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Should we prefer Germany or France for Preliminary Injunctions in IP cases?

In the recent past, preliminary injunctions (“PI”) were almost impossible to obtain before French jurisdictions. But during the last year Paris High Court (i.e. Tribunal de Grande Instance”) granted PI in three patent cases (Minakem v. Melchior and M2I, Novartis v. Teva, Searle v. Sandoz). In Novartis v. Tevathe Court also granted more than 13 million Euros as provisional damages. At the same time, PI are more and more difficult to obtain in Germany. This is all the more interesting when a litigation is cheaper in France than in Germany (no court fees and lawyers’ fees are cheaper). Is it time to change pan-European IP litigation strategies? Perhaps. But let’s compare German and French PI systems: requirements (1), proceedings (2) and results (3).

1°) What are the requirements?

In both countries, the claimant must should demonstrate an infringement or an imminent infringement. However, the requirements seem stricter in Germany (a) than in France (b)

a) Germany

German courts usually require that infringement can be established « without difficulty« or they use similarly restrictive language. For this reason, concerning a patent infringement, it is unlikely that a preliminary injunction will be issued, if infringement can only be established by expert testimony which is usually the case when only equivalent infringement is alleged. As a general rule the infringement has to be obvious from the accused device itself. It is, however, permissible (and in many cases advisable) to provide the court with expert reports in order to illustrate the infringement and the technical background of the invention.

With regard to the urgency, the claimant must show that the matter is so urgent for him that he cannot wait for the outcome of a standard court proceeding. There is no fixed deadline, but a delay of one month for example, starting from the date on which the right holder becomes aware of the infringement, will usually not be considered excessive.

When determining the necessity for a preliminary injunction, German courts will also, among other factors, consider the validity of the title(e.g. the patent). This requirement, while seeming fairly straightforward from a French perspective, constitutes an exception from one of the basic tenets of German patent law: the separation principle. According to this principle, German courts generally have to treat titles as valid, unless they are declared void in a separate proceeding. The courts cannot invalidate a title in preliminary injunction cases, but they can refuse to grant the preliminary injunction based on doubts about the validity of it. Many courts require the plaintiff to merely show that there are no substantial doubts about the validity of the title. But there are also decisions that call for a stricter standard and will only allow preliminary injunctions if the title has survived an opposition or invalidity proceeding.

b) France

Pursuant to the French Law, the claimant must only show« reasonable evidence« that its rights are likely to be infringed or that such infringement is imminent. It is advisable for a claimant to support its application with prima facie evidence of infringement, preferably by way of a court bailiff’s report. The report is drawn by a public officer operating under oath without pre-assessment of the claimant’s rights or the merits of the case.

Proceedings no longer have to be instituted within a short time after the day on which the owner of the IPRs obtained knowledge of the facts on which they are based, so that urgency is not a requirement as a matter of principle. But it is still required in the following cases:

  • when the interim injunction is required ex parte,
  • when the claimant requested the authorization to summons d’heure à heure. These are expedited inter partes interim proceedings served on a very short notice to the defendant.

2°) How to proceed?

a) Germany

As a matter of principle, the competent courtis the court of the defendant’s place of residence. However, in the case of intellectual property right infringements, the claimant can also call the Court in which district the infringement occurred.

German courts are not obligated to hear the defendant before they issue a preliminary injunction. This could be ex parte. Businesses that fear becoming the subject of a preliminary injunction are not defenseless, however.

Companies can preemptively file aprotective brief(“Schutzschrift”) with the court(s) where they suspect the motion to be filed to argue their side of the dispute before a decision is cast.

If a preliminary injunction was granted in an ex parte proceeding the defendant has the possibility to file an appealagainst the Court’s decision. Such an opposition leads to an oral hearing where the validity of the injunction is reviewed by the Court taking into account the defendant’s arguments.

b) France

Competence rules are the same than in Germany. But despite these general rules, the Paris Court of First Instance is the competent Courtto hear (i) patent, (ii) European Union Trade Marks and (iii) Community designs cases. That rule guarantees more legal certainty.

Preliminary injunctions could be ordered very fast and ex parte:

  • d’heure à heure: the claimant must first apply before the motions judge, on an ex parte basis, to be granted the authorization to summon the defendant on an expedite basis. As already mentioned, in his application, the claimant will have to demonstrate the urgency. Once this authorization is granted, the complaint is served to the defendant and the preliminary injunction proceedings take place as described above. The decision can be issued within a few days or weeks.
  • ex parte: the claimant applies before the motions judge, without the defendant being aware and having the right to answer, to be granted a preliminary injunction. The decision is rendered right away. These ex parteinjunctions are very rarely granted.
  • while the substantive proceedings on the merits is already pending: the preliminary injunction is applied before the judge in charge of the proceedings of the case on the merits.

Protective briefs do not exist under French law. The only similar mechanism is the declaration of non-infringement and it only exists in patent cases. The point of bringing this action against the patent owner is to remove any doubt over the infringing or non-infringing nature of the acts taken by the claimant.

Preliminary injunction decisions issued by French Courts can be appealedeither by the claimant or the defendant within 15 days as from the day of the service of the order. The injunction remains enforceable during the appeal proceedings. Specific rulesapply when the preliminary injunction order has been requested ex parte:

  • if the injunction is denied, an appeal may be lodged the time-limit for appeal is fifteen days as from the day the order was issued. The appeal will be lodged, managed and determined as in non-contentious matters.
  • if the injunction is granted, any interested party may refer back to the judge who has given the order to have said order be « withdrawn ». There is no time-limit to do so.

3°) For what?

a) Germany

Claims for cease and desist, information, and confiscation. Claims for destruction, damages and information are excluded from preliminary injunction decisions as the outcome could be irreversible. Preliminary injunctions in patent cases are normally only granted in clear cut cases where the patent is « sufficiently valid », i.e. reasonably likely to be found to be valid and infringed.The claimant may be required to post a bond.

b) France

Claims for cease and desist, information, confiscation. Provisional damages can also be awarded, depending on the circumstances of the case and the seriousness of the infringement. The claimant may be required to post a bond as well.

c) Are “PI” enforceable in other member States?

Preliminary injunctions may also be enforced in other Member States of the EU. The claimant needs to file a request for enforcement with the court in the Member States in which the injunction shall be enforced according to Article 38 (1) Regulation on Jurisdiction and Recognition and Enforcement of Judgements.

If the injunction was rendered ex parte, some countries within the EU do not acknowledge the decision and will not serve and enforce it.

Regarding European Union trademarks and community designs, German/French courts may issue injunctions with effect for other Member States or the entire territory of the EU.

First, the claimant must be proprietor of a European Union trade mark or design and there must be an infringement in at least one Member State of the EU.

Second, there are different conditions in which German/French courts have jurisdiction to issue an injunction in such infringement cases:

  1. The defendant is domiciled in Germany/France or, if not, has a subsidiary in Germany/France.
  2. The claimant is domiciled in Germany/France or, if not, has a subsidiary in Germany/France.
  3. The parties agreed on the jurisdiction of France/Germany courts.

If one of the requirements is fulfilled, Germany/France courts have jurisdiction to issue an injunction with effect to every Member State of the EU where an infringement is conducted.

Conclusion

In the past it was not advisable to try to obtain IPR PI before French jurisdictions, because it was almost impossible to obtain.

The recent caselaw calls to think about it differently. With lower requirements (“reasonable evidence”), flexible proceeding (multiple ex parte options) and better results (provisional damages and lower costs), PI before French jurisdictions could now be seriously reconsidered.

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