The new Sec. 140 para. 3 MarkenG states “In order to secure the claims for injunctive relief specified in this Act, preliminary injunctions may also be issued without the presentation and prima facie evidence of the conditions specified in sections 935 and 940 of the Code of Civil Procedure”. A presumption of urgency corresponding to the new Sec. 140 para. 3 MarkenG has always existed in competition law. Already Sec. 25 of the Act Against Unfair Competition of 1909 codified a presumption of urgency which up from 2004 Sec. 12 of the new Act Against Unfair Competition pursued and linguistically specified.
In case law and literature it has always been disputed whether the presumption of urgency pursuant to Sec. 12 para. 2 Act Against Unfair Competition can be applied analogously in trademark law (cf. overview of the dispute in Stroebele/Hacker/Thiering, Trade Mark Act, 12. Edition, Sec. 14 no. 581).
With an order of October 12, 2018, still issued under the old trademark law, printed e.g. in GRUR-RR 2019, 64, the Higher Regional Court of Nuremberg followed the prevailing opinion and rejected an analogous application of the presumption of urgency pursuant to Sec. 12 para. 2 Act Against Unfair Competition to trademark law with the result that the applicant had to substantiate the ground for its application. In this case, the defendant had published a photo on his website and thus infringed a the applicant’s trademark. After the applicant’s warning, the defendant did not submit a cease-and-desist declaration including a penalty clause, so that the applicant’s claim for injunction relief has not been settled. However, the defendant actually removed the trademark infringing photo from his website. Since further acts of infringement by the defendant had not been disclosed, the Higher Regional Court of Nuremberg assumed that the defendant had ceased the act of infringement. In such a case, according to the Higher Regional Court of Nuremberg, the prosecution was no longer urgent. A preliminary injunction was no longer necessary to secure the applicant’s claims. It was reasonable for the applicant to enforce his claims in the main action proceedings. Therefore, at least the ground for a preliminary injunction was lacking. Thus, the Higher Regional Court of Nuremberg rejected the application for a preliminary injunction.
According to the new trademark law, the Higher Regional Court of Nuremberg should have assumed that there was a presumption for the ground for the preliminary injunction because of the presumption of urgency now introduced into the Trade Mark Act pursuant to Sec. 140 para. 3 Trade Mark Act.
However, the presumption of urgency is rebuttable. The defendant can therefore demonstrate – either in a protective brief or in an objection brief – that he had ceased the infringing act. The same applies if it is assumed that the applicant has an obligation to also present the circumstances known to him that speak against an urgency, as it is the case with regard to known objections to the claim for a preliminary injunction.
It is questionable whether the Higher Regional Court of Nuremberg would also have come to the same conclusion under the new trademark law that there was no ground for a preliminary injunction and that the application for an injunction should therefore be rejected. As far as known only the Higher Regional Court of Nuremberg and the Higher Regional Court of Munich held the opinion that the urgency for a preliminary injunction no longer applies if the infringing act is ceased. Nevertheless, this assumption only applies if there is no presumption of urgency, cf. Higher Regional Court of Munich, WRP 2014, 591. Since there is now a presumption of urgency in trademark law, the Munich courts will probably no longer assume in the future that a mere cessation of the infringing act without the submission of a cease-and-desist declaration including a penalty clause does not give rise to a ground for preliminary injunction.
The other Higher Regional Courts do not in any case assume – as far as known – that the urgency does not apply if only the infringing act is ceased without the submission of a cease-and-desist declaration including a penalty clause. Exception: if the infringement was committed at a special event, e.g. an anniversary or Christmas sale, this may speak against the ground for a preliminary injunction if the act cannot be repeated or can only be repeated after a longer period of time (cf. inter alia Cepl/Voß, Commentary on Intellectual Property Rights, 2. Edition, Sec. 940, no. 95).
