RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/DEU/1
18 September 1998
(98-3571)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
GERMANY1
The present document reproduces the introductory statement made by the delegation of
Germany, the questions put to it and the responses given in the review of legislation on enforcement
in the context of the Council's meeting of 17-21 November 1997.2
_______________
I. INTRODUCTORY STATEMENT
In Germany, Part III of the TRIPS Agreement is implemented by measures which existed
already before the Agreement entere d into force.  No changes have been found necessary in order to
respond to the obligations posed by Part III of the TRIPS Agreement.
Remedies for violations of intellectual propert y rights are provided by the laws which are
specifically aimed at protecting a single type of in tellectual property right.  These remedies include -
among others - injunctions, damages, rights of info rmation and rights to the destruction of infringing
goods.
The right holder can enforce these remedies through civil proceedings which are conducted by
the general civil courts and governed by the general law of civil procedure.  The law on civil procedure
also provides for provisional measures which can be used by a right holder in order to prevent
infringements of his intellectual property rights, a nd to preserve evidence he might need in order to
prove the infringement.  Such provisional measures are available even before ordinary proceedings are
pending before a civil court.
With regard to all intellectual property rights  - with the exception of rights to undisclosed
information - the customs authorities have the authority to order border measures.
And independent of the enforcement of rights th rough civil procedures, intentional breaches of
intellectual property rights are considered criminal offences and - as such - threatened by punishment.
                                                     
1 As regards laws and regulations relevant to the area under review and notified by Germany under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/DEU/1/Rev.1 and IP/N/6/DEU/1.
2 The minutes of this meeting have been circulated as document IP/C/M/16.IP/Q4/DEU/1
Page 2
II. REPLIES TO QUESTIONS POSED BY HONG KONG, CHINA
Civil and administrative procedures and remedies
1. Is it correct to say that intellectual property infringement cases often end in the interim
interlocutory stage?  If yes, what seem to be the reasons?  Is this desirable in the interest of
justice?
The right to forbearance pursuant to section 139, subsection 1 of the Patent Law, section 24,
subsection 1 of the Utility Model Law; section 9, subsection 1 first sentence of the Semiconductor
Protection Law; section 37, subsection 1 of the Va rieties Protection Law; section 14, subsection 5 of
the Trademark Law; section 14a, subsection 1 of th e Designs Law; and section 97, subsection 1 of the
Copyright Law can be enforced by means of provisi onal court relief (provisional disposition pursuant
to section 935 of the Code of Civil Procedure).  For details of this procedure see Germany's answer toquestion 12 of the Checklist of Issues on Enforcement.
3  Although a pronouncement of provisional
protection of a right, the title acquired in proceedings for a provisional disposition can be enforced
within the time-limit of one month:  sections 936, 929(2) of the Code of Civil Procedure.
The party sued often subsequently forbears from infringing the intellectual property right as a
result of judgement pronounced in provisional court relief.  To this extent, the judgement really does
have a preventive effect.  Main proceedings are only conducted in those sorts of cases where the party
ordered to forbear can provide full proof that he did not commit the infringement of the right with
which he has been charged.
Since civil proceedings in Germany are governed by the principle of party proceedings, in
other words, a civil court can only take action when a party makes an application or issues a writ - and
then only to the extent that the parties themselves  specify the subject-matter of the dispute in their
applications, the actual phenomenon of parties being satisfied with the decision given in proceedings
for an interim injunction cannot be a source of criticism.
2. In civil proceedings, are there any proof facilitation provisions which could create legal
presumptions of intellectual property subsistence and ownership and thus could excuse the right
owner from appearing in court and to testify these issues?  If not, why?
The eventual duty of a party to appear in court and the procedural duty to make a statement
are independent of the question of the burden of proof.  As regards a party's personal appearance
before the court, reference can be made to Germany's answer to question 2 of the Checklist of Issues
on Enforcement.3  Under Section 138 of the Code of Civil Procedure the parties have to make full and
true statements to the court on the factual circumstances.
Criminal procedures
3. Does any intellectual property enforcemen t agency have the legal power to seize and
forfeit suspected infringing articles, whether or  not a charge has been laid?  If not, why?
In German criminal procedure law articles that might be relevant as evidence in the
investigation may be impounded and - if they are not surrendered voluntarily - they may be seized.
The prerequisite for this measure is suspicion of commission of a criminal offence, also including any
such offence whose elements are designed to protect intellectual property.
Where there is urgent suspicion of an offence articles may also be seized if they have no
evidentiary value but it is to be assumed that they will later be subject to final confiscation (by virtue
                                                     
3 Document IP/N/6/DEU/1.IP/Q4/DEU/1
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of a judgement passed by a criminal court judge) from the perpetrator of, or participant in, the crime.
The provision also allows, in the event of urgent suspicion, seizure of such articles as have been
produced by infringement of intellectual property rights since these articles may, as a rule, be
confiscated permanently from the person concerned in the subsequent criminal judgement.
With regard to seizure by the customs authorities in the course of border measures, reference
can be made to Germany's answers to questions 15 and 16 of the Checklist of Issues on Enforcement.4
4. Is there a specialized criminal intellectual pr operty enforcement agency?  If not, what is
the rationale?
There is no specialized criminal enforcement agency for intellectual property in Germany.
The prosecuting authorities (police, customs, public prosecution offices) have, however, formed theirown working units that specialize in the prosecution of such criminal offences.
5. In criminal proceedings, are there any proof facilitation provisions which could create
legal presumptions of intellectual property subsistence and ownership and thus could excuse the
right owner from appearing in court and to testify these issues?  If not, why?
In German criminal procedure law all facts directly relevant to a decision in assessing guilt
and sentence must be established without doubt.  So there has to be ascertainment of all facts
constituting the statutory elements concerned.  There is no exception in regard to intellectual property
rights because here, too, in the interests of extensive and complete establishment of the truth, theremay be no falling back on proof facilitation provisions to the detriment of the accused.  As a general
rule, an examination of the owner of the right concerned may, however, be dispensed with in practice
because the owner's legal status is obvious even when no such examination takes place and because
evidence need not be led with respect to obvious facts.  "Obvious" in this sense means facts of which
sensible and experienced people are usually cognizant or in respect of which they can - withoutspecial knowledge - acquire information at any time with the aid of generally available sources of
knowledge.
III. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please indicate the "competent authoritie s" stipulated in Article 51 of the TRIPS
Agreement.
"Competent authority" in the sense of Article 51 of the TRIPS Agreement is the Munich
Regional Finance Office (Oberfinanzdirektion München, Sophienstra βe 6, D-80333 München.
Tel.: +49/89/59952313, Fax:  +49/89/59951150).
2. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
In Germany, the "proceedings leading to a decision on the merits of the case" (Article 55 of
the TRIPS Agreement) are judicial (section 142a, subsection 4 no. 2 Patent Law; section 25a,
subsection 4 no. 2 Utility Model Law; section 9, subsection 2 Semiconductor Protection Law in
conjunction with section 25a, subsection 4 no. 2 Utility Model Law; section 40a, subsection 4 no. 2Varieties Protection Law; section 147, subsection 3,  second sentence, section 111a, subsection 4 no. 2
Copyright Law; section 14a, subsect ion 3 Designs Law in conjunction with section 111a, subsection 4
no. 2 Copyright Law).  Compare Germany's answer to question 16 of the Checklist on Issues of
Enforcement
4).
                                                     
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3. Are there any ways other than  the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as "t he Application") which enable a right holder to
request the competent authorities to suspend the release of the goods which infringe intellectual
property rights or which are suspected to  infringe intellectual property rights?
In German law, the release into free circulation of goods may only be suspended if an
application has been filed with the competent authority.  However, the customs authorities may act
ex officio where Article 4 of the Council Regulation (EC) No. 3295/94 of 22 December 1994 laying
down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive
procedure for counterfeit and pirated goods (OJ EC No. L 341/8 of 30 December 1994, see above) is
applicable.
4. Please explain what term your country regards  as "a reasonable period within which the
competent authorities shall inform the applic ant whether or not they have accepted the
Application" stipulated in Article 52 of the TRIPS Agreement.
The customs authorities will inform the applic ant as quickly as possible whether they have
accepted the application or not.  As a general rule, they do not need more than a week for this.  But
there are also cases where the application contains mistakes, or where the goods to be seized are notspecified with such precision that the customs author ities are actually able to identify them.  In these
cases inquiries have to be directed to the applicant, which means that the period leading up to a final
decision may become longer.  At any rate, in such cases too, a direct reaction is ensured on the part of
the customs authorities, vis-à-vis  the applicant, who is given the opportunity of supplementing his
application.
5. Please indicate provisions of laws and ordinances which prescribe the "proceedings
leading to a decision on the merits of the case " stipulated in Article 55 of the TRIPS Agreement.
And please summarize their contents.
The relevant provisions are section 142a of th e Patent Law; section 25a of the Utility Model
Law; section 146 of the Trademark Law; section 111a  of the Copyright Law; and section 14a of the
Design Law in conjunction with section 111a of  the Copyright Law (see Germany's answers to
questions 15 and 16 of the Checklist of Issues on Enforcement
5).
Proceedings on border seizure are regulated in the same way in all provisions.  This applies as
well to provisions leading to a decision on the merits of the case.
In brief, the proceedings stipulated in these provisions, and leading to a decision on the merits
of the case, may be described as follows:
When the customs authorities have seized goods , they are to inform the person entitled to
dispose of the goods of such seizure without delay.  The person with the right of disposal may, as
frequently occurs, accept seizure and take no further action.  The goods will be confiscated in suchcases.
If the person with the right of disposal does not wish to accept seizure, he may oppose
seizure.  If the applicant, who is notified of the opposition of the person with the right of disposal by
the customs authorities, wishes to uphold his application for seizure, he will have to submit anenforceable court decision within two weeks - ordering further impounding of the goods.  So, under
this system, there is indeed a decision on the merits of the case by virtue of the fact that civil court
proceedings take place between the applicant and the person entitled to dispose of the goods.
                                                     
5 Document IP/N/6/DEU/1.IP/Q4/DEU/1
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6. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infr inge intellectual property righ ts, in Article 55 of the TRIPS
Agreement.
According to German law, goods shall be subj ect to seizure only in those cases where the
infringement of an intellectual property right is obvious (section 142a, subsection 1 of the Patent Law;
section 25a, subsection 1 of the Utility Model La w; section 9, subsection 2 of the Semiconductor
Products Protection Law in conjunction with section 25a of the Utility Model Law; section 40a,
subsection 1 of the Varieties Protection Law; section 146, subsections 1 and 151 of the Trademark
Law; section 111a Copyright Law; and section 14a,  subsection 3 of the Designs Law in conjunction
with section 111a of the Copyright Law).  Whenev er the customs authorities have reason to doubt
whether the goods to be seized are, in fact, infringing the rights of the applicant, they must not seize
them.
7. Please explain the responsibility that th e competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulation of
goods which infringe intellectual property rights  with regard to the suspension based on the
Application or the Ex Officio Action stipul ated in Article 58 of the TRIPS Agreement.
The competent authorities are liable for wilful or negligent breaches of an official duty
incumbent on them with regard to the injured pa rty according to the general provision on liability of
officials in section 839 of the Civil Code.  Such liabil ity is taken over by the State (Article 34 of the
Basic Law, Grundgesetz ).
8. Please explain the responsibility that th e competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectual
property rights and nevertheless release them in to free circulation with regard to the suspension
based on the Application or the Ex Officio Ac tion stipulated in Article 58 of the TRIPS
Agreement.
See the answer to question 7 above.
9. Please explain the responsibility that the competent authorities and other related
authorities take to the importer s when they suspend the release into free circulation of goods
which do not infringe intellectual property rights with regard to the suspension based on the
Application or the Ex Officio Action stipul ated in Article 58 of the TRIPS Agreement.
See the answer to question 7 above.
10. Is the right holder informed of identities  of the importers and consignors when the
competent authorities "suspend" the goods which infringe on intellectual property rights or
which are suspected to infringe intellectual proper ty rights, as well as the case where the right
holder is informed of identities of the importer s and consignors stipulated in Article 57 of the
TRIPS Agreement?
As has been explained in Germany's answer to question 16 of the Checklist of Issues on
Enforcement,6 the applicant - who is either the right holder or a person empowered by the latter - is
informed of the name and address of the person entitled to dispose of the items seized (section 142a,
subsection 2 of the Patent Law; section 25a, subsection 2 of the Utility Model Law; section 9,
subsection 2 of the Semiconductor Products Protection Law in conjunction with section 25a of the
Utility Model Law; section 40a, subsection 2 of the Varieties Protection Law; section 146,subsections 2 and 151 of the Trade Mark Law; section 111a, subsection 2 Copyright Law; and
                                                     
6 Document IP/N/6/DEU/1.IP/Q4/DEU/1
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section 14a, subsection 3 of the Designs Law in conjunction with section 111a, subsection 2 of the
Copyright Law).  The same is true if the procedures are governed by Council Regulation (EC)
No. 3295/94 of 22 December 1994 laying down measures to prohibit the release for free circulation,
export, re-export or entry for a suspensive procedure for counterfeit and pirated goods (OJ EC
No. L 341/8 of 30 December 1994, see Article 6, section 1).
11. Please explain the measures to protect conf idential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions of
laws and ordinances which prescribe such measures.
As has been explained in Germany's answer to question 16 of the Checklist of Issues on
Enforcement,7 the relevant provisions grant the applicant a right to inspect the items seized  unless
this would amount to a violation of a business or  company secret (section 142a, subsection 2 of the
Patent Law; section 25a, subsection 2 of the Utility Model Law; section 9, subsection 2 of theSemiconductor Products Protection Law in conjunction with section 25a of the Utility Model Law;
section 40a, subsection 2 of the Varieties Protection Law; section 146, subsections 2 and 151 of the
Trademark Law; section 111a, subsection 2 Copyright Law and section 14a, subsection 3 of the
Designs Law in conjunction with section 111a of the subsection 2 of the Copyright Law).
12. Please explain the procedures of detentions and seizures to be ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
These procedures relating to the suspension of the release of goods by customs authorities
have already been described in Germany's answer to question 16 of the Checklist of Issues on
Enforcement.
7
13. Please explain the procedures to appeal aga inst any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
See the answer to question 5 above.
There is, however, also the possibility of proceeding against seizure, using remedies under
administrative law.  In such cases, no decision is given on the merits of the case;  the courts merelyexamine whether the act of seizure formally corresponds to statutory provisions.  There is no decision
on the material justification for seizure;  rather, th is occurs in the proceedings described in the answer
to question 5.
The rejection of an application for border seizure by customs authorities is also subject to
review by the courts.
See also Germany's answer to question 16 of the Checklist of Issues on Enforcement.
7
14. Please explain the basis for calculating the s ecurity or equivalent assurance stipulated in
Article 53 of the TRIPS Agreement that the co mpetent authorities may require an applicant
when they suspend the relea se into free circulation.
The customs authorities calculate security primarily in terms of the type of goods expected
and the magnitude of deliveries anticipated.  In general, it may be said that the sum demanded in
provision of security amounts to between DM 20 000 and DM 50 000.  Security does not have to beprovided in cash, but in the form of a bank guarantee, which is why the applicant only faces minimal
costs (about 0.5 per cent to 2 per cent of the sum guaranteed).
                                                     
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15. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The cost of official acts related to the application, such as the cost of the detention or
destruction of the goods, are charged to the applicant (section 142a, subsection 6 of the Patent Law;
section 25a, subsection 6 of the Utility Model La w; section 9, subsection 2 of the Semiconductor
Products Protection Law in conjunction with section 25a of the Utility Model Law; section 40a,
subsection 6 of the Varieties Protection Law; section 148, subsection 2, section 111a, subsection 6
Copyright Law and section 14a, subsection 3 of th e Designs Law in conjunction with section 111a,
subsection 6 of the Copyright Law).  The applicant can demand reimbursement of these costs from the
person who has injured his right as part of his or her claim for damages.
16. Please explain what kind of cases are regar ded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goodsstipulated in Article 59 of the TRIPS Agreement.
With regard to counterfeit trademark goods the above-mentioned Council Regulation
No. 3295/94 applies.  This Regulation in Article 6 explicitly forbids any re-exportation of counterfeit
trademark goods in an unaltered state.
17. The responses to the Checklist of Issues on Enforcement
8 describe that criminal
provisions threaten intentional violations of rights with imprisonment of up to three years or
with a fine.  Please describe the extent of the actual fine.  Please explain whether the criminal
remedies are consistent with Article 61 of the TRIPS Agreement which requires provisions for a
sufficient deterrent, consistently with the level of  penalties applied for crimes of a corresponding
gravity.
It is up to the courts to determine the amount of a fine.  A fine is imposed in daily rates
("Tagessätze ").  A court will first decide how many daily rates are adequate in view of the gravity of
the offence.  In accordance with section 40, subsection 1 of the Criminal Law the courts may imposebetween five and 360 daily rates.  The actual amount of a daily rate is determined in relation to the
personal and economic situation of the perpetrator.  The courts can chose an amount between DM2
and DM10 000 (section 40, subsection 2 of the Criminal Law).  There are no statistics on the fines
which have actually been imposed for violations of the intellectual property rights.
As has been explained in Germany's answer to question 24 of the Checklist of Issues on
Enforcement,
8 the relevant provisions threaten intentional violations of intellectual property rights
with imprisonment of up to three years or with a fine (section 142, subsection 1 of the Patent Law;
section 25, subsection 1 of the Utility Model Law; section 10, subsection 1 of the Semiconductor
Protection Law; section 39, subsection 1 of the Va rieties Protection Law; section 143, subsection 1,
section 14, subsection 1 of the Designs Law; as well as sections 106 through 108 of the Copyright
Law).  Unlawful use of indications of geographical origin is threatened with up to two years'
imprisonment or with a fine (section 144, subsections 1 and 2 of the Trademark Law).  If the offender
acts by way of trade, in the case of all intentional violations of rights, with the exception of unlawful
use of indications of geographical origin, the punishment is up to five years' imprisonment or a fine
(section 142, subsection 2 of the Patent Law; section 25, subsection 2 of the Utility Model Law;
section 10, subsection 2 of the Semiconductor Protection Law; section 39, subsection 2 of the
Varieties Protection Law; section 143, subsection 2 of  the Trademark Law, section 14, subsection 2 of
the Designs Law and section 108a of the Copyright Law).
These penalties are sufficient to provide a deterrent for the acts described in Article 61 of the
TRIPS Agreement.
                                                     
8 Document IP/N/6/DEU/1, response to question 24.IP/Q4/DEU/1
Page 8
IV. REPLIES TO QUESTIONS POSED BY NEW ZEALAND
1. With reference to the preliminary remarks on page 1 of Germany's responses to the
Checklist of Issues on Enforcement,9 can Germany confirm whether the Trademark Law is the
only one among those listed which relates to protection of wine geographical indications (GIs)?
The relevant EC regulations on wines are directly applicable in Germany.  They provide for
an absolute protection in the sense of Article 23 of the TRIPS Agreement.  They are implemented in
German law by the following means:
The Trademark Law and the Law Against Unfair Competition provide legal means by which
individuals can enforce rights to wine geographical indications through civil procedures.  While the
first specifically makes reference to geographical indications, the latter contains a general prohibition
of deceptive and misleading statements (section 3 of the Law Against Unfa ir Competition), and a
prohibition of acts which are contrary to honest business practices (section 1 of the Act Against
Unfair Competition).  Acts which violate legal norms, such as for instance the German Wine Law, can
be considered by the courts as being contrary to honest business practices in the sense of section 1 of
the Act Against Unfair Competition.
The German Wine Law ( WeinG ) of 8 July 1994 prohibits the misleading or deceptive use of
wine geographical indications (section 25 in conjunction with sections 23, 24, subsection 2 WeinG ).
This prohibition, however, cannot be enforced by individuals in the course of civil procedures, but
only through the following means:
- administrative action, encompassing:
- general monitoring (section 27 et seqq . WeinG )
- import control (section 36 WeinG )
- administrative offences (section 50 WeinG )
- criminal law (section 49)- seizure (section 52 WeinG )
2. Could Germany clarify to what extent administrative action is applicable to
enforcement of wine geographical indications.  Germany's response to question 9 of the
Checklist of Issues on Enforcement
9 advises that (in relation to civil protection) "proceedings
relating to violation of an intellectual proper ty right are not carried out as administrative
proceedings" (except to seize items at the border). And Germany's response to question 18 of
the Checklist of Issues on Enforcement9 says that in general customs authorities may only act
(to seize articles) on the request of the righ t holder (rather than on their own initiative).
However, Germany's response to question 21 of the Checklist of Issues on Enforcement9 and
subsequent replies indicate that all intellectual property rights are also protected by criminal
proceedings, including indications of geographical  origin. Does this imply that administrative
action is used to enforce protection through criminal proceedings?
As has already been explained above, enforcement of the protection of wine geographical
indications can be effected by administrative action and by criminal law.  The means provided by
administrative and criminal law are aimed at enforcing the protection of wine geographical indications
in the interest of the State, i.e. the general interest.
                                                     
9 Document IP/N/6/DEU/1.IP/Q4/DEU/1
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Administrative action is exclusively taken by the competent administrative authority.  Even
though criminal proceedings may often result from findings of the administrative monitoring control
system, they have to be initiated by the prosecuting authority, which prepares the bill of indictment.
3. Germany's response to question 22 of the Checklist of Issues on Enforcement10 notes
that criminal prosecution of intellectual property right violations occurs only upon request,unless:
(a) the prosecution authorities deem that ex officio prosecution is justified in view of
the particular public interest; or
(b) the offender acts by way of trade.
Could Germany please specify further:
(i) the circumstances, if any, in which ex officio prosecution would be
deemed justified in the case of wine geographical indications;
(ii) what action "by way of trade" covers.  In the latter case, would ex officio
prosecution be automatic?
In addition, we would be grateful if Germany could advise whether, in the absence of (a)
and (b), a request alone is sufficien t to initiate a criminal prosecution.
(a) In the special case of wine geographical indications, criminal offences are prosecuted
ex officio.  Ex officio prosecution has to be initiated as soon as there is sufficient
factual evidence for an offence.
(b) In the special case of wine geographical indications, an offence of "by way of trade"
does not exist.
In the case of prosecution upon request - which does not apply to the special case of wine
geographical indications (see above) - the request of the party having suffered damage or loss is anadditional precondition for the prosecuting authority to initiate a criminal prosecution.  In this case,
the sufficient factual evidence for an offence is generally shown by the substantiation of the request.
4. With reference to Germany's response to question 24 of the Checklist of Issues on
Enforcement
10 could Germany indicate when the possibility of two years' imprisonment or a
fine for unlawful use of a geographical indication (as a result of criminal prosecution) is
applicable and when civil penalties apply.
In the case of wine geographical indications, the punishment is up to one year's
imprisonment or a fine for unlawful use of wine geographical indications (section 49 WeinG ).  If
fraud in the sense of the Criminal Code (section 263) can be proved, the punishment is up to five
years' imprisonment.
Civil penalties do not exist in German law.  As has been explained in the reply to question 1,
civil means to enforce individual protection are provided by the Trademark Law and the Law Against
Unfair Competition.  The civil legal means are independent from criminal or administrative
procedures.  They are applicable as soon as a private individual can show that somebody has usedwine geographical indications in a misleading way.
                                                     
10 Document IP/N/6/DEU/1.IP/Q4/DEU/1
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V. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
General obligations
1. Articles 41.1 and 42 of the TRIPS Agreement require that procedures be available for
the effective enforcement of the intellectual pr operty rights covered by the Agreement.  In
IP/N/6/DEU/1, Germany describes identifies the courts that have jurisdiction over disputes
involving intellectual property rights.  No re ference is made, however, to the protection of
undisclosed information.  Please describe the judicial and administrative11 bodies in Germany
with jurisdiction over enforcement actions involving undisclosed information.  In addition,
please explain the interrelationships of the various types of courts and administrative bodies.
There are no administrative bodies having jurisdiction over enforcement actions involving
undisclosed information.  With regard to courts the general rules apply:  in criminal matters, the local
courts ( Amtsgericht ) have initial jurisdiction, unless in individual cases punishment of more than
four years' imprisonment is to be expected (section 24, subsection 1 of the Courts Constitution Act).
In civil proceedings, jurisdiction is either wi th the local courts or with the regional courts
(Landgericht ), depending on whether the value in dispute is below or above DM 10 000 (section 23,
subsection 1 and section 71 of the Courts Constitution Act).
2. Please identify any requirement that a foreign party must meet to initiate a proceeding
in the courts that is not required of a nation al or resident of Germany and cite the legal
authorities providing for those differences.
According to section 110 of the Code of Civil Procedure nationals of foreign States who
appear as plaintiffs shall give the defendant security for the costs of the lawsuit if he so demands.
This obligation does not arise inter alia:
(a) if, under the law of the State of which the plaintiff is a national, a German would not
be required to give security in an identical case;
(b) in summary proceedings by documentary evidence or involving bills of exchange;
(c) in the case of a counterclaim.
3. Articles 41.1 and 48 of the TRIPS Agreement require establishment of safeguards
against abuse of judicial, including provision for adequate compensation for injury suffered
because of such abuse.  The response to questio n 7 in IP/N/6/DEU/1 provides for compensation
in the event of an incorrect judgement or other executory title of which the other party is aware.
Please describe any other means available under the law of Germany to prevent abuse of
judicial and administrative procedures and cite the legal authorities for those means.
In general, the principle in the German law of  Civil Procedure according to which the losing
party has to bear the winner's costs (sections 91 et seqq  of the Code of Civil Procedure) provides an
effective safeguard against abuse of judicial proceedings.12
In addition to this, a defendant may be in a position to claim adequate compensation if an
action for alleged infringement of an intellectual property right proves to be unfounded (unjustified
                                                     
11 These questions apply to both judicial and administrative enforcement of intellectual property rights
because of Article 49 of the TRIPS Agreement.
12 As to the indemnification of defendants wrongfully enjoined, compare Germany's answer to
question 7 of the Checklist of Issues on Enforcement (document IP/N/6/DEU/1).IP/Q4/DEU/1
Page 11
warning).  This claim can be based on section 823, subsection 1 of the Civil Code if negligence can be
proved, i.e. if the party who has started the action has breached a duty of care.
A party when considering whether to file a suit  for infringement of an intellectual property
right has to meet certain standards of diligence, which vary according to the type of intellectual
property right for which infringement is claimed:  the holder of a right which (like a patent) wasgranted after a full and comprehensive examination procedure can rely on the validity of his right
unless - because of specific circumstances arising after the examination procedure - he has reason to
doubt it.  In all other cases (i.e. copyrights, designs, utility models), someone considering filing an
enforcement action must carefully check the existence of his alleged right beforehand.  Where
necessary, independent legal counsel has to be consulted.
4. Please explain any provisions in the en forcement system in Germany that ensure
expeditious remedies.  In addition, please explain what provisions are available to prevent
deliberate delays by the parties to a proceeding and indicate the circumstances in which such
provisions will be applied.
As was explained in Germany's answer to question 6 of the Checklist of Issues on
Enforcement,
13 there is a series of provisions in the Code of Civil Procedure aimed at expediting civil
proceedings.  In order to expedite court proceedings, the court may either set down an early first date
for the hearing of the case, section 275 of the Code of Civil Procedure, or initiate written preliminary
proceedings, section 276 of the Code of Civil Procedure.  Whereas in the first case the court can set
tight deadlines for the parties' pleadings, these deadlines are statutorily prescribed in the second case,
and have the effect that the statement of defence can be in the possession of the court already four
weeks after service of the claim.  Failure to meet these deadlines by the parties can be sanctioned by
the court under section 296 of the Code of Civil Procedure by its only accepting late submissions ofclaim or defence where it is convinced that they  will not lead to a delay in the handling of the
litigation, or where the party in question offers an adequate explanation by way of apology.  This
possibility of precluding the exercise of a right contributes significantly to a speedy conduction of
court proceedings.  It also exists in appeal proceedings on points of law and fact under section 527 of
the Code of Civil Procedure.
In addition to this, provisional measures exist which have been described in Germany's
answers to questions 10-13 of the Checklist.
13  Proceedings aimed at the issuance of a provisional
disposition in accordance with sections 935 and 940 of the Code of Civil Procedure are much quicker
as the judgement in such proceedings can be handed down in urgent cases without an oral hearing
(section 937, subsection 2 of the Code of Civil Procedure), and since the applicant does not need toprove his or her allegations, but simply has to "credibly establish" them (section 936 in conjunction
with sections 920 subsection 2 and 294 subsection 1 of the Code of Civil Procedure).  Furthermore,
only such evidence is admitted which can be taken immediately (section 294, subsection 2 of the
Code of Civil Procedure).
5. Article 41.2 addresses, among other things, the cost of judicial enforcement proceedings.
IP/N/6/DEU/1 describes the conclusions resulting from a study by the Max Planck Institute for
Foreign and International Private Law, which is very informative.  Please identify the fees
charged by judicial or administrative official s for filing legal actions involving intellectual
property or for pursuing such actions once initia ted and cite the legal authorities for such fees.
As was explained in Germany's answer to question 8 of the Checklist of Issues on
Enforcement,
13 court costs are determined in civil proceedings in accordance with the value in
dispute, and are laid down by law in the Court Costs Act.  This applies in principle also to lawyers'
                                                     
13 Document IP/N/6/DEU/1.IP/Q4/DEU/1
Page 12
fees which - depending on the value in dispute - are regulated by the Federal Code of Lawyers' Fees.
These statutory provisions - together with the general principle in German law that the losing party
has to bear the winner's costs (see Sections 91 et seqq . of the Code of Civil Procedure) - ensure that
proceedings concerning the enforcement of intellectual property rights are not "unnecessarily costly"
(Article 41.2 of the TRIPS Agreement).
Under Sections 114 et seqq.  of the Code of Civil Procedure, any party whose personal or
financial circumstances are such that he or she cannot meet the costs of the proceedings at all, or only
in part or by instalments, has the possibility of receiving publicly funded legal aid where the intended
claim or defence offers sufficient prospect of success and does not appear arbitrary.  An application
for legal aid can be made both by German and by foreign parties.
In addition to this, some of the relevant statutes enable the court to order, in response to an
application, that the fees are only to be calculated in accordance with a part of the value in dispute if aparty makes a plausible case that the burden of the costs of the proceedings would pose a considerable
risk to his or her economic position were the costs to be calculated in accordance with the full value in
dispute (section 144 of the Patent Law; section 26 of the Utility Model Law; section 11, subsection 2
of the Semiconductor Products Protection Act in conjunction with section 26 of the Utility Model
Law; and section 142 of  the Trademark Law).
6. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determin e the reasoning on which the decision is based.
Please state, with regard to each type of cour t, whether judges must render their decisions in
writing and cite the legal authorities requiring such written opinions.
Every decision on the merits of a case of each type of court has to be rendered in writing and
served at least on the defendant, see e.g.:
- sections 311-317 of the Code of Criminal Procedure for judgements and section 329
of the Code of Civil Procedure for orders in civil proceedings;
- sections 260, 267, 275 of the Code of Criminal Procedure for judgements and
Section 35 of the Code of Criminal Procedure for orders in criminal matters.
7. Article 41.3 also requires that decisions on the merits of a case be based only on evidence
in respect of which parties had an opportunity to be heard.  Please state, with regard to each
type of court, what factors may be considered by  a judge or administrative official in rendering
a decision and cite the legal authorities establishing the basis on which judges and
administrative officials may reach decisions.
The principle that parties to judicial proceedings have the right to be heard is explicitly
provided for in Article 103, section 1 of the Basic Law ( Grundgesetz ), the German Constitution.
The taking of evidence in civil proceedings is, under German law, done in principle in such a
way as to permit open access to the parties. That is to  say, the parties are allowed to be present at the
taking of evidence, section 357 of the Code of Civil Procedure.  It is in particular the case that, where
statements are being taken from witnesses, the parties have a right to put questions under section 397
of the Code of Civil Procedure.  Where an expert opinion can be contemplated as evidence,
section 411, subsection 4 of the Code of Civil Procedure gives the parties the possibility of replying tothe opinion.
In criminal proceedings, every decision which a court takes in the course of a trial requires a
previous hearing of the parties (section 33, subsectio n 1 of the Code of Criminal Procedure).  TheIP/Q4/DEU/1
Page 13
court decides freely according to its own persuasion, which it has been able to gain from the trial as a
whole (section 261 of the Code of Criminal Procedure).
8. Article 41.4 obligates WTO Members to provid e for judicial review of certain judicial
and administrative decisions in intellectual property enforcement proceedings.  Please describeany legal limitations placed upon the ability of a party to an intellectual property enforcement
proceeding to have both procedural rulings and final decisions reviewed by a separate judicial
authority, and cite the legal author ities providing for such reviews.
There are no restrictions on judicial review of initial judicial decisions in criminal matters.
The examination of court decisions by another court is possible as a matter of principle in German
civil proceedings.  A full examination of the facts and points of law on which the judgement at first
instance is based, follows an appeal ( Berufung ) lodged under sections 511 et seq . of the Code of Civil
Procedure.  The prerequisite here is that the value of the matter in dispute exceeds DM 1 500.  Where
the court of appeal is a higher regional court ( Oberlandesgericht ), then again as a matter of principle,
a further appeal against its judgement, this time on points of law only ( Revision ), is possible under
sections 545 et seq . of the Code of Civil Procedure.  The prerequisite in this case is that the value of
the matter in dispute should exceed DM 60 000.  In particular types of cases, leave to appeal on points
of law only can also be given by the higher regional court, section 546 of the Code of Civil Procedure.
The judicial examination in such proceedings is li mited, as has already been pointed out, strictly to
issues of law.
Civil and administrative procedures and remedies
9. Article 42 requires that defendants be notified of judicial and administrative intellectual
property enforcement proceedings brought against them.  Please describe the procedures
followed by each type of court and administrative body identified in question 1 for notifyingdefending parties regarding proceedings that have been initiated against them, indicate the
information provided regarding the proceeding and cite the legal authorities establishing these
procedures.
Civil proceedings are initiated by serving a written pleading (statement of claim).  The
statement of claim must contain at least:
(a) an indication of the parties and of the court;(b) a precise statement of the subject matter and grounds of the claim raised as well as a
specific bill of particulars (see section 253, subsections 1 and 2 of the Code of Civil
Procedure).
This statement of claim must be served ex officio on the defendant: sections 270, 271 of the
Code of Civil Procedure.  As a rule, service is  made by post: section 211 of the Code of Civil
Procedure.  The act of service itself must be officially recorded: section 212 of the Code of Civil
Procedure.
In criminal matters the bill of indictment (which is prepared by the prosecuting authority) is
served on the defendant (section 201 of the Code of Criminal Procedure).  It must contain a precise
statement of the offence or offences charged, accusing the person named therein of precisely
described acts or omissions, and showing that these acts or omissions constitute by law a criminal
offence (section 200 of the Code of Criminal Procedure).
10. Under Article 42, parties are to be entitled to substantiate claims and present relevant
evidence.  Please describe any limitations under the law of Germany on a party's ability toIP/Q4/DEU/1
Page 14
substantiate a claim or to present relevant evid ence and cite the legal authority providing such
limitations.
There are no limitations on a party's ability to substantiate a claim or to present relevant
evidence.  German law admits as evidence in civil proceedings evidence by inspection, evidence
given by witnesses, evidence given by an expert, and evidence obtained by questioning the parties,sections 371 to 455 of the Code of Civil Procedure.  For the parties there exists - with the exception of
their legal obligation to assert their claim or offer their defence on time in the judicial proceedings
(see the answer to question 4 above) - no restriction as regards these kinds of evidence.  More
extensive possibilities of obtaining evidence by amassing as much information as possible on a party
are, on the other hand, alien to German law.
11. Article 42 requires, with one narrow exception , that there be a means to identify and
protect confidential information during judicial and administrative intellectual propertyenforcement proceedings.  IP/N/6/DEU/1 describe s the means of protection for information and
documents during the course of a trial, but does not indicate how documentary or physical
evidence is protected while in the possession of the court.  Please describe the means provided
under the law of Germany for parties to identify and have such evidence protected and cite any
related legal authorities.
The means provided under German law to protect confidential information have already been
described in Germany's answer to question 4 of the Checklist of Issues on Enforcement.
14
12. Article 44.1 requires that judicial and administrative officials be able to enjoin orotherwise prevent infringing activity by a party, including by preventing the entry of infringinggoods into the channels of commerce in their juri sdiction. IP/N/6 /DEU/1 describes the injunctive
authority of the courts in connection with all fo rms of intellectual property addressed in Part II
of the TRIPS Agreement except for undisclosed information.  Please describe the courts'
authority to order parties to stop violations of rights in undisclosed information and to prevent
goods resulting from such violations from enteri ng the channels of commerce.  In addition,
please cite the legal authorit ies authorizing such actions.
According to sections 17 and 18 of the Law Against Unfair Competition, certain acts
involving the disclosure, unauthorized obtaining or use of trade or industrial secrets are punishable by
imprisonment or a fine if the defendant has acted intentionally.
Violations of sections 17 or 18 of the Law Against Unfair Competition can always be
considered as dishonest trade practices and, therefore, as a violation of the general provision in
section  1 of the Law Against Unfair Competition,
14 which provides for injunctive relief and damages.
In addition to this, the general law of torts applies (sections 823 or 826 in conjunction with
section 1004 of the Civil Code).  Injunctive relief can be granted even if the defendant has acted
without fault.  The injured party may not only dema nd that the violation of his secret be stopped but
also that the effects of the violation be removed.  He or she can therefore claim that material relatingto the secret and products resulting from use of the secret either be destroyed or handed over to him or
her.
13. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy for infringement
to payment of adequate remuneration as provided  in Article 31(h).  Please describe any such
limitations on remedies in the laws of Germany and cite the legal authorities providing for those
limitations.
                                                     
14 Document IP/N/6/DEU/1.IP/Q4/DEU/1
Page 15
Sections 13, 24, 55 of the Patent Law; section 20 of the Utility Model Law; and section 22 of
the Varieties Protection Law contain limitations on remedies.  In each case, the right holder can claim
adequate remuneration.
14. Article 45.1 requires that judicial and admi nistrative officials be able to order an
infringer to pay the right holder damages adequate  to compensate for the injury caused by the
infringement.  IP/N/6/DEU/1 describes the authority of the courts to award damages inconnection with all forms of intellectual property addressed in Part II of the TRIPS Agreement
except for undisclosed information.  Please describe the courts’ authority to order damages
adequate to compensate for the in jury caused by violations of rights in undisclosed information.
Please explain the factors considered in estab lishing the amount of the compensation and cite
the legal authorities authorizin g such compensation orders.
Claims for damages for intentional violations of trade or industrial secrets can be based on
section 19 of the Law Against Unfair Competition; on section 823, subsection 2 of the Civil Code in
conjunction with section 17 or 18 of the Law Against Unfair Competition; on the general provision in
section 1 of the Law Against Unfair Competition;15 or on section 826 of the Civil Code.  In case of
negligence, a claim can be based on section 623, subsection 1 of the Civil Code if the interest of the
plaintiff in keeping certain information secret prevails over the interest of the defendant in using it.
Finally, damages can be awarded for breach of a contractual duty of secrecy which can be express,
implied or imposed by law.
As was explained in Germany's answer to question 5 of the Checklist on Issues of
Enforcement,15 damages are intended to provide full compensation (section 249 of the Civil Code),
which, in most cases, involves the payment of a sum of money (section 251 of the Civil Code).  Theinjured party may calculate the damage done as described in Germany's answer to question 5 of the
Checklist on Issues of Enforcement.
15
15. Article 46 requires that judges and administrative officials be authorized to order, in
certain circumstances, other remedies, including disposal of goods outside commercial channelsor destruction of goods and destruction of ma terials and implements the predominant use of
which is the creation of infringing goods.  IP/N/6 /DEU/1 describes the authority of the courts to
order such remedies in connection with all forms of intellectual property addressed in Part II of
the TRIPS Agreement except for undisclosed in formation. Please describe the additional
remedies available under the laws of Germany in the event of violations of rights in trade
secrets, the circumstances in which such auth ority will be exercised, the factors considered in
determining the nature of the remedies provided,  and cite the legal authorities providing for
such remedies.
See the answer to question 12 above.
16. Article 47 provides that WTO Members may authorize judges and administrative
officials to order infringers to identify for right holders third parties involved in the productionand distribution of infringing goods or services and their channels of distribution.
IP/N/6/DEU/1 describes the authority of the courts to order that such information be disclosed
in connection with utility models, plant varieties, trademarks, designs and copyrights. Please
describe any authority judges have to order infringers of patents and or rights in undisclosed to
identify for right holders third parties involved  in the production and distribution of goods or
services in violation of such rights and thei r channels of distribution and describe the
circumstances in which this authority would be exercised.  Please cite the legal authorities
providing for such remedies.
                                                     
15 Document IP/N/6/DEU/1.IP/Q4/DEU/1
Page 16
With regard to patents, section 140b of the Patent Law (which was quoted among other
provisions in Germany's answer to question 6 of the Checklist of Issues on Enforcement16) affords the
injured party the right to information regarding the origin and the distribution channels of the articles
which infringe his patent against anyone utilizing it without his consent.  This covers information
regarding the name and address of the manufacturer, the supplier and other previous owners, the
commercial purchaser or client, as well as regarding the quantity of objects violating the right.  Theclaim only ceases to exist if its implementation wo uld be disproportionate in individual cases.
With regard to undisclosed information, the inju red party has a similar claim to information as
part of the general injunctive relief described in the answer to question 12 above if his secret has been
passed on to third parties.
17. Article 48.2 permits WTO Members to exempt public authorities and officials from
liability from remedies only where their actions were taken or intended in good faith in carrying
out their responsibilities under the law.  Please explain any exemption provided public
authorities and officials from liability for abuse of enforcement procedures, describe the
circumstances in which such limitations would no t apply, and cite the legal authorities granting
such exemptions.
As has already been explained in Germany's answer to question 7 of the Checklist of Issues
on Enforcement
16 the State is liable for intentional or negligent breaches of official duties by officials
in respect of third parties (section 839 of the Civil Code in conjunction with Article 34 of the Basic
Law).
Judges are liable for damage caused by incorrect judgements only in cases where their breach
of duty constitutes a criminal offence - as in cases of (intentional) perversion of justice in the sense of
section 336 of the Criminal Code (section 839, subsection 2 of the Civil Code).  In accordance with
section 839, subsection 1 of the Civil Code they are liable for damage done to the losing party or by
incorrect order only if they have intentionally or negligently acted in breach of an official duty
incumbent on them with regard to  the specific party encumbered by the provisional disposition.  In
accordance with section 839, subsection 3 of the Civil Code, the duty to provide compensation does
not, however, apply if the injured party has intentionally or negligently omitted to avert the damage
by filing an appeal.
Provisional measures
18. Article 50.1 requires that judicial and admini strative authorities have the authority to
order prompt and effective provisional remedies to prevent an infringement of any intellectual
property right.  IP/N/6/DEU/1 describes the auth ority of the courts to order such provisional
remedies in connection with all forms of intellect ual property addressed in Part II of the TRIPS
Agreement except for undisclosed information.  Please verify that such protection is available to
address violations of rights in such informat ion and describe the circumstances in which such
orders would be granted.
Whenever a party can claim injunctive relief for violation of his or her trade or industrial
secret, he or she can assert these claims by means of the provisional measures outlined in Germany's
answers to questions 10 through 12 of the Checklist on Issues of Enforcement.16
19. Article 50.2 requires that judicial authorities have the authority to grant provisional
remedies when a delay is likely to cause "irreparab le harm" to the right holder.  Please describe
briefly what is required by the authorities to establish "irreparable harm" to the right holder.
                                                     
16 Document IP/N/6/DEU/1.IP/Q4/DEU/1
Page 17
In accordance with section 937 of the Code of Civil Procedure a provisional disposition may
in urgent cases be granted without hearing the other party.  A case will be considered "urgent" when
hearing the other party might render the provisional disposition ineffective either because immediateaction is required, or because the purpose of the provisional disposition requires that the defendant be
taken by surprise in order to prevent him from actin g to the detriment of the applicant.  "Irreparable
harm to the right holder" may be one element by which urgency can be assessed, "risk of evidencebeing destroyed" may be another.  The latter alternative applies, for instance, in cases of copyright
infringement with regard to computer software.  In addition to this, the danger of evidence being
destroyed can be obviated by summary proceedings in the form of special proceedings to secure
evidence, section 485 and section 486, subsection 3 of the Code of Civil Procedure.
20. Article 50.2 also requires that judicial authorities be authorized to grant provisional
remedies when there is a "demon strable risk of evidence being destroyed".  Please describe
briefly what factors are considered by the compet ent authorities in determ ining when there is a
"demonstrable risk of evidence being destroyed".
See the answer to question 19.
21. Article 50.3 requires that judicial authorities be authorized to require applicant to
provide evidence to establish with a sufficient de gree of certainty that the applicant is the right
holder and that infringement has occurred or is  imminent.  With respect to each intellectual
property right defined in Article 1.2 of the TRIPS Agreement, please describe the evidence
required by right holders to establish ownership.
A provisional disposition is ordered if the applicant "credibly establishes" (section 935 in
conjunction with sections 920 and 294 of the Code of Civil Procedure) that he or she is entitled to the
right which he or she wishes to assert.  This can be done by any kind of evidence, including sworn
affidavits, provided the taking of the evidence can ensue immediately.
22. Article 50.3 requires that judicial authorities be authorized to provide a security or
equivalent assurance to protect the defendant.  Please cite the legal authority establishing a
security or equivalent assurance.
Section 936 in conjunction with section 921, subsection 2 of the Code of Civil Procedure
authorizes the court to demand security from the ap plicant before ordering the provisional disposition.
23. Article 50.4 requires that parties be notified when provisional measures have been
adopted inaudita altera parte .  Please describe briefly the procedures followed by each authority
able to adopt such measures for notifying affe cted parties and specify the time within such
notice must occur.
The party who has secured the provisional disposition must serve it on the opponent
(section 936 in conjunction with section 922, subsection 2 of the Code of Civil Procedure).  Execution
of the provisional disposition must take place with in one month and is permissible before service has
taken place.  It will, however, be ineffective if service is not carried out within one week after its
execution (section 936 in conjunction with section 928, subsections 2 and 3 of the Code of Civil
Procedure).  The party affected by the provisional disposition enjoys the possibility of having a courtexamine the legality of the provisional measure by lodging an objection ( Widerspruch ) to the
provisional disposition, sections 936 and 924 of the Code of Civil Procedure.  This objection
necessarily leads to a court hearing.IP/Q4/DEU/1
Page 18
Special requirements related to border measures
Preliminary remarks to answers to questions 24-26
In addition to the German law described below, the Council Regulation (EC) No. 3295/94 of
22 December 1994 laying down measures to prohibit the release for free circulation, export, re-export
or entry for a suspensive procedure for counterfeit and pirated goods (OJ EC No. L 341/8 of30 December 1994) is applicable in Germany.  German law applies only to cases which are not
covered by the aforementioned regulation, such as, for instance, border measures involving patents,
utility models, topographies of microelectronic semiconductor products, plant varieties and
unregistered trademarks.
24. Article 52 of the TRIPS Agreement require s that rights holders wishing to stop
importation of counterfeit trademarked goods or pirated copyrighted works present evidence tothe competent authorities that there is prim a facie infringement of their trademark or
copyright.  Please explain what evidence will constitute prima facie infringement in Germany.
The applicant for border measures has to "credibly establish" that he is the holder of the right
he wishes to have protected by border measures.  He can present any form of evidence which can betaken immediately, including sworn affidavits.  The applicant also has to describe the goods he wants
to be subjected to seizure by the customs authorities as precisely as possible.  Such goods shall be
subject to seizure only in those cases where the infringement is obvious (section 142a, subsection 1 of
the Patent Law; section 25a, subsection 1 of the Utility Model Law; section 9, subsection 2 of theSemiconductor Products protection Law in conjunction with section 25a of the Utility Model Law;section 40a, subsection 1 of the Varieties Protecti on Law; section 146, subsection 1 and section 151 of
the Trademark Law; section 111a Copyright Law; and section 14a, subsection 3 of the Designs Law
in conjunction with section 111a of the Copyright Law).  Whenever the customs authorities have
reason to doubt whether the goods to be seized are in fact infringing the right of the applicant they
must not seize them.
17
25. Article 58 specifies procedures to be followed where the competent authorities can act exofficio.  IP/N/6/DEU/1 states that ex officio action is possible in certain circumstances. Please
explain in connection with what intellectual prop erty rights ex officio action is possible and
describe the circumstances in which it would be available.
Only Article 4 of the Council Regulation (EC) No. 3295/94 of 22 December 1994 laying
down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive
procedure for counterfeit and pirated goods (OJ EC No. L 341/8 of 30 December 1994, see above)
permits ex officio action by the customs authorities.
17
26. Article 60 permits Members to exclude from the provisions for border enforcementsmall quantities of goods of a non-commercial nature carried by passengers or sent in small
consignments.  Please describe what constitutes a de minimis  import that is excluded from the
border measures under the law of Germany.
Article 10 of the Council Regulation (EC) No. 3295/94 of 22 December 1994 laying down
measures to prohibit the release for free circulation, export, re-export or entry for a suspensive
procedure for counterfeit and pirated goods (OJ EC No. L 341/8 of 30 December 1994, see above)
explicitly excludes from border measures goods of a non-commercial nature contained in travellers'
personal luggage within the limits laid down in respect of relief from customs duty.
                                                     
17 See also the preliminary remarks which precede question 24.IP/Q4/DEU/1
Page 19
The relevant provisions of the German law - where they are applicable - do not contain an
explicit exception for de minimis  imports.  Nevertheless, as has already been explained in Germany's
answer to question 15 of the Checklist of Issues of Enforcement,18 the German provisions on border
seizure do not apply to goods imported by private individuals whenever, in a given case, it appears to
be unlikely that the imported goods will subsequently be brought into commercial exchange in
Germany (cf. the grounds given for the Federal Government Draft Bill, Federal ParliamentPublication 11/4792 dated 15 June 1989, p. 41).
19
Criminal procedures
27. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for
wilful trademark counterfeiting and copyright piracy.  Please explain how the penalties
provided under the laws of Germany comply with that obligation.
As has been explained in Germany's answer to question 21 of the Checklist of Issues on
Enforcement,19 all intellectual property rights are protected in Germany by criminal provisions.  The
penalties and remedies that may be imposed have been described in Germany's answer to question 24
of the Checklist.  Wilful trademark counterfeiting and copyright piracy can be punished byimprisonment of up to three years or a fine (section 143, subsection 1 of the Trademark Law;
sections 106 through 108 of the Copyright Law).  If the offender has acted by way of trade he can be
punished by imprisonment of up to five years or  fine (section 143, subsection 2 of the Trademark
Law; section 108(a) Copyright Law).  These penalties are sufficient to provide a deterrent for the acts
described in Article 61 of the TRIPS Agreement.
[Follow-up questions from the US]
1. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, inte grated circuit layout-design and trade secret
enforcement for each of the years 1996 and 1997, including the number of cases filed;
injunctions issued; infringing products seized; infringing equipment seized; cases resolved(including settlement); and the amount of damages awarded.
To be supplied at a later date, if available.
2. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1996 and 1997, including the
number of raids, prosecutions, convictions and the amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that your criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
The German Government does not yet have any data for 1997.  For 1996, the criminal
prosecution statistics ( "Strafverfolgungsstatistik" ) contain the following information on criminal
enforcement in the area of copyright piracy and trademark infringement:
In 1996, 217 persons were found guilty of copyright piracy (sections 106 – 108a UrhG).  Out
of these, 71 were subjected to a summary procedure and punished by means of a penal order("Strafbefehl" ).  146 persons were tried in court, two of whom were subject to juvenile court
proceedings, 20 out of the remaining 144 persons were sentenced to a prison term, which lay below
six months in nine cases, at six months in two cases, between six months and nine months in five
cases and between nine months and a year in four cases.  All sentences were probationally suspended.
                                                     
18 Document IP/N/6/DEU/1.
19 See also the preliminary remarks which precede question 24.IP/Q4/DEU/1
Page 20
124 persons were sentenced to a fine which in four cases ranged between 5 and 15 daily rates (a single
rate between DM 10 and DM 20 in two cases a nd between DM 20 and DM 50 in two cases), in 41
cases between 16 and 30 daily rates (a single rate below DM 10 in six cases, between DM 10 and DM
20 in eight cases, between DM 20 and DM 50 in 23 cases, and between DM 50 and DM 100 in four
cases), in 58 cases between 31 and 90 daily rates (a single rate below DM 10 in six cases, between
DM 10 and DM 20 in 16 cases, between DM 20 and DM 50 in 23 cases, and between DM 50 and DM100 in 14 cases), in 18 cases between 91 and 180 daily rates (a single rate below DM 10 in one case,
between DM 10 and DM 20 in seven cases, between DM 20 and DM 50 in five cases, between DM
50 and DM 100 in three cases and above DM 100 in two cases), and in two cases between 181 and
360 daily rates (a single rate between DM 20 and DM 50 in one case, between DM 50 and DM 100 in
the other).
In 1996, 174 persons were found guilty of tradem ark piracy according to the Trademark Law.
Out of these, 51 persons were punished by means of a penal order.  123 persons were tried in court,
one of which was subject to juvenile court proceedings.  Out of the remaining 122 persons, 10 were
sentenced to imprisonment, the term ranging betw een six and nine months in three cases, between
nine months and one year in four cases and between one and two years in three cases.  All sentences
were probationally suspended.  112 persons were punished by a fine, which in 10 cases rangedbetween 5 and 15 daily rates (a single rate below DM 10 in seven cases, between DM 10 and DM 20
in one cases, and between DM 20 and DM 50 in two cases) between 16 and 30 daily rates in 46 cases
(a single rate below DM 10 in eight cases, between DM 10 and DM 20 in 14 cases, between DM 20
and DM 50 in 21 cases, between DM 50 and DM 100 in three cases), between 31 and 90 daily rates in
50 cases (a single rate below DM 10 in two cases, between DM 10 and DM 20 in 14 cases, betweenDM 20 and DM 50 in 26 cases, between DM 50 and DM 100 in seven cases, and over DM 100 in one
case), and between 91 and 180 daily rates in six cases (a single daily rate below DM 10 in one case,
between DM 10 and DM 20 in one case and between DM 20 and DM 50 in four cases).
Data regarding suspensions at the German border of goods which infringe trademarks or
copyright are contained in the answer provided by the European Communities.
20
Further data concerning the criminal enforcement of intellectual property rights are presently
not available.
3. The United States Government has received reports of prosecutorial delays, sometimes
exceeding one year, in acting upon criminal complain ts.  In light of these reports, please explain
how Germany complies with the requirement of Articles 41.2 and 61, that copyright
enforcement procedures "shall not … entail … unwarranted delays."
It is not clear to what reports the United States refers in its question.  By not providing more
detailed information on the cases concerned, the United States precludes the German Governmentfrom considering them and responding.  Though it can not prima facie  be excluded that such delays
have occurred in individual cases, the German Go vernment has - until now - not received any such
complaints.  If the United States Government could detail the cases concerned, the German
Government could ask the competent Länder  governments for explanations.
4. The United States Government has rece ived reports that German courts have
interpreted German copyright law to limit dam ages to provable lost profits, despite the fact
such remedy alone is almost always much less than the cost to the defendant of purchasing
legitimate products.  In light of these reports, please explain how German law and practice
comply with Articles 41.1 and 45 with respect to the availability of a deterrent and fully
compensatory damages.
                                                     
20 Document IP/Q4/EEC/1.IP/Q4/DEU/1
Page 21
In its reply to question 5 of the Checklist of Issues on Enforcement,21 the German
Government has explained three different ways in which – according to German law – an injured
party can calculate the damage it has suffered:
- by proving the concrete loss of assets incurred because of the violation, including lost
profits;
- by requiring payment of a reasonable licence fee; or- by demanding the profit gained by the injuring party from the violation of the right.The German Government has no information about cases in which German courts have
limited damages to provable lost profits.  If the United States Government could furnish more detailedinformation on the cases it has referred to, the German Government will be happy to comment on
them.
5. Please confirm that injunctions to enforce the right of perusal under section 809 of the
Civil Code are generally available in German courts, upon an appropriate factual showingwithout notice to the opposing party, and that such injunctions fulfil Germany's obligations
under Articles 41 and 50.
The German Government can confirm that § 809 of the Civil Code grants a right to have an
item submitted or to inspect it if the right holder has or supposes to have a claim "in respect of theitem" (cf. Germany's answer to question 3 of the Checklist of Issues on Enforcement
21).  The German
Government can also confirm that this claim can be asserted by ex parte  provisional measures
provided that the legal requirements for the availability of such measures are fulfilled in a given case
(cf. Germany's answers to questions 10 and 11 of the Checklist of Issues on Enforcement21 and to
questions 19 and 20 from the United States above).
This general statement can be illustrated by reference to the relevant case law:In a patent infringement case, the Federal Court of Justice has generally confirmed that the
right of inspection is available with regard to claims arising from the violation of an intellectualproperty right and that the right of inspection can be enforced by means of an ex parte  preliminary
disposition (BGHZ 93, 191 = GRUR 1985, 512, quoted in Germany's answer to question 3 of the
Checklist of Issues on Enforcement.
21  The right of inspection in this case was to be carried out by an
expert who had to draft a report which would be ha nded over only to the Court.  The Federal Court of
Justice has, however, stated that - in order to protect the interests of the other party and to prevent
abuses of the procedure - the applicant has to prove a prima facie  case.  The inspection may only
serve as the last link in an otherwise complete chai n of evidence.  Therefore, the applicant has to show
that a high degree of probability exists that the other party has in fact illegitimately used the patent
right.  In addition to this, only such means of inspection can be used which do not encroach on the
substance of the item.
During the last year a number of courts of first instance have applied this procedure to
copyright infringements relating to computer softwa re.  Following an application for a provisional
disposition and without hearing the other party the courts granted applicants the right to have neutral
experts inspect the computers of alleged infringers after the applicant had shown, with a high degree
of certainty, that the other parties had used unauthorized copies of software.
                                                     
21 Document IP/N/6/DEU/1.IP/Q4/DEU/1
Page 22
In sum, the right of inspection can generally be used in order to secure relevant pieces of
evidence.  It can be asserted by provisional measures without hearing the other party.  This possibility
is, however, subject to strict limitations which seek to protect the legitimate interests of the other
party.  Therefore, German law is in full compliance with Articles 41 and 50 of the TRIPS Agreement.
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