Preliminary injunctions in intellectual property cases: should France be preferred to Germany?
Until recently, preliminary injunctions were rarely granted by the French courts in infringement cases. In the course of 2018, however, the Paris Tribunal de grande instance granted preliminary injunctions in three patent cases (Minakem v. Melchior and M2I, Novartis v. Teva, Searle v. Sandoz). In Novartis v. Teva the court also awarded more than €13 million by way of an interim payment of damages. At the same time, preliminary injunctions have become increasingly difficult to obtain in Germany. The phenomenon is all the more interesting in that litigation costs less in France than in Germany (not least because there are no court fees). Is it time to change pan-European strategies in patent litigation propriété intellectuelle ? Perhaps. But let us compare the German and French preliminary injunction systems: conditions (1), procedure (2) and outcomes (3).
1 – Quelles conditions ?
In both countries the claimant must show infringement, or imminent infringement. The requirements nevertheless appear stricter in Germany (a) than in France (b).
a) En Allemagne
The German courts generally require that infringement be capable of being established “without difficulty”, or use a similarly restrictive formula. For that reason, in patent matters, an interim measure is unlikely to be granted where infringement can be established only by expert evidence — which is generally the case where only infringement by equivalence is alleged. As a rule, the infringement must be obvious. It nevertheless remains permissible (and often advisable) to provide the court with expert reports, in order to illustrate the infringement and the technical background to the invention.
As to urgency, the claimant must show that the matter is so urgent for it that it cannot await the outcome of ordinary proceedings. There is no fixed time limit, but a period of, say, one month from the date on which the rights holder became aware of the infringement will generally be regarded as reasonable.
b) En France
Under French law, the claimant need only adduce “reasonable” evidence that its rights are likely to be infringed, or that such infringement is imminent. A claimant is well advised to support its application with prima facie evidence of the infringement, preferably by way of a report drawn up by a commissaire de justice (judicial officer).
The report is drawn up by a public officer acting under oath, without any prior assessment of the claimant’s rights or of the merits of the case.
It is no longer necessary for proceedings to be brought shortly after the day on which the intellectual property rights holder became aware of the facts, so that urgency is not a requirement as a matter of principle.
It remains necessary, however, in the following cases:
where the interim measure is sought ex parte;
lorsque le demandeur a demandé l’autorisation de convoquer d’heure à heure.
2 – Comment procéder ?
a) En Allemagne
In principle, the competent court is that of the defendant’s place of residence. In infringement cases, however, the claimant may also seise the court of the district in which the infringement occurred.
The German courts are not required to hear the defendant before granting an interim measure; it may be granted ex parte. Companies fearing that an interim measure may be sought against them are not, however, defenceless. They may pre-emptively file protective writs (“Schutzschrift”) with the court or courts before which they suspect the application will be made, so as to put their case before a decision is taken.
Where an interim measure is granted ex parte, the defendant may challenge the court’s decision. Such an opposition gives rise to a hearing at which the court reviews the validity of the measure in the light of the defendant’s arguments.
b) En France
The general rules of jurisdiction are the same as in Germany. Notwithstanding those general rules, however, the Paris Tribunal de grande instance has exclusive jurisdiction over (i) patents, (ii) European Union trade marks and (iii) Community design cases. That special rule of jurisdiction affords greater legal certainty, not least through the specialisation of the judges.
Preliminary injunctions may be ordered very quickly and ex parte :
d’heure à heure (expedited hearing): the claimant must first apply ex parte to the judge in chambers for permission to have the defendant summoned at short notice. In its application the claimant must show urgency. Once permission is granted, the claim is served on the defendant. A decision may be given within days or weeks.
ex parte : the claimant applies for an interim measure to the judge in chambers, without the defendant’s knowledge and without any right of reply. The decision is given immediately. Such ex parte measures are very rarely granted.
Protective writs do not exist in French law. The only comparable mechanism is the declaration of non-infringement, and it exists only in patent cases. The purpose of that action against the patent proprietor is to dispel any doubt as to whether the claimant’s acts are unlawful.
Preliminary injunctions granted by the French courts may be appealed, by either the claimant or the defendant, within 15 days of service of the order. The decision remains enforceable pending the appeal.
Specific rules apply where the preliminary injunction order was sought ex parte :
if the measure is refused, an appeal may be brought. The time limit for appealing is fifteen days from the day the order was made; the appeal is lodged, managed and determined as though it were a non-contentious matter;
if the measure is granted, any interested party may apply to the judge who made the order to have it set aside, without any time limit.
3 – For what relief?
a) En Allemagne
Applications for an injunction, for information and for seizure. Applications for destruction and for damages are excluded from preliminary injunctions, since their effects could be irreversible. The claimant may be required to provide security.
b) En France
Applications to cease and desist, for information and for seizure. Interim damages may also be awarded, depending on the circumstances of the case and the seriousness of the infringement. Thus, in Novartis v. Teva, the Paris Tribunal de grande instance awarded the claimant more than €13 million last year. The claimant may also be required to provide security.
c) Are preliminary injunctions enforceable in other Member States?
Preliminary injunctions may also be enforced in other EU Member States. The claimant must file an application for enforcement with the court of the Member State in which the injunction is to be enforced, in accordance with Article 38(1) of the Regulation on jurisdiction and the recognition and enforcement of judgments.
Where the injunction was granted ex parte, some European Union countries will not recognise the decision and will neither serve nor enforce it.
As regards European Union trade marks and Community designs, the German and French courts may grant injunctions valid for other Member States or for the whole of the European Union
First, the claimant must be the proprietor of a European Union trade mark or design, and there must be an infringement in at least one EU Member State.
Second, different conditions govern the jurisdiction of the German and French courts to grant an injunction in such infringement cases:
Le défendeur est domicilié en Allemagne / France ou, à défaut, a une filiale en Allemagne / France.
The claimant is domiciled in Germany / France or, failing that, has a subsidiary in Germany / France.
The parties have agreed on the jurisdiction of the French or German courts.
If one of those conditions is met, the German and French courts have jurisdiction to grant an injunction covering every European Union Member State in which an infringement is committed.
Conclusion
In the past it was inadvisable to seek preliminary injunctions before the French courts, since they were almost impossible to obtain.
Recent case law invites us to think differently. With lower requirements (“reasonable evidence”), a more flexible procedure (several ex parte options) and better outcomes (interim damages and lower costs), preliminary injunctions before the French courts now deserve serious reconsideration.