Utility model enforcement using a ballpoint pen as an example

Utility model for a ballpoint pen that can be refilled with water

Let us assume you have invented a ballpoint pen that can be refilled with water. Now you want to produce this ballpoint pen yourself and sell it in Germany. In order to prevent other manufacturers of ballpoint pens in Germany from copying your invention and including the same ballpoint pen in their product range, you apply for a utility model for your invention at the DPMA.

Please note that the German Patent and Trade Mark Office is not allowed to provide legal advice. The enforcement of industrial property rights requires extensive legal knowledge. Therefore, it is advisable in most cases to seek legal assistance from a lawyer.

  • Lawyers with special knowledge in the field of IP protection (specialist lawyers for IP protection) in your region can be found via the chambers of lawyers.
  • Patent attorneys can be found via a nationwide patent attorney search, a service of the Chamber of Patent Attorneys.

Case 1: You learn that others are copying your utility model

As a general rule, utility models can only be enforced after registration in the Register. If a third party copies and sells your ballpoint pen, you can enforce the rights resulting from your registered utility model, for example, by means of a court decision. That means you can prohibit the third party from continuing to produce and sell the copied pen.

Please note, however, that the DPMA does not examine the substantive requirements of novelty, inventive step and industrial applicability during the registration procedure. You can only obtain legally valid protection if these requirements are met.

Also consider: Out-of-court settlements are possible any time and often achieve the desired outcome faster.

How does this work in detail? (Conduct before a lawsuit, civil proceedings, criminal proceedings)

What to consider with regard to a possible lawsuit:

  • Conduct before a lawsuit

As holder of the right, you can first try to solve the problem in an amicable way by contacting the infringer directly, for example, by sending him a query concerning entitlement or a cease-and-desist letter

Important: If cease-and-desist letter is unjustified, the recipient of the cease-and-desist letter may, under certain circumstances, be entitled to claim compensation from the person issuing the cease-and-desist letter.

  • Infringement action

The regional courts have jurisdiction in civil proceedings for infringement. There you can, for example, assert a claim for cessation and desistance and/or compensation or a claim for the provision of information. You must appoint a lawyer to represent you before the regional courts.

  • Criminal proceedings

In addition, deliberate IP infringement is in principle punishable by law, but as a rule is only prosecuted upon request.

  • Injunction

Court proceedings may often be time-consuming. A simultaneous injunction offers provisional legal protection.

Important: If an injunction proves to be unjustified from the outset, the opponent can claim compensation from the person filing the request for injunction.

Case 2: You want to challenge the utility model of someone else because you believe that your rights are limited by it

After you have produced and sold this ballpoint pen for a few years, you discover through a search that one of the world-leading producers of ballpoint pens had obtained a registered utility model whose subject-matter is already protected by your earlier registered utility model.

How does this work in detail? (cancellation request)

In contrast to patent law, utility model law does not provide for opposition proceedings which involve a time limit. Therefore you only have the option of filing a request for cancellation (externer Link Sec. 15(1) Utility Model Act [Gebrauchsmustergesetz]) (in German) with the DPMA.

The request for cancellation may be filed for any utility model which is to be cancelled on German territory.
The request is subject to a fee and must be filed in writing together with a statement of reasons. The successful request for cancellation leads to the cancellation of the utility model. The owner of the IP right retroactively loses all legal positions previously based on the application. Frequent grounds for cancellation are lack of inventive step or lack of novelty.

Case 3: A cancellation request was filed with respect to your registered utility model

After you have produced and sold this ballpoint pen for a few years, a third party files a request for the cancellation of your utility model. However, you and your patent attorney are convinced that your utility model is legally valid. Therefore, you oppose the request for cancellation (externer Link Sec. 17(1) Utility Model Act) (in German). The request for cancellation ends with a decision by the Utility Model Unit of the DPMA which can be appealed (externer Link Sec. 18 Utility Model Act) (in German).

Please note: Cancellation proceedings are a kind of test for the utility model, because the utility model is registered by the Utility Model Unit of the DPMA without examination of the substantive requirements. It is only during possible cancellation proceedings that it is clarified whether the registered invention is in fact new and involves an inventive step.

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Last updated: 20 October 2020