IP protection at international trade fairs in Germany

International trade fairs serve as an effective, direct and cost-efficient marketing avenue. Germany hosts nearly 70% of the world’s international trade fairs, underscoring its significant influence in the exhibition industry. This article discusses potential civil risks and remedies regarding IP protection when participating in international trade fairs in Germany.

German IP protection

German intellectual property (IP) laws closely resemble those in China, but there are two notable distinctions to be aware of:

1. Unregistered design patents in Germany receive temporary protection for three years, provided they are publicly disclosed within the EU. No formal application is required, unlike in China where authorised registration is a prerequisite for protection; and
2. In Germany, even if a product is no longer protected by patents, or has never been under patent protection, imitation or replication of its external features (including technical aspects) may still be considered unfair competition if those features possess uniqueness or recognition.

Civil rights protection means

At German international trade fairs, exhibitors typically resort to civil means to protect their legitimate IP rights when other exhibitors infringe on them.

Warning letter. The rights holder initiates the process by sending a written warning letter to the alleged infringer. This letter often includes a pre-drafted cease-and-desist declaration, requiring the infringing party to sign and acknowledge the document. The core of the declaration stipulates that if the infringing behaviour reoccurs, the infringing party must pay a fine to the rights holder.

Temporary injunction. If the infringing party does not respond to the warning letter, the rights holder may apply for a temporary injunction from a local German court. The time lapse between receiving the warning letter and the court’s issuance of a temporary injunction is short – from as little as two to three hours to a maximum of two to three days. The court typically does not notify the infringing party in advance, and hearings or oral proceedings are generally not part of the process.

Civil litigation. If the rights cannot be adequately protected through a warning letter or a temporary injunction, exhibitors can resort to civil litigation to safeguard their legal rights. During German trade fairs, exhibition booths are considered the business premises of foreign companies in Germany.

According to German law, IP infringement cases can be filed in the legal jurisdiction of the legal person’s business place. This means that IP lawsuits at German trade fairs do not require translating the complaint into the opposing party’s native language or spending extensive time on service.

However, the legal proceedings have a relatively longer timeframe compared to warning letters and temporary injunctions. The defendant’s exhibits are only prohibited from display after a court judgment has become effective.

Special dispute resolution teams. In recent years, more trade fair organisers have established dispute resolution special teams to handle IP complaints.

Exhibitors are both rights holders and alleged infringers, and both parties have contracts with the trade fair organisers. Rights holders have an obligation to protect their legal rights from infringement. Exhibitors accused of infringement have an obligation to assure the trade fair organisers that they do not infringe upon others’ legal rights, and are obliged to explain when faced with complaints.

Civil remedies

Assessment and settlement. Once the exhibitor has ascertained validity of the right holder’s rights, they should assess whether their showcased products infringe upon these rights, and whether the terms outlined in the warning letter are reasonable.

If it is determined that the exhibitor’s products do indeed infringe – and the settlement terms proposed by the opposing party are deemed fair (e.g. no withdrawal from the exhibition required, but a fee must be paid) – the exhibitor may choose to sign the warning letter.

This course of action helps to circumvent protracted German legal proceedings and prevents the opposing party from seeking a temporary injunction from the court, which could impede the display of other non-infringing products.

Protective letter. Exhibitors who are confident their products do not infringe on the rights of others may promptly seek legal counsel to apply for a protective letter upon receiving a warning letter.

The time limitations associated with trade fairs (typically spanning three to five days) often leave alleged infringers in a precarious situation if they decide to contest a temporary injunction after it has been imposed.

Exhibitors, drawing on their experience, various indicators during the exhibition, or knowledge of competitors, may anticipate that the opposing party might seek a temporary injunction during the trade fair. In such cases, they can proactively petition the court to issue a protective letter before the trade fair, thereby preventing the court from issuing an interim injunction ruling.

From 1 June 2023, the Agreement on a Unified Patent Court (UPC) officially came into effect.

Right holders and exhibitors facing allegations of infringement can submit a protective letter or request an interim injunction through the UPC. This allows the protective letter or interim injunction to be legally valid in the 17 EU member states that have ratified the UPC agreement.

Other protective measures

In addition to timely registration, IP applications, early searches and carrying relevant proof of rights and non-infringement materials, exhibitors should remain level-headed when handling disputes.

First, upon receiving documents such as a warning letter, exhibitors should promptly seek advice from professionals and negotiate with the right holders to potentially amend the content of “cease and desist” statements in their favour.

Second, exhibitors should respect foreign law enforcement agency orders and avoid taking action to refuse enforcement, thus preventing more severe sanctions and damage to their reputation in the international market.

Exhibitors should also establish contact with the applicants promptly and explore the possibility of an out of court settlement.

Finally, Chinese exhibitors should promptly reach out to Chinese IP protection agencies or industry associations for assistance. Simultaneously, they should select a dispute resolution strategy that aligns with their maximum interests, based on local regulations and key precedents.

Han Jing is a partner and Su Jianhua is an associate at Zhilin Law Firm