Litigating intellectual property: should you opt for summary proceedings or proceedings on the merits?

When a conflict over intellectual property rights, such as copyrights on software or trademark rights on your company logo, threatens to get out of hand, legal proceedings may be necessary to protect your interests. If you are faced with the choice of actually going to court, you will soon be faced with two options: summary proceedings or proceedings on the merits. In this article, I will explain the difference between these proceedings and what costs and timeframes you can expect.

What are summary proceedings?

Summary proceedings are proceedings used in urgent disputes concerning intellectual property rights. These proceedings are particularly suitable if you want to take immediate action against an infringement of your IP rights and prevent further damage.

Once summary proceedings have been initiated, the aim is to set a hearing date within six weeks. During this hearing, the judge – also known as the preliminary relief judge – will hear the case. The ruling usually follows within two weeks of the hearing. The preliminary relief judge can only impose a temporary measure, such as a ban on the use of a trademark, the cessation of sales of counterfeit products or the removal of infringing content.

It is important to realise that the ruling in summary proceedings is always provisional and only applies until a final decision is made in any proceedings on the merits. The judge in summary proceedings does not make a final assessment of whether there has actually been an infringement, but considers whether it is plausible that a temporary measure is necessary. There is no room for an extensive and in-depth investigation in these proceedings, nor can damages be awarded. For a binding ruling and possible damages, you must initiate proceedings on the merits after the preliminary relief proceedings.

In addition, for summary proceedings, you must have an urgent interest in the requested measure. This means that you cannot wait for the outcome of lengthy proceedings on the merits. An urgent interest usually exists when the infringement of your intellectual property rights is ongoing and immediate action is necessary.

What are proceedings on the merits?

Proceedings on the merits are regular legal proceedings in which the court gives a final ruling on the dispute. These proceedings are particularly suitable when you need a lasting solution and there is no urgency. Unlike summary proceedings, you do not need to demonstrate an urgent interest in order to initiate proceedings on the merits.

Proceedings on the merits are often initiated after summary proceedings have been concluded, or when the other party has ceased the infringement after your summons—for example, by removing the infringing products from the internet under protest. You can then still opt for proceedings on the merits if you fear that the products will reappear online at a later date, or if you wish to claim damages for the period during which the products were online.

An important difference with summary proceedings is that in proceedings on the merits, there is ample opportunity to present and assess all arguments and evidence in detail. For example, parties are given longer deadlines for submitting their pleadings and can call witnesses. Please note that these proceedings therefore take longer than summary proceedings. Depending on the complexity of the case and the availability of the court, the processing time can vary from a few months to even several years.

What does summary proceedings or proceedings on the merits cost?

The costs of legal proceedings concerning intellectual property rights can vary greatly. For summary proceedings, you can generally expect to pay between €6,000 and €25,000 excluding VAT. This includes solicitor’s fees, court fees and any bailiff’s fees. Proceedings on the merits are considerably more expensive; the costs are usually between €8,000 and €40,000 excluding VAT. Please note that these indications do not apply to proceedings concerning patents; the amounts for such proceedings are usually higher.

It is important to realise that these amounts are only indications. The final costs depend mainly on the complexity of the case. Factors that influence the costs include the number and scope of the exhibits, the filing of a counterclaim by the other party, the engagement of experts and the taking of additional measures, such as the seizure of goods or bank accounts. If you or the other party decide to appeal after a ruling, the costs will increase even further.

Legal costs regime for IP rights

A special legal costs regime applies to disputes concerning intellectual property rights. Unlike in other civil proceedings, the losing party in IP cases may be required to reimburse part of the actual legal costs incurred by the winning party. The court ultimately determines what amount is reasonable to award. This can significantly increase the financial risks of litigation, both for claimants and defendants. Suppose you incur €10,000 in costs for the proceedings and you lose the case, then you run the risk of having to pay the other party’s legal costs on top of your own costs, which can also amount to, for example, €10,000.

It is therefore important to obtain detailed information in advance about the possible costs and risks of litigation. A specialised IP lawyer can work with you to assess what to expect in your situation and which strategy best suits your interests.