Industrial legal protection
Industrial property rights in a globalized world
When it comes to dealing with the growing number of providers and competitors, the role of industrial legal protection is gaining increasing importance in the economy. The team of attorneys at LSV possesses extensive and many years of experience in the field of industrial legal protection, in particular with regard to copyright and media regulations, trademark as well as competition law.
Fairness in competition
Competition Law / Unfair Competition Act [Recht gegen den unlauteren Wettbewerb – UWG]
The competition law governs the fair competition of participants in the market among one another and prevents the deceptive, unfair behavior of competitors, aimed at enticing potential clients to make poor purchase decisions. This concerns both long-term actions, e.g. the selection of a competitor’s name, as well as individual marketing campaigns and promotions.
Typical procedures set forth in the unfair competition act for settling these scenarios out of court include among other things the declaration to cease and desist and the warning notice. In court, a party’s rights can be enforced with a temporary injunction. In addition, the competitor is required to provide information, destroy the unfair marketing materials, return them and provide compensation for loss suffered.
The warning notice is the notification of the competitor acting unfairly about the specific violation of the competition law, combined with the request to stop the specific action in the future. Furthermore, claims for the provision of information, compensation for loss suffered, return and destruction can already be asserted vis-à-vis the competitor acting unfairly in connection with the warning notice.
Declaration to cease and desist
The warning notice is combined with the request addressed to the competitor to issue a binding cease-and-desist declaration effective in the future. With the cease-and-desist declaration, the competitor agrees to stop the anticompetitive behavior in the future and to pay a specified penalty in the event that he violates the prohibition. The stipulated penalty in the event of a violation must be sufficiently high to discourage the competitor economically from repeating the violation of the competition law.
In most cases, prompt actions are imperative to suppress the competitor’s unfair behavior as quickly as possible. If the competitor fails to respond to the warning notice and/or refuses to sign the cease-and-desist declaration sent to him, legal proceedings against the competitor must be initiated. In order to stop the competitor’s unfair behavior as quickly as possible and prevent further damage, e.g. as a result of alienated clients or lost revenue, the goal will be to attain a court-backed temporary injunction to cease the specific anticompetitive activity against the unfair competitor by way of temporary legal protection. Therefore, recipients of a warning notice should not ignore it without further examination, as there is otherwise a – potentially unfounded – risk of getting drawn into an expensive dispute before the court. With temporary legal protection, that is, summary proceedings, it is compulsory for the claims to be asserted promptly, i.e. for most courts within four weeks after the violation of the competition law has been established. Failing this, the action will be closed by means of summary proceedings, and only the conventional, longer legal action can be pursued, as the petitioner will be denied the urgency required for the issuance of temporary injunctions if he decides to wait any longer.
A legal decision issued during temporary legal protection (temporary injunction) only temporarily secures the asserted claims. In order to secure the asserted rights definitively and avoid any further legal action, the unfair competitor will be asked to issue a final declaration outside of court, with which he acknowledges the claims confirmed by the court in the temporary legal protection irrevocably for the future. However, if the unfair competitor refuses to do so, an action for restraint (action regarding the main issue) must be filed on the basis of the temporary injunction within 6 months’ time. Otherwise, the claims that have only been secured temporarily by the temporary injunction may be subject to the statutory limitation and the unfair competitor can request the waiver of the temporary injunction, including the reimbursement of costs that have accrued until then.
If such a final declaration is requested from a market participant, legal advice is indispensable to prevent the risk of further action for injunctive relief and additional costs. However, if no request for the issuance of a final declaration is requested after a temporary injunction, it should be reviewed whether it would not be possible to request the cancellation of the temporary injunction and the reimbursement of accrued costs after the expiration of 6 months.
Action for restraint and assertion of other claims
Provided that a temporary injunction was reached by means of summary proceedings, it only temporarily secures the rights for a period of 6 months. In case the unfair competitor refuses to issue a final declaration, action for the main issue in the form of an action for restraint must be filed against the unfair competitor on the basis of the temporary injunction in order to secure the injunctive relief definitively. This is usually combined with requests for information, e.g. about the scope of the distribution of the illicit advertising, claims for compensation of losses and the destruction of advertising materials, etc.
Should the temporary legal protection be denied for lack of required urgency, e.g. because an extended period of time has already elapsed since the violation of the competition law was established, the injunctive relief may still be asserted with normal litigation proceedings by means of an action for restraint, if applicable. Still, this often turns out to be a blunt sword, since it is very unlikely e.g. in connection with a one-time advertising campaign, that it will be repeated in the same format. The competitor has already achieved the aspired competitive advantage with the illicit advertising campaign, and it will be impossible to reverse it retroactively even with the action for restraint. Consequently, the temporary injunction is considered to be the sharp sword in competition law.
Trademark Law / trademarks
We represent businesses, inventors and private individuals looking to protect their products, services and business ideas against illegitimate imitation and exploitation (product piracy).
Trademark registration and brand management
In trademark law, the attorneys at LSV provide advice and represent clients in connection with the registration of a trademark, nationally or internationally. Our services include the conduct of extensive research, the determination of priority rights as well as the risks of mistakes and the provision of guidance with regard to the decision about brand names and classifications. In addition, we issue a recommendation regarding the scope of protection at a national, European or global level. In this context, the team at LSV also provides advice about the protection of your corporate logos, signs and labels and its scope. Upon request, we manage and monitor your trademark continuously and inform you timely about necessary trademark right extensions.
Licensing of trademark rights
Moreover, we counsel and represent you in connection with the acquisition and transfer of trademark rights. We draft and negotiate the appropriate license agreements. Furthermore, our attorneys represent the client’s stakes associated with oppositions and deletion procedures before the German Patent and Trademark Office [DPMA].
Violation of trademark rights
LSV represents clients in and out of court for violations of trademark rights in the same way as for warding off alleged claims. In connection with the defense of these kinds of claims, trademark owners and parties receiving warning notices are often mistaken about the scope of protection of the brand. For instance, the assessment by an attorney may demonstrate that the scope of the protection is not as far-reaching as the recipient of the warning notice thought. In contrast, it is possible that the scope of protection is broader than the trademark owner initially believes, enabling him to enforce his claims under trademark law based on the attorney’s advice.
The assertion of unwarranted claims for omission, information, destruction and/or compensation for loss suffered because of an unjustified trademark violation warning can often be warded off successfully and the accrued legal costs be claimed as compensation. Conversely, we negotiate cost-effective solutions on behalf of our clients in the event of legitimate violations of trademark rights, for example by reducing the costs or with the agreement of periods of permitted use.
Industrial Design Act (formerly Act on the Legal Protection of Designs)
The design act governs the protection of two- or three-dimensional industrial or hand-made objects that are innovative and unique. The design law clearly stipulates that the owner of a registered design has the exclusive right to use it. Thus, he also has the right to prohibit third parties from using the design registered in his name without his consent. Section 38 of the DesignG (Design Act) defines that a use of this design is realized with the manufacture, offering, marketing, the import and export of the design as well as the use of the product which the registered design is used with, and the possession of such products.
We provide competent support with the licensing of your design and in the event of a violation of the design act, e.g. in connection with an illegitimate copy or imitation, the enforcement of compensation, omission, remedy, etc. In the event that objections are raised to the registration of a design, it is also possible to request the deletion of the design following a legal evaluation.
Utility model rights
Utility models are technical inventions as well as chemical substances, food and medicinal products. The effect of registering a utility model is that only the owner is authorized to use the subject matter of the utility model. The utility model law stipulates that any third party is prohibited from manufacturing, offering, circulating or using or either importing or owning for the mentioned purposes any product, which is the subject matter of the utility model, without the consent of the owner of the utility model right. Our team of attorneys assists you with the enforcement of your rights to protect your utility model, such as e.g. with the licensing, but also with the claim for omission and compensation for loss suffered in connection with third-party use or with the request for deletion of an illegitimately registered utility model.
Protection of know-how
A vital competitive advantage of a business is the know-how it developed over a period of many years. The protection of know-how always takes effect when companies deliberately decide in favor of keeping secret technical or business-related information. The protection of know-how has gained existential significance because of internationalization and economic espionage. EU Directive (2016/943), which entered into force in summer 2016, has tightened the requirements for the protection of know-how compared with the previous legal status in Germany, as companies are obligated to implement adequate secrecy procedures. Therefore, the time has come to secure your market advantages and growth through optimal protection of know-how.
The protection of know-how thus exceeds patent and trademark law, as it generally encompasses any information that is a) not already public knowledge, b) not supposed to be disclosed to third parties by the business owner and c) known only to a limited circle of people. This can include e.g. customer data, calculation fundamentals, marketing plans or research results, but also other ideas and simply information deemed subject to secrecy.
The protection of know-how hence closes the gaps that cannot be covered by industrial property rights.
In the past, the disclosure and illegitimate exploitation of trade secrets have only been protected incompletely by criminal law and competition law. We will show you how to protect and defend your know-how effectively.
The team of attorneys at LSV reviews your and your competitor‘s advertising campaigns with respect to the UWG. In case of doubt, we determine whether the specific behavior is misleading and unfairly attracts the clients‘ attention. We protect the interests of our clients, by enforcing claims for injunctive relief opposite the unfair competitor out of court in the form of a warning notice, in summary proceedings with a temporary cease-and-desist order and/or in the course of a normal legal process by means of an action for restraint.
In addition, we assist our clients with the enforcement of claims: for information, e.g. on which clients were contacted by the unfair competitor or what kinds of revenue he generated based on the campaign; for return, e.g. of the anticompetitive advertising materials; for destruction, e.g. of the anticompetitive advertising materials and for compensation of lost profits as a result of the unfair marketing campaign.
In the event a market participant is asserting claims, e.g. by way of a warning notice, we provide comprehensive advice to our clients and represent them in defending the claims. A warning notice should not be ignored without the prior legal evaluation under any circumstances, as the competitor can otherwise initiate legal steps, such as the temporary injunction outlined above. In addition, declarations to cease and desist should not be signed hastily without legal evaluation, as they are tied to a long-term obligation. Therefore, we defend unwarranted accusations related to competitive activities on your behalf. In our capacity as attorneys with experience in legal actions, we are also thoroughly familiar with the procedural pitfalls of the competition law.
LSV provides guidance for all questions related to competition law. Talk to us!