Data dive: where European trademark litigation is hot – and why

Managing IP has analysed five years of data from five European countries to provide a clear picture of the trademark litigation landscape in the region, including the top 10 courts overall.

Using exclusive statistics from the Darts-IP database (which is part of Clarivate), we have dug into trademark case filings in the UK, Germany, Italy, France and the Netherlands from 2015 to 2019. Nearly 7,000 disputes were filed in that time period, with the UK and Germany leading the pack.

As COVID-19 disrupted court cases last year, we decided that data from 2020 (which is still not available in full) would only muddy the waters in our analysis. For that reason, we have not included any numbers from last year, though we will report on them separately when we have them.

In the below analysis, we have provided a country-by-country overview of litigation in Europe, asking why it has gone up or down, showing which courts have dominated and why, and much more. We have also displayed the full data at the end of the article so you can see everything in one place. 

But first, here are the top 10 courts for trademark cases filed in 2019:

Position	Court	Country
1	Milan IP Court	Italy
2	Paris High Court	France
3	Hamburg Regional Court	Germany
4	England and Wales High Court	UK
5	Rome IP Court	Italy
6	Venice IP Court	Italy
7	Munich Regional Court	Germany
8	IP Enterprise Court	UK
9	Court of The Hague	Netherlands
10	Turin IP Court	Italy

And here are the overall case trends for 2015 to 2019:

Now, here is the country-by-country guide, followed by the full data. 

In 2018, the Intellectual Property Enterprise Court was the fourth most popular venue across each of the five countries we have analysed (see courts table above). However, a year later it had slipped to eighth place.

The IPEC, a division of the High Court known as the Patents County Court until 2013, has been popular with smaller businesses and tends to hear IP disputes of a lower value.

Parties benefit from a designated judge (His Honour Judge Hacon) and the security of a £50,000 ($69,000) costs cap.

However, one source speculates that there has been a tendency recently for IPEC judgments to be successfully appealed when challenged – making it a potentially less favourable option.

They point to a recent copyright decision as an example of the unpredictability of litigating at the IPEC.

In January this year, the court was asked to hand down a judgment for the second time in a case concerning authorship for the screenplay of the flim Florence Foster Jenkins. That case was first ruled on by the IPEC in 2017. Two years later, the Court of Appeal ordered a retrial under a different judge.

In contrast to the IPEC, the main patents division in the England and Wales High Court has been increasingly popular in the last two years.

In 2018, the High Court’s IP division moved from being outside the top 10 to fifth – one below the IPEC. In 2019, it climbed to fourth place while the IPEC slipped to eighth.

John Linneker, partner at Fieldfisher in London, says another factor that could be swaying litigants away from the IPEC is the permanent introduction of the shorter trials scheme (STS) in the main High Court.

The STS was piloted in 2015 and became a permanent option for High Court litigation in 2018.

Under the STS, a trial is usually held within 12 months of a first claim, must take place no more than eight months after a case management hearing, and must be limited to four days.

The schedule of costs is exchanged within 21 days of a trial and then assessed summarily. In standard litigation, the costs process can be very arduous, Linneker says.

Linneker explains that he often offers the STS option to clients – and it has proved popular. He says the scheme acts like a “mini High Court trial” but without the associated high costs or lengthy waiting time.

He adds that it can offer a quicker and more cost-effective means of litigating IP cases, particularly those concerning trademarks, which tend to be less complex than patent cases. It can be an enticing option when the costs caps imposed by the IPEC are not desirable, he says.

Much like in the other four nations we analysed, cases have fluctuated in the UK and are slightly down – though only marginally – on where they were in 2015 (see UK table below).

Jeremy Blum, partner at Bristows in London, says increased proactivity from e-commerce sites may have contributed to a slight decline in the number of cases citing online trademark infringements.

“Some of the major platforms have taken more steps in recent years to clamp down on counterfeiters and are working with rights owners more than they were a few years ago,” he says.

He adds that overall, the UK has a reputation for providing good and reliable judgments, and that this confidence in the UK court’s system is broadly shown in the number of cases across the five years.

However, sources note that the impact of Brexit – and whether the UK remains a popular forum for foreign companies – remains to be seen.

Year	Number of UK cases
2015	354
2016	387
2017	316
2018	373
2019	334
Total	1,764

Despite what appears to be a steep (48%) decrease in filings (see Germany table below), the picture is not so bleak.

Darts-IP told Managing IP that cases with very early settlements or no procedural events (such as a first court hearing) may be missing, which is particularly true for Germany given that filing information is not publicly available and therefore cannot be systematically collected. 

However, one judge told Managing IP that there are usually no settlements before the first hearing in trademark cases – instead, they tend to happen afterwards.

Nevertheless, there probably has been a decrease in cases since 2015, even if that fall is not as dramatic as the data suggests.

Karin Sandberg, partner at Harmsen Utescher in Hamburg, says it’s clear that trademark litigation has dropped, at least as far as interlocutory injunction proceedings are concerned.

The reason, she says, is a 2018 decision of the Federal Constitutional Court (FCC) that, despite centring on media law, also applies to IP. The court ruled that injunctions granted without prior warning or an oral hearing infringed the defendant’s right to be heard and equality of arms.

Since then, rights owners have mostly had to send a warning letter first and also ensure that the proposed injunction scope does not exceed the contents of the letter.

“This ruling clearly made attorneys more hesitant to file requests for an interlocutory injunction for their clients,” says Sandberg.

“In previous times, it was not uncommon to first ask for an ex parte injunction, get the injunction and only then send a warning letter to the counterparty.

“Often, the counterparty never even learned about the injunction. But we knew where we stood, which was a nice ‘back-up’ in the course of negotiations,” she adds.

However, she says that this strategic way of handling things has been taken away. “I am not saying that this is a bad thing. But it is clearly a reason why fewer interlocutory injunctions are requested.”

Another change following the FCC decision is the requirement that declarations given by judges over the phone need to be noted in the file and notified to the counterparty (so that the defendant can file a statement if it wants to), Sandberg notes.

“Previously, it was quite normal to speak with the judges over the phone in order to make final clarifications, for example. Now, such phone calls have become very rare. It really has changed.”

These issues mainly relate to a fall in interlocutory injunction proceedings, she notes, and she considers why the number of main proceedings has also dropped.

One reason could be a fear of “social media bashing” – usually where a big company is accused of unfairly enforcing against a smaller competitor – and Sandberg confirms that a lot of her clients prefer to avoid court proceedings and instead try to settle things amicably.

Kai Schmidt-Hern, partner at Lubberger Lehment in Berlin, says his practice has not seena decrease in the readiness of clients to go to court. However, he adds that there may be a few reasons for an overall fall in filings – if there has been one.

For one, plaintiffs are concerned about how long proceedings last in the second instance in trademark litigation hotpots like Hamburg and Munich, and that may be an incentive not to go to court in the first place, he says.

Despite this, the data shows that Hamburg and Munich are still the top German forums for trademark litigation (see courts table above), placing third and seventh in the overall list of EU courts. Sandberg says it’s not surprising to see them there: “It’s been that way for many years. We have absolutely excellent judges.”

Although there is some dispute over the precise numbers, Germany is still a key forum for trademark litigation – the Darts-IP data shows that the country is second only to the UK for filings from 2015 to 2019 (see graph above).

Schmidt-Hern says one of the strengths of the German system is the preliminary injunction, which can be obtained fairly quickly and easily, and at a low price.

He also notes that remote litigation has become more common since the pandemic.

“I had one hearing before a second-instance court and I thought it went pretty well, but I prefer in-person hearings. In remote hearings, the barrier for a judge to take some easy way out of the case is lower as you are not face to face.”

As the pandemic begins to subside (we hope), his wish may well be granted.

Year	Number of Germany cases
2015	406
2016	411
2017	285
2018	264
2019	211
Total	1,577

According to the figures (see France table below), trademark cases are declining significantly. “What on earth is happening in France? It seems to be on some kind of death spiral,” says one source, analysing the data.

Since 2015, trademark litigation cases have dropped by 64%. There has also been a notable decrease year on year: a 20% drop from 2015 to 2016, a 29% decrease from 2016 to 2017, and a 33% fall from 2017 to 2018.

The decline has eased more recently – between 2018 and 2019 (the most recent year for which data is available), cases fell by just 4%.

Speaking to Managing IP, French lawyers say they are surprised by the rate of decline, but note that French courts have recently become aware that brand owners are not as keen on litigating there as in other jurisdictions, and are trying to attract litigants again.

Vanessa Bouchara, partner at Cabinet Bouchara in Paris, notes that French courts have historically had a reputation for being slow. Judges, she says, tend to be more thorough in their requirements, including in the gathering of evidence.

Céline Bey, partner at Gowling WLG in Paris, agrees. In trademark cases in particular, the burden on brand owners is high, she notes.

Under French law, a saisie-contrefaçon (counterfeit seizure) order permits IP owners to call upon a bailiff (or alternatively a police commissioner) to record a suspected infringement, seize the suspected infringing products or visit the alleged infringer’s premises to collect evidence such as pictures or samples – only after receiving the authorisation of a judge.

Bey notes that although France likes to see itself as a jurisdiction that is friendly to IP owners, the procedural rules for obtaining such an order, and the evidence required after it is granted – including obtaining bailiff reports and proof of infringement – can be can be very long-winded.

The hurdles to jump through before trial could see IP owners turn elsewhere to litigate, sources speculate.

Damages is another key factor, sources note.

Bouchara says French courts have also had a reputation for not awarding what victorious parties would consider sufficient costs or damages, and “for not being fully forthcoming on their reasoning”.

She notes that courts take different approaches, which can be problematic for choosing where to file a claim.

However, Bey says that this is beginning to change. “French courts knew they were losing popularity so have recalculated damages and costs payable.”

The 2004 EU Enforcement Directive, implemented in France in 2007, has helped drive some change.

Since the implementation, French courts must consider the negative impact of an infringement – not only relating to lost profit, but also to the infringer’s profit.

However, sources note that it was not until the Court of Justice of the EU’s 2016 ruling in United Video Properties v Telenet that many EU nations became more certain of how best to interpret damages.

In a patent case centring on the interpretation of the directive, the court found that a flat fee compensation for the prevailing party’s legal costs could be compliant with the directive but that the fee should cover a “significant and appropriate” part of the costs incurred by the winning party.

Despite the decline in overall case numbers, there are signs that France remains a popular forum. In four of the last five years, the High Court of Paris was the most popular court for trademark cases.

Bey at Gowling WLG says the Paris court is the most competent in France for IP cases, with nine judges who only hear IP matters, and three IP chambers.

It is also not difficult to get a case heard in Paris, even if neither party has a connection to the city, she notes. Merely instructing a Paris-based bailiff for investigations can be sufficient.

Other French courts that hear IP cases, including Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Rennes, Strasbourg and Fort-de-France, are not as popular, Bey notes.

Year	Number of France cases
2015	510
2016	404
2017	286
2018	189
2019	181
Total	1,570

Italy has experienced a steady rise in filings since 2015, with 2018 the only year in which cases dipped slightly from the previous 12 months (see Italy table below). It was also home to four of the top 10 courts across Europe in 2019 – the biggest share of any of the five countries we analysed.

In some ways the numbers may not be too surprising given Italy’s reputation for high-end fashion and other trademark-heavy industries such as automotive, but it’s the steady increase that’s particularly encouraging for a jurisdiction long dogged by claims of slowness.

Carmen Castellano, partner at Acuminis in Milan, says she was not surprised at the data because there is an increasing trust in Italy’s IP courts. “We are getting better than 10 or 15 years ago; IP trials have become better and better.”

Commenting on Milan’s top spot in 2019 across Europe (see courts table above) and its premier position in Italy in every year assessed, Castellano says the court there has been fast and its decisions “predictable and straight to the point”. Most IP law firms have their main office in Milan, followed by Rome, she notes.

Federico Fusco, counsel at Hogan Lovells in Milan, adds that the data trends around the Italian courts are particularly interesting. Although Milan has long dominated, Venice has slowly climbed the overall rankings – from joint tenth in 2017 to sixth in 2019.

“As expected, courts like Venice are hearing more and more cases in the last few years. That is down to a couple of reasons: in the Veneto region, there are a number of companies operating in different industries; and it’s a rich area of Italy,” he says.

Venice is also one of 11 specialised courts that has venue to hear cases with a foreign party, as is Turin, which took tenth spot on the 2019 list after missing out in 2018. Rome, traditionally more of a copyright forum, came in fifth in 2019, up one place from the previous year.

Reflecting on 2020, Castellano says she expects the numbers to have fallen because of COVID-19.

“It was very difficult to go to enforce seizures against infringing products. First of all, shops are closed. If you go after the traditional infringers, it’s very likely that you can’t enforce.

“Some businesses were also concerned with spending reviews, and the courts were shut for some months,” she adds.

Having said that, she notes that trials have gone virtual, and she expects this trend to continue throughout 2021. After then, however, she predicts that lawyers will want to go back to court, to meet the other party, the judge and the client. “Honestly, home working is strenuous.”

Fusco adds that virtual litigation in Italy has worked well:“Since July we have had regular virtual hearings with different courts. At present, we are not experiencing any problems or disruption. Some cases are going faster this way, as apparently judges can organise their work better and all parties have to be on time for a hearing, so there is no waste of time. It’s all very organised.”

Even if the 2020 numbers are lower, as expected, they seemingly won’t detract from what appears to be a good – and much-improved – place to litigate.

Year	Number of Italy cases
2015	293
2016	297
2017	320
2018	286
2019	306
Total	1,502

While the Netherlands has handled significantly fewer cases than its counterparts over each of the last five years (see graph above), lawyers believe the figures still demonstrate that the country is an attractive place to litigate.

“If comparing these countries, we have to factor in population size,” says Willem Leppink, partner at Ploum in Rotterdam.

The Netherlands, he notes, has a far smaller population (17 million) than Germany (83 million), France (67 million), the UK (66 million),and Italy (60 million).

“If you look at it in those terms, I think it would show you that the Netherlands is doing pretty well,” he argues.

After fluctuating between 2015 and 2017, case numbers have been steadily dipping since then (see Netherlands table below) – mostly likely because of changes to EU law.

Manon Rieger-Jansen, partner at Bird & Bird in Amsterdam, notes that trademark cancellation and opposition proceedings can now be completed in an IP office action.

Before 2018, these types of actions had to be carried out in court. But this changed under the 2015 EU Trademark Regulation, which the Netherlands implemented into national law in 2017.

“These actions can also be carried out by an attorney at a much lower cost,” Rieger-Jansen adds.

Looking at the legislative picture across Europe, Rieger-Jansen says many of the major questions surrounding trademark law have been confirmed in interpretations by the Court of Justice of the EU (CJEU), and that national courts are now seeing more disputes related to designs and copyright.

She notes too that some of the major trademark cases heard in the Netherlands and the Benelux region have been settled in the last few years.

These include a case surrounding sales of the Russian vodka brand Stolichnaya in the Benelux region, Dutch company Sporttrading Holland’s battle with shoemaker Converse, and two cases involving Capri Sun.

In those disputes, the drinks maker accused Dutch companies Van Doorne Beverages and Riha Wesergold of infringing a 3D trademark covering the shape of its drinks pouches.

“These cases all had various arms to them,” Rieger-Jansen explains.

Leppink at Ploum notes that one of the after-effects of the 2004 Enforcement Directive, which has had an impact both in the Netherlands and across the EU, has been that parties are more inclined to settle rather than risk costs spiral out of control.

He notes thatUnited Video Properties v Telenet, a 2016 case at the CJEU,may have also prompted changes to litigation strategies. In that case, the court found that a prevailing party’s legal costs should cover a “significant and appropriate” part of the costs incurred by the winning party.

Before then, EU countries, including the Netherlands, had not been properly adhering to the Enforcement Directive by ensuring that the winning party could recover full reasonable costs from the losing party.  

“Whether you are able to recover legal fees you incur, and whether you run the risk that you have to pay the other side if you lose, has a huge impact on your strategy to litigate about damages and infringement in general,” he adds.

Leppink at Ploum notes that most European countries have only one or two competent courts for dealing with EU trademark cases. In the Netherlands, all cases related to EU trademarks will go to the Court of The Hague.

Rieger-Jansen adds that some cases, including all appeals from actions at the Benelux IP Office, are now heard in the Benelux Court of Justice, which may also be taking cases away from The Hague.

She adds too that many IP owners tend to sue in their home country. In the trademark world, this would explain the popularity of venues such as Italy, which is home to several major brand owners, she notes. 

Year	Number of Netherlands cases
2015	112
2016	93
2017	109
2018	99
2019	83
Total	496

Country	Year	Number of cases
France	2015	510
	2016	404
	2017	286
	2018	189
	2019	181
	Total	1,570
Germany	2015	406
	2016	411
	2017	285
	2018	264
	2019	211
	Total	1,577
Italy	2015	293
	2016	297
	2017	320
	2018	286
	2019	306
	Total	1,502
Netherlands	2015	112
	2016	93
	2017	109
	2018	99
	2019	83
	Total	496
United Kingdom	2015	354
	2016	387
	2017	316
	2018	373
	2019	334
	Total	1,764
Grand total		6,909