Law implementing IP Rights Enforcement Directive comes into force

After a two-year delay, the law implementing the EU IP Rights Enforcement Directive (2004/48/EC) came into force on September 1 2008. The law improves the protection of IP rights and facilitates the fight against piracy and counterfeiting.
The new law amends the following acts in order to comply with the requirements of the directive:
  • the Patent Act;
  • the Utility Model Act;
  • the Semiconductor Protection Act;
  • the Copyright Act;
  • the Design Patent Act;
  • the Plant Varieties Protection Act; and
  • the Trademark Act
Only one amendment to the Copyright Act was not foreseen by the directive - namely, the refund of the legal costs incurred following the receipt of a warning letter has been capped at €100. The scope of application of this new rule remains to be seen, as the rule is restricted to simple and insignificant infringements carried out on a non-commercial scale. This rule has not been implemented in the other IP laws, as they require the commission of an infringement in the course of trade.
One of the most significant amendments is that the group of entities that are obliged to provide information has been extended. Previously, IP rights owners had the right to request information from infringing parties, but were often unable to obtain such information in practice. Under the new law, if an infringement has been committed on a commercial scale, the IP rights owner has the right to request information from third parties, such as internet service providers (ISP). If the ISP is obliged to disclose the dynamic internet protocol address of the infringing party, judicial authority (Richtervorbehalt) is required. This requirement aims to prevent the mishandling of private data. The right to obtain information from third parties is most likely to be applicable in the field of file sharing (Tauschbörsen); it should allow IP rights owners to discover and establish the facts necessary to assert a claim before the courts.
In addition, the new law recognizes a method for calculating damages that was already applied by the courts. In determining the amount of damages to be awarded, the courts must take into account not only the actual damage suffered (which is often difficult to prove), but also the profits obtained by the infringer and potential lost profits (eg, licensing fees).
Further, under the new law, if the likelihood of infringement is sufficient, IP rights owners have a statutory right to request the inspection of the allegedly infringing goods and the submission of relevant documents. This right may be enforced by means of a preliminary injunction. Moreover, IP rights owners now have the right to request that court decisions be published in cases of infringement.
Finally, the new law aims to strengthen the fight against piracy and counterfeiting. The procedures for the destruction of infringing goods have now been simplified in accordance with the EU Customs Regulation (1383/2003). 
Tanja Hogh Holub, Beiten Burkhardt, Munich

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