According to the Nuremberg Higher Regional Court, the presumption of urgency under Section 12 (1) of the Unfair Competition Act (UWG) is not applicable by analogy under the German Act on the Protection of Trade Secrets (GeschGehG). However, the court held that this issue is of no great significance because urgency is inherent in the protection of confidentiality. At the same time, the decision contains a warning to attorneys who seek to extend deadlines by citing their “workload” …
Background of the decision
The plaintiff seeking an injunction filed a claim for injunctive relief before the Regional Court of Nuremberg-Fürth regarding the (alleged) infringement of trade secrets by way of a preliminary injunction. The factual background can only be partially inferred from the available information: The (alleged) trade secret apparently concerns specific information regarding thermal insulation, moisture protection, and heat protection of a prefabricated facade, contained in a total of 2,947 files. The Regional Court dismissed the application in its judgment of March 21, 2023. In doing so, the court found, among other things, that the existence of a trade secret had not been credibly established. On appeal, the plaintiff’s legal representative filed a motion on May 15, 2023, requesting an extension of the deadline, explaining
Due to numerous out-of-office appointments of the undersigned – who is the sole attorney handling the matter – the undersigned has become overburdened with work. Consequently, a meeting with the client, which is necessary for the preparation of a proper statement of grounds for appeal, has not yet been able to take place within the deadline.
On the last day of the extended deadline, the plaintiff’s legal representative filed the grounds for appeal. The Nuremberg Higher Regional Court does not find this course of action particularly convincing. But first things first:
No presumption of urgency for Section 6 GeschGehG…
In the opinion of the Nuremberg Higher Regional Court, an analogous application of the presumption of urgency under Section 12 (1) of the Unfair Competition Act (UWG) to injunctive relief claims under Section 6 GeschGehG is out of the question. There is no apparent unintended gap in the law, as legislature expressly assumed that the general procedural provisions would apply. Furthermore, shortly after the enactment of the GeschGehG, the legislature established a special provision regarding urgency in trademark law (Section 140(3) of the German Trademark Act (Marken)). It follows from this that the legislature deliberately chose to refrain from including specific provisions in the GeschGehG (see also, similarly, OLG Munich, GRUR-RR 2019, 443, para. 14 – Medical Professionals).
… but inherent urgency
Ultimately, according to the Senate, a presumption of urgency is also not required. In the balancing of interests required for the issuance of an injunction, the owner’s interest in confidentiality generally prevails. For, according to the Higher Regional Court, “a trade secret is, in principle, protected above all by not being made accessible to third parties, because otherwise it loses its character as a secret.”
Against this backdrop, the granting of an injunction is the natural consequence of an actual infringement. Overall, urgency is inherent in the protection of trade secrets (Higher Regional Court of Nuremberg, advisory decision of July 6, 2023, 3 U 889/23).
In our view, this is a convincing assessment. The ruling should be understood to mean that an opposing party can save itself the trouble of providing lengthy arguments regarding urgency. It is, after all – far more so than in typical unfair competition or trademark cases – obvious.
No extension of the deadline, not even in cases of “work overload”
Nevertheless, the attorney for the plaintiff commits a classic mistake: he requests an extension of the deadline for filing the grounds for appeal. The appellate court (naturally) interprets this as an indication that the party “is not in such a hurry,” i.e., as a self-contradiction regarding the urgency. Nor does it help the plaintiff in the preliminary injunction proceedings that his attorney pointed to his own heavy workload. This delay is attributable to the party pursuant to Section 85 (2) of the German Code of Civil Procedure (ZPO). According to the Nuremberg Higher Regional Court, an attorney “must handle preliminary injunction matters as a priority and, as a general rule, may not invoke either his own heavy professional workload or vacation time.” The order in which the Senate subsequently dismisses the appeal—as announced in the preliminary notice -contains further explanations (Nuremberg Higher Regional Court, Order of July 21, 2023 – 3 U 889/23, here).
What else could it be? This is certainly not a unique feature of the GeschGehG but applies throughout the “green sector” and also in general civil law – as the Nuremberg Higher Regional Court explicitly notes in its decision to the overworked colleague there. Nor is this a Bavarian peculiarity, as a quick glance at the databases shows (see KG, Order of May 11, 2021 – 8 U 1153/20: Self-contradiction of urgency through extension of the deadline for filing the grounds for appeal).
It’s really simple: Exhausting the deadline: yes; extension: no. Interestingly, the Nuremberg Higher Regional Court had commented in detail on the generally uncontroversial admissibility of exhausting the deadline for filing the grounds for appeal in another recent decision. In a competition law proceeding concerning a violation of Section 7(2) no. 2 UWG (unsolicited telephone call), the respondent had argued that the plaintiff’s full utilization of the deadline for filing the grounds for appeal (not the extension!) undermined the urgency of the case. The Senate stated:
The law grants appellants the right to exhaust the time limit for filing the grounds for appeal; with regard to the length of these time limits, the law – which may be subject to criticism from a legal policy perspective – does not distinguish between main proceedings and expedited proceedings.
The legislature thereby indicates that it considers the total period of two months to be both sufficient and necessary to substantiate the appeal in the required manner, which indirectly also affects the question of whether this undermines the urgency of the matter. As long as the party merely adheres to the time limits granted to it by law, no conclusions may generally be drawn – even for reasons of legal certainty – from the related (permissible) procedural conduct regarding the urgency with which the party seeks to achieve its goal in the context of preliminary injunctive relief.
Nuremberg Higher Regional Court, Final Decision of Oct. 24, 2023 – 3 U 965/23 (here)
Conclusion: Inherent urgency, no extension of the deadline, thorough preparation
All in all, several clear messages from Nuremberg: In practice, there is no problem proving urgency for an injunction in cases of trade secret infringement, because urgency is inherent in trade secret protection. However, one must not procrastinate – in particular, one must not file a motion to extend the deadline for filing the grounds for appeal.
Finally, the order dismissing the appeal suggests that the application was not optimally prepared from the outset. Otherwise, the plaintiff seeking the injunction would likely not have had to extensively point out that he had to review and comment on 2,947 files for the appeal in order to justify the deadline extension. Meticulous preparation is essential, particularly in preliminary injunction proceedings under the GeschGehG – not least to secure the confidentiality order that must typically be requested – and the review of the 2,947 files could have, or even should have, been completed before filing the petition (if it was truly necessary at all). If the application for an injunction fails because the applicant cannot credibly demonstrate the existence of a trade secret, then something may have gone seriously wrong in the preliminary stages. Without thorough preparation and advice from experienced and specialized attorneys, even the court cannot help.