Definition and classification of utility model litigation
Utility model litigation refers to cases in the field of intellectual property law where disputes concern utility models. They are to be understood as a subcategory of industrial property right disputes and relate to rights in utility models, which are often described as a ‘petty patent.’ Central issues include questions of infringement, validity, and legal effects of the utility model.
Legal basis for utility model litigation
Statutory foundations
The central legal source for utility model litigation in Germany is the Utility Model Act (GebrMG). In addition, the Patent Act (PatG) applies in parts, as does the Code of Civil Procedure (ZPO). Important provisions include:
- §§ 1-23 GebrMG: Regulation of the subject matter of protection, origination, and effects of the utility model
- § 24 GebrMG: Scope and extent of protection
- § 13, § 14 GebrMG: Claims in case of infringement and legal consequences
- § 15 GebrMG: Declaratory action for non-existence of a utility model right
Subject matter and characteristics of utility models
A utility model protects technical inventions that are new, involve an inventive step, and are industrially applicable. Unlike a patent, the inventive step requirement is less stringent. The maximum protection period is 10 years (see § 23 GebrMG).
Types of utility model litigation
Infringement disputes
A frequent subject of dispute is the alleged infringement of a registered utility model, e.g., through unauthorized manufacture, use, or marketing of the protected object. In such infringement proceedings, claims for injunctive relief, damages, and where applicable, information (§ 24, § 24a, § 24b GebrMG in conjunction with §§ 139 ff. PatG) are asserted.
Claim for injunctive relief
The claim for injunctive relief is the central legal ground in cases of utility model infringement. Its purpose is to prevent further infringements.
Damages and information
In case of culpable infringement, the utility model holder may claim damages pursuant to § 24b GebrMG. There is also a claim for information to prepare for asserting damages claims.
Validity cases: Cancellation and nullification
Another central field of dispute concerns validity proceedings. Here, the validity of the utility model is contested.
- Cancellation proceedings (§ 15 GebrMG): Any third party may initiate cancellation proceedings against a utility model, typically based on lack of novelty or inventive step.
- Negative declaratory judgment: By bringing a negative declaratory action, it is to be established that a specific embodiment is not covered by the scope of protection of a utility model.
Other claims
In addition, ancillary claims such as recall, destruction, and removal may be asserted to eliminate the consequences of a utility model infringement.
Jurisdiction and course of proceedings
Subject-matter and local jurisdiction
According to § 143 PatG in conjunction with § 27 GebrMG, utility model litigation belongs to the disputes for which only the ordinary courts, specifically the regional courts (Landgerichte), are competent in the first instance regardless of the amount in dispute. Local jurisdiction in infringement cases is determined by the place where the contested act occurred or the defendant’s registered seat.
Validity disputes, especially cancellation proceedings, are handled before the German Patent and Trade Mark Office (DPMA).
Course of a utility model lawsuit
- Filing of the lawsuit: The claimant files suit with the competent regional court.
- Written pre-trial procedure: Exchange of written submissions between claimant and defendant, possibly with the raising of matters such as invalidity or prior use.
- Main hearing: Oral hearing, during which evidence may be taken and expert opinions obtained.
- Pronouncement of judgment: Decision on injunction, damages, etc.
- Appeal: An appeal against the regional court’s decision may be lodged with the competent Higher Regional Court; a further appeal (revision) can be made to the Federal Court of Justice.
Special features compared to patent litigation
Utility model cases differ, inter alia, in that the registration of a utility model is not subject to substantive examination by the DPMA, so the presumption of validity is weaker. The plea of readiness for cancellation can thus be asserted with special significance in infringement proceedings.
Value in dispute and costs
The value in dispute is determined by the economic interest in resolving the issue, and is generally lower than in patent cases, but otherwise corresponds to the values in other industrial property protection cases. The resulting costs are governed by the general provisions of the Code of Civil Procedure and the Court Fees Act.
International aspects of utility model litigation
As the protection of utility models is generally territorially limited, cross-border disputes mainly occur in the context of parallel rights in different countries. Proceedings are based on national law, but international conflict-of-laws rules and jurisdictional provisions (e.g., Brussels Ia Regulation within the EU) must also be considered.
Practical significance
Utility model litigation plays an important role in intellectual property protection, especially for companies that need quick registration of technical IP rights, or for small and medium-sized enterprises seeking rapid and cost-effective protection. The main advantages are rapid acquisition of rights and relatively straightforward enforcement by specialized civil courts.
Literature and further sources
- Utility Model Act (GebrMG)
- Patent Act (PatG)
- Code of Civil Procedure (ZPO)
- Benkard, Patent Law and Utility Model Act
- Busse/Keukenschrijver, Patent Law and Utility Model Act
- German court decisions on utility model litigation (e.g. BGH GRUR)
- Website of the German Patent and Trade Mark Office (DPMA)
Summary: Utility model litigation concerns all disputes relating to the validity and infringement of utility models. They are subject to specific substantive and procedural rules, are diverse in practice, and show characteristic differences when compared to patent litigation. They offer comprehensive protection for technical inventions in both mid-sized and larger companies, in particular due to fast registration and assertion.
Frequently Asked Questions
What legal remedies are available to take action against utility model infringement?
If a registered utility model is infringed, the right holder has various judicial and extra-judicial instruments at their disposal. First, the holder can warn the alleged infringer, seeking an out-of-court cease and desist undertaking, as well as, if applicable, information and damages. If no agreement is reached, injunctive relief can be sought by filing a lawsuit with the competent regional court. Additionally, claims for removal, information about origin and distribution channels, and damages can be asserted. The court examines whether an infringement has occurred and decides on the requested measures. In parallel or subsequently, cancellation proceedings before the German Patent and Trade Mark Office (DPMA) can be initiated to challenge the protectability of the utility model. Preliminary injunctions are also possible in urgent situations, e.g., for the prompt cessation of infringing acts.
Before which court are utility model cases conducted in Germany?
Utility model litigation in Germany is conducted exclusively before civil courts, and in the first instance before the regional courts (Landgerichte), regardless of the amount in dispute. These cases are allocated to the regional courts, which pursuant to § 143 PatG in conjunction with § 27 GebrMG have exclusive and subject-matter jurisdiction. Usually, specialized chambers for patent and utility model matters are established, possessing the necessary technical expertise. Appeals against decisions of the regional courts are heard by the Higher Regional Courts (OLG). For internal jurisdiction, certain regional courts serve as ‘patent litigation chambers’ centrally for particular districts.
How does legal enforcement differ for utility models compared to patents?
The enforcement of rights in utility model lawsuits differs only slightly in terms of legal procedure from that of patents. Both types of rights entitle their holders to warnings, interim injunctions, and actions for injunction and damages. However, in contrast to patents, eligibility for protection (novelty, inventive step, etc.) in utility models is not examined in the registration procedure, but only in contested proceedings. The uncertainty resulting from this lack of substantive examination means that in many utility model disputes, cancellation proceedings are initiated in parallel to have the validity of the utility model decided by the court or DPMA. This may lead to an extension of the proceedings.
What defenses are available to the defendant in utility model litigation?
The defendant can defend against a utility model suit with a variety of arguments and procedures. In addition to substantively disputing the alleged infringement, the so-called plea of lack of protectability pursuant to § 15 GebrMG in conjunction with § 21 PatG is available. This enables the assertion that the utility model is not eligible for protection, for example because of lack of novelty or inventive step, or because the subject is not protectable as a utility model. At the same time, the defendant may file for cancellation proceedings before the German Patent and Trade Mark Office, often as parallel proceedings. In this context, the trial court may be asked to stay the infringement proceedings until the cancellation has been decided. The defendant may also invoke non-use defenses, prior use rights, or the exhaustion doctrine.
Can utility model disputes be settled in preliminary injunction proceedings?
Yes, utility model disputes can, especially in urgent cases, also be dealt with by way of interim legal protection. However, in order to obtain an interim injunction, the applicant must convincingly and credibly demonstrate both urgency and the initial claim. A particularity is that, due to the lack of examination upon registration, the courts require particularly convincing evidence both as to infringement and protectability, noting that the legal uncertainty typical for utility models can make courts more cautious in such proceedings. In practice, interim injunctions for utility models are sometimes issued less frequently than for patents.
What role does the cancellation procedure play in utility model litigation?
The cancellation procedure is a key means for defendants to challenge the validity of a contested utility model. Since substantive examination is omitted during registration at the DPMA, there is often uncertainty regarding protectability in disputes. The cancellation request may not only allege lack of novelty or inventive step, but also the lack of suitability as a utility model. The infringement court may stay proceedings until the cancellation process is complete if there are serious doubts about the utility model’s validity. If the utility model is cancelled, all claims derived from it lapse retroactively.
What is the typical course of a court utility model infringement proceeding?
The judicial process usually starts with the filing of a claim by the utility model owner. After checking jurisdiction, the defendant is required to submit a detailed statement of defense, in which he can contest both infringement and protectability. The court then schedules a hearing to hear both parties and, if necessary, appoints experts. Cancellation proceedings can be initiated in parallel – the court will then, if necessary, rule on whether to stay the case. At the end, a judgment is rendered addressing infringement, protectability, and possible claims for injunction, damages, and information. Both plaintiff and defendant may appeal the decision.
What special aspects apply to damages in utility model litigation?
The right to damages in cases of utility model infringement follows the principles developed in patent law. There are three possible methods for calculating damages: the actual loss suffered by the right holder, surrender of the infringer’s profit, or payment of a reasonable license fee (license analogy). In general, liability for damages requires fault on the part of the infringer. Exact information about the scope and nature of the infringing acts is usually also necessary to prepare the claim for damages, and can be enforced in the dispute. Of particular note is that claims for damages arising from a utility model can only be asserted from the time of publication and after a warning notice or institution of proceedings.
