Your intellectual property rights are an important part of your corporate value, international competitiveness, as well as a vital aspect of your corporate social responsibility. U.S. trademark, design and patent rights do not by themselves provide protection in Germany or the rest of the European Union (EU), so you must take specific steps to protect your IPR in Europe.
Through their offices in Germany, the U.S. Commercial Service, the trade promotion agency of the United States Department of Commerce, can:
Register your IPR to Gain Protection in Europe!
U.S. grants of intellectual property rights are valid in the United States only! You can register in countries individually or, for EU-wide trademark and design protection, you might consider the Community Trademark and/or Registered Community Design. These provide protection for your industrial design or trademark in the entire 28-nation EU mega market of more than 503 million people. Both national trademarks and the CTM can be applied for from the U.S. Patent and Trademark Office as part of an international trademark registration system (http://www.uspto.gov), or you may apply directly for those trademarks from the Office for Harmonization in the Internal Market (http://oami.europa.eu). U.S. IPR owners should also note that the EU operates on a "first to file" principle and not on the "first-to-invent" principle, used in the United States.
For patents, the situation is slightly different but protection can still be gained via the U.S. Patent Office. Although there is not yet a single EU-wide patent system, the European Patent Office (EPO) (http://www.epo.org/index_de.html) does grant individual European patents for the contracting states to the European Patent Convention (EPC), which entered into force in 1977. The 31 contracting states include almost all EU member states and several more European countries. As an alternative to filing your patents for European protection with the U.S. Patent Office, the EPO, located in Munich, provides a convenient single point to file a patent in as many of these countries as you wish.
Things to Know When Participating in a German Trade Fair
Over 90% of products and technologies are introduced into the German market via trade fairs. U.S. companies interested in entering the German market, as well as other international markets, are well advised to consider taking full advantage of the business opportunities presented at these events. German trade fairs also provide excellent opportunities for monitoring international infringement of your IPR. The larger trade fair organizers offer various legal advice during trade fairs, either through in-house lawyers or affiliated law firms. They are, however, not in a position to act on behalf (or against) exhibitors unless there is a court decision which clearly stipulates that such an action is legally justifiable, such as an injunction or court order.
1) Register your IPR before you exhibit at a trade fair.
2) Register with German Customs if you believe that another exhibitor will infringe on your rights. You can find the “application for action” here.
3) Bring documentation with you to the trade fair; you must be able to demonstrate your ownership. Copies of your patent or trademark rights will suffice.
4) Be aware that German trade fair organizers do not themselves determine which party is guilty of unauthorized copying – that is left to a legal process. They are, in fact, prohibited by law from actually closing down a trade fair booth during the show. The organizers are, however, generally willing to remind an exhibitor of his/her responsibilities under the anti-piracy clause not to knowingly copy the IPR of other exhibitors – and that helps dissuade some.
5) Some organizers do a better job than others providing assistance before and during the fair. The following trade fair organizers have an identifiable IPR initiative, which goes beyond the minimum requirements for IP protection stipulated by AUMA (the German trade fair association), showing their commitment to protect the interests of IPR owners among their exhibitors:
Messe Frankfurt: Messe Frankfurt Against Copying
Spielwarenmesse: IPR Council
Please contact the U.S. Commercial Service in Frankfurt, Germany, for detailed information on IPR protection activities of the individual trade fair organizers (contact information below).
6) Take steps to protect your trade secrets (anything that has commercial value because it is secret, such as pricing methods, key ingredients, customer lists). To make a claim against a violator, you need to show not only that the secret has value and that its value derives from the fact that it is secret. You also need to show that you have taken reasonable steps to ensure its secrecy. This may mean restricting access to only those parties with a clear need to know AND requiring those persons with access to sign non-compete and non-disclosure agreements.
If you believe another exhibitor is copying you, here are some steps you may wish to take:
1) If you believe in advance of a trade fair that a competitor may infringe on your already-registered-in-Germany rights, contact German Customs, register with them, and inform them about your suspicion. German customs authorities have the right to seize infringing products, sometimes even at the fairgrounds. Contact the U.S. Commercial Service in Frankfurt for further information.
2) At the trade fair, check out exhibitors you suspect of copying. If you see an exhibitor you suspect of copying your IPR, try to obtain a sample and/or brochure plus their contact information. Contact the fair organizer’s legal department, if available, to discuss your options and seek their assistance. Some fair organizers have staff readily on hand, who are able to provide counseling and other help. Also inform the U.S. Commercial Service; we cannot provide legal counsel but can help you consider options and contact a lawyer if advisable.
3) Declaration of Forbearance ("Strafbewährte Unterlassungserklärung”): The lawyer can work with you to draft a Declaration of Forbearance and serve it on the alleged copier. Upon accepting it, the alleged copier agrees to voluntarily withdraw product(s) in question, remove (or black out) any references in catalogs, etc., as well as pay the lawyer’s fee for drawing up the Declaration of Forbearance (starting at about 200 Euros).
4) If the exhibitor refuses to sign, a Preliminary Injunction (“Einstweilige Verfügung”) may be necessary. The procedure entails a lawyer taking proof, provided by the U.S. exhibitor (copies of registrations, letters, faxes, or e-mails showing that the alleged copier had previously procured samples from the U.S. exhibitor, etc.) to a judge. The preliminary injunction prohibits the alleged IPR-copier from exhibiting or selling the products in question, until the issue becomes a court case in which rights are clarified.
5) Some trade show areas are legally declared a “customs border area,” where seizures can be made before an infringing exhibitor is served with orders: Hannover, Frankfurt, and Leipzig trade fair grounds enjoy this status.
Links to Additional Information
For more information on how to protect your IPR in Europe, see our information on EU-Wide IPR Protection.
For information about the U.S. Commerce Department's Strategy Targeting Organized Piracy (STOP!) program, please visit: www.stopfakes.gov. Information on registering your rights is also provided via a telephone hotline (1-866-999-HALT). The website also provides so-called "IPR-Toolkits" on selected markets here.
Small & Medium Sized Business On-line Education Course
The U.S. Coordinator for International Intellectual Property Enforcement has launched a new on-line training tool designed to educate Small & Medium sized Enterprises (SMEs) on how to protect their IP. The SME Tutorial allows businesses to educate themselves on a range of important issues from the basic definition of the various types of IP, to more detailed analysis of the processes and tools available to protect their assets. The Department of Commerce partnered with the Small Business Administration to develop this program tailored to aide American SMEs.
The U.S. Chamber of Commerce provides information on how to protect IPR.
German trade fair organizers are represented in AUMA, the Association of the German Trade Fair Industry. On its website, AUMA provides information on what exhibitors should do and on what trade fair organizers can do to protect IPR.
If you are a German Lawyer specializing in IPR protection and you would like to promote your services to U.S. companies via our Business Service Provider network, please register here.
Your U.S. Commercial Service Germany IPR Contacts
Senior Commercial Specialist Mr. Volker Wirsdorf
U.S. Commercial Service, American Consulate General
Giessener Strasse 30, 60435 Frankfurt, Germany
Tel: + 49-69-7535-3120 Fax: + 49-69-7535-3171