What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

Intellectual Property

Bulgaria Small Flag Bulgaria

Apart from the state fee for filing a claim and/or the fee for filing an objection, there is a fee for appointment of an expert and most likely attorney’s fees. The costs may vary from approximately BGN 300 to BGN 1 500 per one court instance. In the civil and administrative proceedings it is a general principle that the losing party shall bear the costs. Otherwise, there is no procedural mechanism enabling or requiring security for costs.

Malaysia Small Flag Malaysia

There is no fixed costs. The costs would depend on the type and manner of enforcement. Costs are generally awarded to the winning party but this is at the discretion of the Court. Costs awarded is relatively low.

A defendant in any action may apply for security of costs. This would be the discretion of the Court.

Belgium Small Flag Belgium

Judgments must first be served by a bailiff on the party against whom enforcement is sought. The costs are dependent on the length of the judgment, and usually vary between €200 to €400. If a judgment is not complied with voluntary, the creditor may proceed to the seizure of assets. These will be sold and the proceeds will ultimately be handed over to the creditor. Should the creditor face opposition by the debtor, additional court proceedings will generate new costs.

A losing party must bear the costs of proceedings and pay the legal fees of the winning party. The latter are limited to a flat-rate amount fixed in a Royal Decree. The flat-rate amounts are generally considered to be unrealistically low. Following the CJEU’s decision in the United Video Properties / Telenet case (28 July 2016, C-57/15) in which it confirmed that the losing party should pay reasonable and proportionate legal fees as required by Art. 14 of IP Enforcement Directive 2004/48, on May 8, 2017 the Antwerp Court of Appeal issued the most recent Belgian decision on this subject. The Antwerp Court of Appeal ordered the losing party to reimburse expert costs, but refrained from ordering the payment of legal fees exceeding the maximum amount provided for by law. The court decided that it is not allowed to rule contra legem. The court refused to apply what is generally considered to be the core of Art. 14 of the IP Enforcement Directive, i.e. the prevailing party should be reimbursed a reasonable and equitable part of its lawyers’ fees.

Except in the case a bilateral agreement provides for an exemption, a defendant may ask the court to order a foreign national plaintiff or intervening party to pay a guarantee as security for the defendant’s costs and possible damages (caution judicatum solvi).

Singapore Small Flag Singapore

The cost of enforcement proceedings will vary, depending on the nature and complexity of the case.

For civil court and arbitration proceedings, a successful party may recover its costs from the losing party, although the quantum of the costs recovered is at the discretion of the court/tribunal and often does not cover all the legal costs and disbursements incurred.

A defendant can invoke the court's jurisdiction under Order 23 of the Rules of Court for security of costs to be ordered, if the court finds it just to do so.

France Small Flag France

Costs attached to IP proceedings usually include the lawyers’ fees as well as the cost of the diligence of technical experts or design, patent or trademark attorneys and bailiffs.

Their amount can vary depending on the technicality of the case, the strategy elected and the arguments raised in defence.

Pursuant to French procedure rules, the Court may condemn the unsuccessful party to pay the adverse party’s legal costs.

Portugal Small Flag Portugal

R: The costs of enforcement proceedings are very variable. In general, Arbitration Courts are more expensive than the Public Courts.

In Portugal we have such mechanism of costs recovery available for successful parties.

There are no IP rules in what regards to security of costs. The general rule of civil procedure shall be followed and it determines that the court may decide on which party shall support said costs (usually, if the infringement is proven, the Court decides that the offender shall pay the costs).

India Small Flag India

The entire cost of enforcement proceedings will include the official costs, as well as the professional fees for representation. While costs are often granted by the adjudicating court, these are symbolic and minimal. The punitive damages in intellectual property matters are usually not commensurate with the actual damages suffered by the Plaintiffs. Courts may require the deposit of monies with them, as security, however, this practice is typically used for money decrees, and not for costs as are granted in successful intellectual property actions.

In India, the realm of intellectual property law is developing quickly. Laws are TRIPS compliant, and evolving fairly swiftly. The balance the rights of creators and consumers is an important concern, which needs to be constantly kept in mind.

The smooth and consistent functioning of the Intellectual Property Offices is a vital step in the right direction. Further steps to take include the mandatory recording of security interests in any intellectual property, as well as a more cohesive online system.

Greece Small Flag Greece

The costs of enforcement proceedings vary depending on the type and complexity of the case. However, as a rule of thumb, Greece is not among the "expensive" IP litigation jurisdictions in Europe.

Cost recovery is available and is employed by the courts. In practice, however, only a small fraction of the costs is awarded to the successful party, with the exception of costs award in cases where the dispute value is very significant and the case not a complex one.

The Greek Code of Civil Procedure includes provisions enabling security for costs, although this option is rarely employed by litigants and, more importantly, courts are not particularly amenable to such procedure and will, generally, grant such a request, only rarely.

Costs are not recovered in criminal and administrative proceedings. In the case of administrative proceedings, only official fees are recoverable.

Japan Small Flag Japan

The costs of civil enforcement proceedings at courts generally include (i) court costs and (ii) attorney fees. The defeated party shall bear court costs. To recover attorney fees, a plaintiff needs to specify the amount of assumed attorney fees as damages in a complaint. For cases in which a plaintiff has no address in Japan, there is a procedural mechanism requiring security for court costs.

Mexico Small Flag Mexico

Enforcement Proceeding

Cost (approximately)

Invalidation actions

$ 4,000 - $8,300 USD

Cancellation actions

$ 3,000 - $ 7,500 USD

Infringement actions

$ 6,500 - $ 15,500 USD

Criminal actions

$ 2,000 - $ 20,000 USD

 

There is not any cost recovery available for this kind of procedures but only for civil actions related with copyrights and related rights.

China Small Flag China

Litigation fees, attorney's fees, notarisation fees, and other expenses arising from the proceedings can be claimed, to be borne by the losing party. The costs awarded to the successful party are ordered at the court's discretion and in most cases only a very low percentage of fees are recovered.

There is no analogous concept of a security for costs application in China. However, a plaintiff may apply for an Asset Preservation Order against a defendant to freeze money assets during proceedings. Any frozen assets can be used to pay any damages and/or costs awarded by the court.

United Kingdom Small Flag United Kingdom

The general rule in the UK is that the losing party pays the costs of the successful party in relation to the aspects of the claim that were lost. The court takes into consideration a number of factors including the conduct of the parties during the litigation. In the High court, the winning party's costs will be typically assessed on the standard basis and will allow, subject to the matter at issue, costs that have been proportionately and reasonably incurred to be recovered. This commonly leads to a winning party recovering 60-75% of its legal costs.

In the IPEC, the normal rules of costs do not apply, and the losing party will be liable for a capped amount in respect of the costs of the successful party. In respect of the trial of liability issues, the costs are capped at £50,000. The costs of a damages enquiry are then capped at £25,000.

Security of costs
To ensure that a Defendant is able to recover its costs from a Claimant, the Civil Procedure Rules allow Defendants to seek an order for security of costs. The Claimant would then be required to provide a bank guarantee or other appropriate security or, failing this, to pay a sum of money into the court, as security for the Defendant's costs, should the Defendant succeed at trial.

The Defendant can make such an application once proceedings have been commenced against it. The application must be made promptly or as soon as all justifying facts for the award of the order are known.

South Africa Small Flag South Africa

Patents and Designs
See Q17 above. Generally around 20% to 40% of a successful party’s costs may be recovered from the unsuccessful party. There is no requirement for a party to provide security for costs in the absence of a request from the other party. However, in certain circumstances a party may apply to court and be awarded security for costs.

Plant Breeders’ Rights
Generally around 20% to 40% of a successful party’s costs may be recovered from the unsuccessful party. There is no requirement for a party to provide security for costs in the absence of a request from the other party. However, in certain circumstances a party may apply to court and be awarded security for costs.

Trade Marks and Copyright
The costs would depend on whether the matter is contested or not and is based on the hourly rate of the attorney and advocates involved in the litigation. A successful party is entitled to recover a portion of the actual costs incurred in litigation. Security for costs may be requested in the case of a foreign litigant.

UAE Small Flag UAE

Costs of enforcement proceedings: see section 17/18 above.

Costs recovery: UAE courts ordinarily award to the winning party a nominal amount as partial reimbursement of its legal fees. The winning party may however recover court fees.

Security for costs: UAE courts would order a claimant to provide security for costs only when issuing an interim attachment order at claimant's request (as per section 31 above).

Philippines Small Flag Philippines

Apart from the payment of the requisite filing fees, in cases where there is a prayer for an injunctive relief, the party applying for injunctive relief must file a cash bond to the effect that the applicant will pay to such party or person all damages which the latter may sustain by reason of the injunction or temporary restraining order if the Bureau should finally decide that the applicant was not entitled thereto. The cash bond is in an amount to be fixed by the Hearing Officer and approved by the BLA Director for infringement cases filed before the IPO BLA,

Under the IPV Rules, the BLA Director after formal investigation may impose the penalty of requiring an assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the BLA.

United States Small Flag United States

Costs for enforcing intellectual property rights vary widely depending on the tribunal determining the rights and complexity of the dispute. There is no mechanism for security of costs. But an infringer who appeals may have to post a bond to secure the damages amount pending the outcome of the appeal.

Germany Small Flag Germany

In general, the cost of enforcement proceedings depend on the complexity of the proceedings, technical matter, service requirements to non-European defendants and the conduct of the other party.

The costs for IP right enforcement proceedings follow the general principle that the losing party bears the costs, i.e. the court fees and the costs of the successful party, in relation to the claim on which the respective party lost. IN case of partial loss/win, the costs will be split accordingly. The reimbursement of the costs is based on the value of the matter and is a certain amount of fees stipulated under statutory law, i.e. it is usually not the actual cost incurred; in many cases, the actual cost incurred may be higher than the cost reimbursement.

Under Section 110(1) Civil Code, a claimant domiciled outside the EU or EEA must generally provide security for costs upon the defendant's request. However, there are several exemptions to this rule that are listed in Section 110(2) Civil Code. In patent law, this general provision is supplanted by the largely identical Section 81(6) Patent Act.

Switzerland Small Flag Switzerland

The costs of the enforcement proceedings strongly depend on the complexity of the case and the forum as the 26 cantonal courts each have their own court tariff system. No general statement is possible.

With respect to the allocation of costs, the court, as a general rule, decides on the procedural costs in the final decision. Where an interim decision is made, the procedural costs incurred up to that point may be allocated but it may also be deferred until the final decision on the merits. The parties may submit a statement of costs but the court costs are determined and allocated ex officio and party costs are awarded according to the tariffs. As a general rule, the costs are charged to the unsuccessful party. If an action is not admitted by the court or if it is withdrawn, the claimant is deemed to be the unsuccessful party. In case of acceptance of the claim the defendant is deemed to be the unsuccessful party. If each party is partially successful, the costs are allocated in accordance with the outcome of the case. If three or more persons are participating in the proceedings as principal parties or accessory parties, the court shall determine each party's share of the costs and it may hold the parties jointly and severally liable. The court may diverge from this general principle of allocation and allocate the costs at its own discretion in specific cases. For example if a party was caused to litigate in good faith or if there are other extraordinary circumstances that would result in an allocation according to the outcome of the case being inequitable. If a case is settled in court, the costs are charged to the parties according to the terms of the settlement. The most common allocation in the event of an in-court settlement is that each party pays their own costs.

At the request of the defendant, the claimant must provide security for party costs if the claimant has no residence or registered office in Switzerland; appears to be insolvent, has been declared bankrupt, is involved in ongoing composition proceedings or if certificates of unpaid debts have been issued; the claimant owes costs from prior proceedings; or if for other reasons there seems to be a considerable risk that the compensation will not be paid. Security may be provided in cash or in the form of a guarantee from a bank with a branch in Switzerland or from an insurance company authorised to operate in Switzerland.

Ukraine Small Flag Ukraine

The official fees for filing the suit, depend on the type of the court (for example, administrative court, general jurisdiction court, commercial court). Amount of official fees depends on amount of claims, on type of the claims (i.e. monetary or non-monetary) and on the person of plaintiff (i.e., natural or legal person).

Costs recovery including recovery of official fees, recovery (full or partial) of the lawyers’ fees, recovery of other expenses such as experts’ fees etc., is possible for the winning party.

Turkey Small Flag Turkey

The expert fee is TRY 330 in civil court of intellectual and industrial rights. Other court charges vary according to the type of the litigation as well as the set value of the litigation, if it is known. The contractual attorney fee payable to the attorney shall be determined by the client and attorney with due regard for the efforts and experience of the attorney. The client shall have to pay the attorney fee regardless of the outcome of the litigation. The attorney shall also be entitled to the attorney fee which shall be determined according to the particulars of the litigation and duly included in the court costs but this attorney fee shall be payable by the party losing the case along with the court costs. Besides, if any party intends to claim for damages, such party may ask the court to order for a provisional injunction to ensure that the party which shall be obliged to pay an indemnification can provide a guarantee for the relevant payment before taking any action for damages. Also, the general procedure rules under CPC provide that the court may, in its sole discretion, order the respondent to provide a suitable guarantee for the court costs. The case shall be rejected on procedural basis unless the relevant guarantee is deposited within the definite duration determined by the judge.

Sweden Small Flag Sweden

The cost for enforcement proceedings depends on the complexity of the case. According to the Swedish Code of Judicial Procedure, a successful enforcement will typically award the costs for the procedure to the winning party. If both parties win parts of the proceedings costs will generally not be recovered. Both fees to lawyers/legal professionals and costs incurred by the entity for its own work may be reimbursed. However, the awarded sum may be adjusted in case the court deems that a party’s procedural costs were excessive.

Spain Small Flag Spain

The legal costs shall be imposed on the party that has been rejected all its claims, unless the court appreciates, and reasons, that the case presented serious doubts of fact or law.

If the estimate or rejection of the claims is partial, each party shall pay the costs incurred at its instance and the common costs in half, unless there are merits to impose on one of them for having litigated with recklessness.

The legal costs are calculated according to the tables and criteria fixed by the relevant Bar Association.

To recover damages and legal costs, it is necessary to formally request in written the initiation of the enforcement procedure (before the same Court that issued the judgement of first instance).

Israel Small Flag Israel

The courts generally award costs to the prevailing party in litigation. However, costs generally are subject to caps set by regulation and rarely amount to more than 50% of the actual legal fees expended.

Before an order based on prima facie evidence is granted, the court will require the petitioner to provide a security to cover damages suffered by the respondent, in the event that the order is revoked.

Brazil Small Flag Brazil

The costs of civil enforcement vary widely according to the IP right in question as well as the Court. But as a general rule, the official fees to file a lawsuit correspond to 1% of the value attributed to the lawsuit Other common costs are expert’s fees and fees for filing appeals. The costs for IP right enforcement proceedings follow the general principle that the losing party bears the costs, i.e. the court fees and the costs of the successful party, in relation to the claim on which the respective party lost.

The Brazilian Code of Civil Procedure enables a mechanism to secure the damages, i.e., freezing the infringing party’s bank account and ability to wield properties.

Updated: November 2, 2017