try to avert the issuance of a preliminary injunction from the outset.
In the trade fair situation itself, it is worth having a well prepared lawyer on standby who can quickly arrive at the trade fair stand in emergencies. It may be possible to prevent the bailiff from going through with the enforcement, for example if the infringement cannot be clearly identified from the bailiff’s perspective or if certain products are not unequivocally covered by the judgment. It is often possible to at least influence the manner in which the court order is enforced, because the recipient can chose how to comply. For example, a cease and desist order can be satisfied not only by completely removing a product from a trade fair stand, but also by covering it with a tarpaulin, or perhaps by converting the challenged device. If the court order relates to advertising materials, it may be possible to comply by covering the relevant parts with a sticker or by removing individual pages.
Conclusion
Trade fairs can be an ideal opportunity to effectively enforce patents. A well-considered and efficient approach is vital due to the particular trade fair situation. Good cooperation and communication between the patent proprietor and lawyers with relevant experience is essential. To be successful, any defence against unjustified legal actions must be prepared with particular care.
Authored by Miriam Gundt and Marcus Schoenknecht
A German version of this text has been published in GRUR-Prax 2017, 182.
