Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

Intellectual Property

Bulgaria Small Flag Bulgaria

No. Alternative dispute resolution mechanism such as arbitration or mediation are only optional.

Malaysia Small Flag Malaysia

There is no mandatory system in relation to non-court enforcement options or dispute resolution mechanisms to be elected for intellectual property disputes.

Belgium Small Flag Belgium

Except in the case of ex parte proceedings which have an inherent surprise effect, a claimant is expected to send a cease and desist letter meant to resolve the dispute amicably prior to initiating court proceedings. Although such attempt to resolve disputes amicably is mandatory, in practice it shows to be impracticable and courts spent little to no attention to it.

Courts may suggest to the parties to initiate a conciliation or mediation proceeding. However, knowing that the success of such proceeding depends upon parties’ cooperation and ultimate consent to an agreement, it is rarely suggested.

Courts will decline jurisdiction if parties have entered into a valid arbitration agreement to resolve a contractual dispute. Ultimately, the court will reappear in the process as an arbitral award will require exequatur. All requests for exequatur are handled by the court of first instance of Brussels.

Singapore Small Flag Singapore

There are no mandatory options or mechanisms.

France Small Flag France

Pursuant to the CPC article 56, unless otherwise justified by the urgency or the issue at stake, the claimant must specify in the writ of summons the actions undertaken to amicably resolve the dispute.

In the absence of any attempt to reach an amicable solution, the judge may suggest to the parties to initiate a conciliation or mediation procedure.

Portugal Small Flag Portugal

R: Yes, in what regards to reference medicines/generic medicines IP rights disputes, it is mandatory that the first stage of litigation takes place in mandatory arbitration proceedings.

India Small Flag India

There are no mandatory non-court enforcement or dispute resolution mechanisms mandatory in respect of intellectual property disputes, unless the contractual relationship between the parties mandates any specific form of non-court dispute mechanism.

Greece Small Flag Greece

No. For voluntary non-court enforcement options please refer to Q. 17 above.

Japan Small Flag Japan

No.

Mexico Small Flag Mexico

No mandatory mechanism of such nature is available in Mexico. All of them are only optional for the parties.

China Small Flag China

Administrative enforcement is available as explained at question 17 above.

United Kingdom Small Flag United Kingdom

In the UK, the Civil Procedure Rules, require litigants to engage in the "Pre-Action Protocol". Under this protocol, the Claimant should provide details of the claim and the basis on which it is made, the facts of the case and details of what the Claimant is seeking, and the Defendant should confirm whether the claim is accepted and, if not, why not.

The purpose of this pre-action engagement is for the parties to exchange information to enable them to understand each other's position, make decisions about how to proceed and try to resolve the issue without having to commence proceedings. As part of this, the parties should also consider Alternative Dispute Resolution.

If a Claimant does not comply with the Pre-Action Protocol, it must inform the court that it has not done so and the Defendant may have additional time to file its Defence. There may also be cost consequences for the Claimant at the end of the case, when the court determines responsibility for legal costs.

South Africa Small Flag South Africa

Patents and Designs
Alternative dispute resolution or arbitration may be used but is not mandatory.

Plant Breeders’ Rights
Alternative dispute resolution or arbitration may be used but is not mandatory.

Trade Marks and Copyright
Alternative dispute resolution or arbitration may be used but is not mandatory.

UAE Small Flag UAE

Administrative enforcement actions are available as outlined above.

All disputes between employers and employees must first be referred to the Ministry of Labour for settlement.

Philippines Small Flag Philippines

Under the Rules of Procedure for IPO Mediation Proceedings, mediation is mandatory for the following administrative cases:

(a) Administrative complaints for violation of Intellectual Property Rights and/or Unfair Competition;
(b) Inter Partes cases;
(c) Disputes involving technology transfer payments;
(d) Disputes relating to the terms of a license involving the author's rights to public performance or other communication of his work;
(e) Cases appealed to the Office of the Director General from decisions of the BLA and the DITTB; and
(f) All other cases which may be referred to mediation during the settlement period declared by the Director General.

Mediation is done before the IPO Mediation Office.

Note however that cases with pending application for Temporary Restraining Order/ Preliminary Injunction, attachment or other ancillary remedies shall not be referred to mediation unless the parties, in joint written motion, pray that the case be made to undergo mediation.

Under the Rules of Procedure on Intellectual Property Rights Enforcement , the IPO has enforcement actions and visitorial power based on information, report and complaint received by the IPO. An IPR Enforcement Office is created under these Rules whose functions include the issuance of visitorial orders, compliance orders and mission orders, the filing of formal charges before the appropriate government agencies and/or tribunals, and the exercise of such other powers as may be necessary to ensure compliance with the IP Code.

Cases filed before the Regional Trial Courts may also undergo Court-Annexed Mediation, Judicial Dispute Resolution and Appeals Court Mediation.

United States Small Flag United States

Enforcement of intellectual property rights against an alleged infringer generally falls to the federal court system. Federal courts often require that parties to litigation submit to facilitation, mediation, or arbitration as an alternative mechanism that can bring parties to a resolution. However, these proceedings cannot be mandated to resolve the dispute.

Germany Small Flag Germany

Non-court enforcement is not mandatory. However, in order to avoid bearing of costs if the defendant in court proceedings accepts the claim immediately, it is advisable to send a prior warning letter and request a declaration to cease and desist.

Switzerland Small Flag Switzerland

Not unless the dispute is based on a contractual issues and the contract in question foresees non-court enforcement options or dispute resolution mechanisms.

Ukraine Small Flag Ukraine

There are no mandatory non-court enforcement options or dispute resolution mechanisms.

Turkey Small Flag Turkey

N/A

Sweden Small Flag Sweden

No, there are no mandatory non-court enforcement options or dispute resolutions in Sweden.

Spain Small Flag Spain

There are no non-court enforcement options or dispute resolution mechanisms mandatory in respect of IP right disputes.

Israel Small Flag Israel

No.

Brazil Small Flag Brazil

The Brazilian Code of Civil Procedure determines that, unless both parties expressly state that they do not wish to go through a mediation procedure, it will be carried out within the lawsuit, that is, in court, before the case moves to trial. Other than that, there is no mandatory non-court enforcement option or dispute resolution mechanisms.

Updated: November 2, 2017