GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
if the condition of the goods has been changed or impaired after being put on the market. Regarding copyright law, Section 17 paragraph 2 CA provides that where the original or copies of the work have been put into circulation by sale with the consent of the person entitled to distribute them within the territory of the EU or another Contracting Party to the Agreement on the EEA, their dissemination is permitted, except by means of rental. However, there is no general principle of exhaustion for digital content. The owner of a copyright, a trade mark or any other sign protected under the TMA may file for injunctive relief against the alleged infringer and also for a preliminary injunction if the infringe - ment is likely and the prerequisite of urgency is met. This commonly requires that the action for preliminary injunction is filed not later than four weeks after the right-holder became aware of the potential infringement. The judge has no discretion to order the injunctive relief if the legal prerequisites are met. In Germany, the posting of a bond to obtain an injunction is not needed. 10.2 Monetary Remedies Any claim for damages requires a culpable infringement – ie, intent or negligence. Other - wise, monetary claims can only be made based on unjust enrichment. As in other fields of IP in Germany, the calculation basis for damages may be: • actual damages suffered by the right-holder (including lost profits); • payment of reasonable royalties ( fiktive Lizen - zgebühr ); or 10. Remedies 10.1 Injunctive Remedies
• surrender of the profits actually generated by the infringer. German law does not recognise enhanced damages for intentional infringement. However, intentional trade mark infringements may consti - tute a criminal act. Certain monetary remedies available only for registered trade marks do not exist in Germany. 10.3 Attorneys’ Fees and Costs The claimant is responsible for paying accrued court fees in order to start the proceedings. Dur - ing the dispute, expenses incurred for procedur - al actions are borne by the party that requests them. However, ultimately the losing party is required to reimburse the prevailing party for all costs of litigation fees inclusive of court fees, expenses and attorney fees of both parties in the statutory amount; this does not include higher costs due to a fee arrangement. The judgment rendered by a court always encompasses a decision on the reimbursement of cost. In the case of a partial win, the statutory amount of the total cost will be split pro rata. 10.4 Ex Parte Relief Regular legal proceedings always require the notification of the defendant. The defendant must have the opportunity to participate in the proceedings and be heard before a preliminary injunction is rendered; however, it may suffice if this is made out of court (eg, by responding to a warning letter). 10.5 Customs Seizures of Counterfeits or Parallel Imports In order to obtain border control actions against potential infringements, an application has to be filed with the customs authorities. Once such an application has been processed and con -
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