Rebuttal of urgency in summary proceedings before the courts of Hamburg

1. Preliminary remarks

The grant of a preliminary injunction requires not only a claim for injunctive relief on the merits (“Verfügungsanspruch”), but also a particular (procedural) need for this type of protective measure. This so-called reason for an injunction (“Verfügungsgrund”) requires an objectively justified risk that a change in the existing situation could frustrate or significantly impede the realization of the party's right. The reason for an injunction is usually described with the term "urgency" (“Dringlichkeit”). The courts decide on this ex officio and the applicant must conclusively demonstrate and substantiate its actual requirements, unless special legal regulations make such a submission omittable in exceptional cases. The latter applies to claims for injunctive relief in unfair competition and trademark law pursuant to Section 12 (1) UWG and Section 140 (3) MarkenG respectively. Both provisions take into account typical reasons for endangering claims, but are limited to a rebuttable legal presumption of urgency.

This presumption may be rebutted, in particular, if the applicant's conduct indicates that the matter is not so urgent for him or her. The most common case is waiting too long with an application for the preliminary injunction after becoming aware of all the circumstances relevant to the enforcement of the claim. Which "urgency period" applies and what other conduct can rebut the presumption of urgency is not uniformly assessed by German courts. In preliminary injunction proceedings, there is no right of appeal to the Federal Court of Justice. Accordingly, there are no directly binding supreme court principles. Rather, it is the case law of the respective higher regional courts that is decisive, and such case law can differ substantially, particularly with regard to the urgency period, but also with regard to other aspects.

2. Case law of the Hanseatic Higher Regional Court (of Hamburg)

While the Berlin and Bavarian courts, for example, apply rigid time limits in the interests of legal certainty, the Hamburg courts, which are often called upon to hear "soft IP" disputes, traditionally interpret the question of urgency by way of an evaluative overall assessment. Recently, the 5th Civil Senate of the Hanseatic Higher Regional Court has published a number of decisions from which the following key principles on the self-rebuttal of the presumption of urgency can be derived.

a. Principle of an overall assessment

Considering a potential self-rebuttal through hesitant conduct, it is still not a matter of rigid time limits, but rather requires an overall assessment of the pretrial and trial conduct (HansOLG, order of 24 November 2023, 5 W 23/23 – VW im Kreis; HansOLG, order of March 15, 2024, 5 U 91/23 – Yummy).

b. "Urgency period"

Compliance with a pre-trial "urgency period" of six weeks from knowledge of all relevant circumstances is normally considered to be sufficient to preserve urgency. However, public holidays do not extend this period (HansOLG, judgment of 2 May 2024, 5 U 106/22 – Kibek).

c. Knowledge

The urgency period is set in motion by knowledge of all circumstances relevant to the enforcement of the claim. In this respect, only the knowledge of persons is relevant who are responsible on the applicant’s side for investigating and/or asserting claims for infringement of the type in question. External third parties are only relevant if they have been expressly appointed as knowledge representatives. Any organizational fault is irrelevant (HansOLG, judgment of 12 June 2024, 5 U 106/23 – VW im Kreis II). And there is no duty to monitor the market (HansOLG, judgment of 29 February 2024, 5 U 68/23 – Zaubermix).

d. Burden of substantiation and credible demonstration 

As a rule, the defendant must not only substantiate the beginning of the (alleged) infringing conduct, but also such facts and, if necessary, make them credible, from which at least sufficiently concrete indications of a "prior knowledge" of the applicant that is detrimental to urgency arise (HansOLG, judgment of 29 February 2024, 5 U 68/23 – Zaubermix; HansOLG, judgment of May 2, 2024, 5 U 106/22 – Kibek). The applicant then faces a (secondary) burden of substantiation. He must substantiate and credibly demonstrate when he actually became aware of the circumstances relevant to the enforcement of the claim. However, indications of a “prior knowledge” may also result from the applicant's amended submissions in the course of the proceedings (HansOLG, judgment of 2 May 2024, 5 U 106/22 – Kibek).

e. Previous inactivity

The presumption of urgency can be rebutted if the applicant challenges an infringing act that is at least equal in essence to an earlier act that the applicant did not challenge at the time (despite being aware of it) by way of summary proceedings. In the specific case, the Senate affirmed an equality in essence to the subject matter of an already pending regular action and thus denied urgency. The types of infringing use listed in Section 14(3) MarkenG are equal in essence under trademark law, including in the case in dispute the use of the deposited sign in relation to the rental of luminaires, which is already the subject of the action, on the one hand, and in the sale of luminaires, which is the subject of the application for a preliminary injunction, on the other (HansOLG, order of 12 August 2024, 5 W 21/24 – Deutsche Lichtmiete).

f. Settlement efforts

Pre-trial settlement efforts do not rebut the presumption of urgency per se. However, they must be pursued by the applicant with particular urgency and conducted with particular rigor. In the specific case, in which the period from (presumed) first knowledge to the filing of the application due to settlement efforts was eight to ten weeks, the Senate considered it to be detrimental to urgency that the applicant had largely exhausted a deadline of two weeks set by the defendant for responding a settlement offer and had not filed the application for an interim injunction immediately after the fruitless expiry of a deadline set for 23 December, but only two and a half weeks later due to the holidays (HansOLG, judgment of 2 May 2024, 5 U 106/22 – Kibek).

g. Emergence of new urgency

In principle, it is possible for urgency to be revived or, more precisely, to arise anew. However, this requires a significant change in circumstances leading to a completely new infringement situation. A new infringement situation can arise, for example, in trademark law through the extension of the use of the disputed sign to other, different types of products or to a sign that comes much closer to the protected mark. However, no new urgency arises in the case of acts that are equal in essence (HansOLG, order of 12 August 2024, 5 W 21/24 – Deutsche Lichtmiete).

3. Bottom line

If you want to stop an infringement of your rights or a breach of unfair competition law as quickly as possible, i.e. usually within days, by means of a preliminary injunction, the statutory presumption of urgency in competition and trademark law makes it easier to enforce your claim.

However, any well-advised opposing party will look for evidence to rebut the presumption of urgency and, if necessary, present it. The above key principles must therefore be observed. The outline, which is by no means exhaustive, shows the pitfalls lurking here. The principles apply directly in Hamburg and in a similar way in some other court districts. In other districts, however, the practice may differ fundamentally. We continuously monitor the case law of all German courts on the urgency requirement and are familiar with the principles and differences.

Please contact us if you wish to obtain a preliminary injunction in order to enforce your rights or to prevent unfair competition or if you need to defend yourself against a (threatened) preliminary injunction.