IP Rights Enforcement Directive implemented

The German Parliament has passed an act to implement the IP Rights Enforcement Directive (2004/48/EC).

Article 20 of the directive provides that the "member states shall bring into force the laws, regulations and administrative provisions necessary to comply with this directive by April 29 2006". In Germany, a draft act has been under discussion since January 2006; the act was finally passed by Parliament on April 11 2008. It is expected that the act will come into force on July 1 2008 (ie, more than two years after the expiry of the deadline), provided that:

• other legislative bodies do not raise further questions; and
• the German president signs the act.

The act contains several provisions which will improve the position of IP rights owners and strengthen the fight against counterfeiting. Certain provisions of the directive did not need to be transposed into German Law, as they were already provided for in the legislation or case law. For example, the directive contains several provisions on preliminary measures, including injunctions. However, interim injunction proceedings are already available in Germany.

The new act will introduce the following changes:

• In cases of infringement, IP rights owners are entitled under German law to request that the infringer provide certain information. Under the new act, IP rights owners will also be allowed (in specific circumstances) to obtain information from third parties who were aware of the infringement.
• Under the German civil procedure, IP rights owners are entitled to request the submission of further documents and evidence during court proceedings. This right will be extended to documents originating from banks, financial institutes and trading institutes. It will also be possible to request such information in interim injunction proceedings.
• Under German case law, in determining the amount of damages to be awarded to the IP rights owner, the court must take into account not only the actual damage suffered, but also the profits obtained by the infringer and any potential lost profits (eg, licensing fees). Therefore, Article 13 of the directive was already applied by the courts, but will now be introduced in the legislation. Punitive damages are still unavailable under German law.
• Under German law, IP rights owners may request that the court order the destruction of infringing goods, as provided by Article 10 of the directive. However, the customs procedures will be amended to simplify the destruction of infringing goods.
• Court decisions may be published only in specific circumstances under German law. The new act will allow the publication of court decisions in cases involving the infringement of IP rights.

The new act does not contain any significant surprises. It represents a welcome development for IP rights owners and codifies case law. However, some of the provisions are already disputed or criticized as being too vague.

Carsten Albrecht, Lovells LLP, Hamburg