GERMANY Law and Practice Contributed by: Thomas Nägele, Simon Apel, Jonathan Drescher and Alexander Stolz, SZA Schilling, Zutt & Anschütz
Usually, the expert provides a written expert tes - timony that the parties may challenge and that usually is also discussed in an oral hearing with the expert before the court. The parties are also free to provide expert testimony by the experts they engage. However, such testimony does not have formal value as evidence as the opinion of an expert nominated by the court is only part of the respective party’s arguments, which the court may (or may not) give weight to. Costs for experts vary and can be significant, depending on the complexity of the case. The owner of a trade secret can – and in most cases will – seek preliminary injunctive relief before a final judgment in the case. In principle, neither a permanent nor an interim injunction is subject to time limitations. However, the debtor of a preliminary injunctive relief may request the court to set the claimant a time limit for filing an action. If this deadline expires without the claim - ant taking legal action, the court will revoke the preliminary injunction upon request. 7.2 Measures of Damages 7. Remedies 7.1 Preliminary Injunctive Relief Pursuant to Section 10 of the TSA, a successful claimant in a trade secret case may calculate its damages in the following three ways. • They can demand compensation for the damage effectively incurred as a result of the misappropriation of the trade secret. How - ever, this requires a concrete presentation of the damage caused, which can prove difficult in the case of trade secret claims. • They can demand that the infringer surren - ders the profit made with the trade secret. While in the case of infringement of any other
intellectual property right, the injured party may claim only that part of the infringer’s profit that is based on the infringing act, the owner of a trade secret may claim the entire profit for which the infringement of the secret was at least partly responsible (ie, not only that part that is caused by the infringement). • They can demand an appropriate remunera - tion that would have had to be paid if the consent for use had been obtained (licence analogy). The claimant is free to choose which of such methods they want to use to calculate their dam - ages. While they cannot combine the methods above with regard to the same damage, they can use different methods regarding different damage claims (eg, demand compensation for litigation costs as damage effectively incurred and use a licence analogy to recoup their losses regarding the trade secret itself). Punitive dam - ages do not exist in German law, unless the par - ties made prior contractual arrangements in this matter. 7.3 Permanent Injunction A successful trade secret claimant can obtain permanent injunctive relief against the defendant as well as an order requiring the defendant to recall any incriminating products. However, the plaintiff cannot restrict the subsequent employ - ment of an employee in order to protect their trade secrets. A permanent injunction issued remains in force until the trade secret is dis - closed. 7.4 Attorneys’ Fees Firstly, the plaintiff is responsible for paying accrued court fees in order to start the proceed - ings. During the dispute, expenses incurred for procedural actions are borne by the party that requests them. Ultimately, however, the losing
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