Germany

• Pages: 269-292

269

Chapter VIII

GERMANY

A. Introduction

As a member state of the European Union, Germany has competition

rules based on national (German) and supranational (EU) law. The EU

competition rules are described in detail in the European Union chapter

above. Although all of what is discussed there is also relevant in

Germany, the parties to an IP transaction that might affect the territory of

Germany should always confirm that their EU analysis is also correct

and complete in light of the German rules and court decisions.

This chapter focuses on German law. German academic writing has

dealt extensively with the intersection of intellectual property rights

(IPRs) and competition rules.1 For example, the literature often points

out that there are a number of exceptions to the “monopoly” of the IPR

owner under German law outside the area of competition law, so that

potential intrusions on the basis of competition law do not put the

“monopoly” position of the IPR owner at risk because such “monopoly”

does not exist in the first place.2

1. See Ullrich Immenga, Die Anwendung der Wettbewerbsregeln auf die

Verwertung von Schutzrechten und sonst geschützten Kenntnissen,in 1

EU COMPETITION LAW pt. 2.B (Ullrich Immenga & Ernst-Joachim

Mestmäcker eds., 4th ed. 2007) for further references.

2. For example, the holder of a registered trademark may opt for not using

the trademark, but in doing so risks cancellation due to forfeiture. See

Markengesetz [MarkenG, Trademark Act], Oct. 25, 1994, BGB1. I § 49,

as amended July 31, 2009. Once a trademarked product is intentionally

commercialized by the trademark holder (or such act has occurred with

his consent), the right of the trademark holder is deemed to be

“exhausted.” See id. § 24. Copyright holders must allow citations to and

the reproduction of their work for private purposes. See

Urheberrechtsgesetz [UrhG, Copyright Act] Sept. 9, 1965, BGB1. I §§

51, 53, as amended Dec 12, 2008, BGB1.I at 2586. The holder of a

patent must tolerate use of the patent for private, noncommercial use or

clinical studies and may be forced to license that patent if the grant of

such license is mandated by public interest. See Patentgesetz [PatG

270 Antitrust Issues in International IP Licensing Transactions

However, in striking contrast to the EU competition rules, there are

very few court decisions in Germany that explicitly address the

intersection of IPRs and competition rules, although two recent decisions

by the German Federal Civil Court (Bundesgerichtshof, BGH) suggest

that the court is prepared to consider the effects of IPRs on competition

even where such effects prevail over the ownership interests of the IPR

holder.3

B. Sources and Basics of German Competition Law

German antitrust law is set forth in the 1958 Act against Restraints

on Competition (Gesetz gegen Wettbewerbsbeschränkungen, GWB).4

The GWB is enforced by the Federal Cartel Office (Bundeskartellamt,

BKartA)—established in 1958, the BKartA is one of the oldest

competition authorities in Europe5—and the German courts.

The GWB contains a prohibition on restrictive agreements

(Section 1), mirroring Article 101 of the Treaty On The Functioning Of

The European Union (TFEU), and a prohibition on the abuse of

dominant positions (Sections 19-20). Section 1 must always be

interpreted in light of the EU competition rules and decisions by the

Commission of the European Union (Commission), the Court of Justice

(ECJ) and the General Court (GC) of the European Union.6

Patents Act] Dec. 16, 1980, BGB1. §§ 11 no. 1-2, 24 (1) no. 2, as

amended July 31, 2009, BGB1.I at 2521.

3. Bundesgerichtshof [BGH] [Federal Court of Justice], July 13, 2004,

[Wirtschaft und Wettbewerb] 1329 (Standard-Spundfaß II); BGH, May 6,

2009, WuW/E DE-R 2613, (Orange Book).

4. Gesetz gegen Wettbewerbsbeschränkungen [GWB, Act Against

Restraints on Competition] July 27, 1957, BGB1.I at 108, as restated July

1, 2005, BGB1.I at 2114. Where this chapter refers to Sections without

citing a source, such reference is to the GWB.

5. For further details, see Peter Klocker, Fifty Years Of Anti-Cartel

Enforcement In Germany—Developing And Improving the System,in

CHANGES IN COMPETITION POLICY OVER THE LAST TWO DECADES 65

(Malgorzata KrasnodĊbska-Tomkiel ed., 2010).

6. See, e.g., memorandum of the Bundesrat (Second Legislative Chamber)

concerning the 7th GWB amendment of 2005. BTDrucks. 441/04 at 5.

The GWB is silent on the issue.