Preliminary Injunctions in Austrian IP Litigation

1
Preliminary Injunctions in Austrian IP Litigation

• Barbara Kuchar
• Partner
• Gassauer-Fleissner, Vienna

2
Implementation of Enforcement Directive

• Directive 2004/48/EG implemented in Summer 2006
• Much of Austrian law was already in compliance
  with Directive
• NEW Preliminary injunction to preserve edivence,
  Art 7 (but used to be possible under case law)
• More problematic presentation of evidence, Art 6
  discovery against fundamental principles of
  Austrian Rules of Civil Proceedure

3
Claims of an IP Holder

• Cease and desist order
• Destruction of infringing objects
• Payment
• Reasonable royalty
• Damages (actual damages infringers profits
  double damages)
• Legal fees generally awarded in Austria
• Publication of decision
• Accounting
• Information (NEW)

4
Austrian PIs General Remarks

• Ex-parte hearing possible
• No specific danger has to be evidenced! (only
  entitlement to IPR infringement)
• Only evidence that is immediately available
  permissible
• PI must not create an irreversible situation
• Court may order to bring suit on the merits
  within resonable time
• Applicant can be liable for damages if PI is
  reversed

5
Cease and Desist Order 1/2

• Stop continuation of infringement
• Continunation presumed after 1st infringement
• Burden of proof on defendant
• Compliance
• Settlement proposal
• Prevent imminent infringement
• Presumed that defendant will not infringe
• Burden of proof on Plaintiff
• Registration of TM no imminent infringement yet
• Drug not on market but already listed with health
  insurance for reimbursement imminent patent
  infringement

6
Cease and Desist Order 2/2

• Enforcement Directive also requires injunction
  against intermediary
• Not explicitly implemented but deducible from
  general civil law/proceedural law
• Problems in internet context
• What does a Host-Provider have to know?
• Austrian Supreme Court What is obvious to the
  legal lay person without requiring further
  investigations
• This standard could come into conflict with the
  Directive

7
Corrective Measures

• Destruction of Infringing Goods
• Directive not properly implemented no recall
  or definite removal from channels of commerce
• Recall/removal can arguably be deduced from
  existing provisions

8
Corrective Measures and PIs

• Now possible to get PI that covers corrective
  measures as well (intermediary relief used to be
  available in relation to cease and desist orders
  only, except for Trademark Act)
• Problem PI must not create irreversible
  situation
• Thus, for instance, order to remove from market
  and deposit infringing goods possible but no
  destruction before final decision
• Also note Product Piracy Regulation in this
  context

9
Monetary Relief

• In general, a creditor can secure his claim
  through a PI
• Measures include seizure of movable/immovable
  property, blocking of bank accounts
• In comparision to the Directive this is not even
  limited to infringements on commercial scale
• However, Directive speaks of circumstances
  likely to endanger the recovery of damages
• This includes objective circumstances as well,
  i.e. when the infringer is not in good financial
  shape
• The general Austrian provisions require
  subjective circumstances on debtors end, i.e
  that he conceals or squanders funds
• Thus, special provisions were incorporated into
  the IP laws to facilitate PIs to secure the
  payment of damages

10
Publicity Measures

• Austrian law provides for the publication of
  decisions on the merits
• only under certain circumstances
• Newspapers, TV, Website, Pop-up
• Losing party carries costs
• Not possible to have a PI published but Directive
  would generally require it (judicial decision
  and not only Urteil decision on the merits)
• Failure to implement but arguably of little
  practical significance
• Would often create an irreversible situation How
  to undo the impression created by a wrongful
  publication? Publish again? Often not good
  enaugh.
• Could be necessary if public interests are high,
  however, for instance, when fake products are
  dangerous

11
PI to preserve Evidence Art 7

• Explicitly implemented
• Seizure and house search in civil proceedings!!!
• Not new, however Decision of the Vienna Court of
  Appeal Microsoft-Programme OLG Wien 25.1.1999,
  4 R 6/99b MR 1999, 167
• A PI was granted to seize unlicensed programs
  installed on defendants computers.
• Defendant could have deleted the programs and
  frustrated the possibility to compute a resonable
  royalty based on the number of copies.
• The claim was based on Art 50 (1) (b) TRIPS that
  provides for a civil search to secure evidence,
  if necessary inautita altera parte.
• TRIPS is self-executing in Austria, the
  additional provisions to put Art 50 (1) (b) into
  effect can be deduced from general proceedural
  law (since measures availbale for a PI are not
  listed exhaustively)
• Since this decision was the only one, did not
  even go up to the Supreme Court and remained
  relatively unknown even among IP experts it was
  decided to codify this possibility when Art 7 was
  implemented.