The 2013/03/08 at 08:12
According to Fred Sonnenberg, “French and German companies can avoid many pitfalls by turning their minds to issues surrounding their innovations early enough”. This Industrial Property Attorney (member of the CNCPI or National Company of Industrial Property Attorneys) from the 24IP Law Group firm observes, week after week, problems encountered by SMEs, in the absence of precautions. “Clients come to us only after a problem has arisen, which is a real shame. Anticipation of the risks that may come up with intellectual property is not easy, especially for a young company with many elements to manage every day,” he acknowledges.
24IP Law Group is a primarily Franco-German structure, based mainly in Munich, Berlin and Paris, specialising in industrial property in a multinational context. The firm supports clients in France as well as Germany in many sectors of activity, with an offer covering all aspects of intellectual property, particularly applications for trademarks, patents, designs and models. “We also deal a great deal in litigation,” specifies Fred Sonnenberg. “Most of our clients share the characteristic of having Franco-German interests. They may be French companies with business or projects in Germany, or vice versa. They regularly find themselves caught up in difficulties that they may not have pre-empted.”
Litigation is a particularly important aspect in the differences between intellectual property in France and in Germany. In terms of court proceedings, many company heads can be caught off guard by the context in which procedures take place. In France, for example, a brief period for obtaining a preliminary injunction is 6 months whereas in Germany, a brief period is considered no more than 4 weeks. “When French clients find themselves dealing with a letter of formal notice issued by a German company, alleging counterfeit, they often do not realise that a quick and urgent reply is indispensable. If the situation is not dealt with within a timeframe comprising a few weeks, the letter’s addressee may find himself or herself facing legal action for counterfeit. In such a case, in Germany, the preliminary injunction can be delivered without the alleged counterfeiter being heard,” explains Fred Sonnenberg.
Prudence is also advisable if a French company transmits a letter to a German company following, for example, suspected counterfeit regarding a European patent. This letter may be considered as an indictment under German law, implying that the French entity must reimburse legal fees if the suspicion proves incorrect. Under the French system, offiicial notice in the form of a letter is considered more as an invitation to discussion, and does not necessarily imply legal proceedings. This example demonstrates how the two approaches diverge.
A lack of precaution, especially in the case of SMEs, can also have an effect on other facets of intellectual property. In terms of patentability, disclosure of the innovation blocks the possibility of obtaining an intellectual property title as the quality of newness is required to benefit from protection. “Even if a company starts procedures late, it can still obtain crumbs of protection that can still be useful. The model used in Germany, little known in France, allows protection of a technical system in Germany, even if the latter has already been exhibited or used in France. But ideally, it is always preferable to embark on patent application procedures as upstream as possible,” underlines Fred Sonnenberg. There are also advantages in the French system that are not found in Germany, such as the Soleau envelope, providing proof of the date officially attributed to the contents of a sealed envelope without giving protection to an invention. “Both countries have interesting solutions in case law that it is handy to be familiar with when evolving on this bi-national market,” he adds.
The purpose of the 24IP Law Group is to be present as a consultant for clients with genuine cross-border needs. For example, this type of accompaniment can prove precious when a French company aims to take over a German entity. Fred Sonnenberg also indicates that “today, alternatives to court proceedings are increasingly sought after. Mediation solutions stand out as an interesting option these days. The fact that we have access to a dual Franco-German culture is necessarily an asset in this case, for improving our understanding of the issues affecting the different stakeholders, and finding the best compromises. For example, for certain disputes we offer recourse to various Chambers of Commerce to bring an arbitral solution. When a Japanese company needs to find common ground with a French or German counterpart, this alternative is often preferable to actual court action.”
For further informations: click here.