What defences to infringement are available?

Intellectual Property

Singapore Small Flag Singapore

Copyright – Where the act is fair dealing in relation to works, for the purpose of criticism or review, and for the purpose of reporting current events; reproduction for purposes of judicial proceedings or professional advice from an advocate or solicitor; temporary reproduction made in the course of communication; inclusion of works in collections for use by educational institutions; or accessories to imported articles.

There are also specific provisions for artistic works and buildings. Network service providers are also covered by safe harbour provisions.

Registered designs – Where the act is done for a private, non-commercial purpose, or for evaluation, analysis, research, or teaching. Also, where a person who, before the date of registration of a design, does in good faith in Singapore an act which would be an infringement of the design if registration had been in force at that time, or makes in good faith effective and serious preparations to do such an act in Singapore, has the right to continue to do the act or, as the case may be, do the act.

Geographical indications – Where it is the use of a personal name; where no action had been taken against the person after 5 years; or where a qualified person has continuously used in Singapore that geographical indication in relation to those goods or services for at least 10 years preceding 15 April 1994, or in good faith preceding that date.

Layout-designs (topographies) of integrated circuits – Where copying is part of a protected layout-design that does not comply with the requirement of originality; done for a private purpose and not the purpose of commercial exploitation; done for the sole purpose of evaluation, analysis, research, or teaching, and to use the results of such evaluation, analysis, or research to create a different layout-design that complies with the requirement of originality; or done at the time when the person did not know, and could not reasonably be expected to have known, that the copy was unauthorised.

It is also not an infringement of a qualified owner's protected layout-design for a qualified owner of another independently created and protected layout-design that is identical to the first mentioned layout-design to commercially exploit its independently created and protected layout-design.

Patents – Where the act is done privately and for non-commercial purposes, for experimental purposes, or as extemporaneous preparation of a medicine for an individual; where the use of the invention begun before the priority date; the 'Bolar' defence; or exhaustion of rights in the patented invention.

The use of a patented invention in a relevant aircraft, hovercraft, or vehicle or ship temporarily in territory of Singapore and the use of an exempted aircraft lawfully in Singapore would also not constitute an infringement.

Plant varieties – Where the act is done privately and for non-commercial purposes; for experimental or research purpose; or for the purposes of breeding any other plant variety.
Trade marks – 'Own name' defence; 'descriptive use' defence; 'prior user' defence; use for non-commercial purpose; or news reporting or commentary.

Trade secrets/know-how – Where the information (previously trade secret or confidential information) is already in the public domain or there is a public interest in such disclosure.

France Small Flag France

In case of infringement action, available defences include:

- Procedural defences:
Procedural defences are defined as “any mean aiming to have the procedure declared irregular, extinguished or stayed” and include:

  • the lack of jurisdiction of the court seized;
  • the exception of lis pendens and related cases;
  • the stay of the proceedings;
  • irregularities affecting the validity of the writ of summons.

Defence of non-admissibility defined as any mean seeking to have the plaintiff claim’s declared inadmissible, without entering into the merits of the case, for lack of a right of action, such as a not being the proper party, lack of interest, statute of limitations, fixed time-limit or res judicata.

- Invalidity of the IPR at stake;

- Invalidity of the seizure;

- Exhaustion of rights;

- Lawful customs transit;

As regards patents, specific defences notably include:

  • private non-commercial use;
  • experimental use;
  • acts, studies and tests required for the filing an application for a marketing authorization or the grant of advertising visa;
  • acts performed to create, discover or develop new plant varieties;
  • personal prior use.

As regards trademarks, specific defences include:

  • the existence of a prior right (company name, business name, sign board);
  • the preclusion due to acquiescence of the litigious use;
  • the revocation for non-use of the trademark;
  • the trademark has become generic or misleading;
  • the absence of use of the litigious sign in the course of trade and/or as a trademark;
  • the use of the litigious sign as a necessary reference or a geographical indication;
  • the use in good faith of its own name.

As regards copyright, specific defences include the exceptions listed in IPC article L. 122-5 in particular:

  • private performance or copy;
  • analysis or brief quotation;
  • press review, news or public speech, public searches;
  • parody;
  • accessory reproduction of a building or a sculpture.

Portugal Small Flag Portugal

R: After the acknowledgement of the infringement, the harmed party may also start an infringement action near the Court/arbitration centre. Protective orders are the most efficient instrument in this cases.

ASAE (a public entity responsible for the commercial inspection) and the other official inspection entities shall proceed with its inspections in order to avoid IP infringements. If anyone suspects that an infringement is occurring, a claim must be submitted. Also, customs services shall oversee all the traded goods and act accordingly if any infringement is detected. Monitoring its client’s IP rights is also a common practice of IP private offices/lawyers.

India Small Flag India

Trademark: honest concurrent use, acquiescence, no confusion due to difference in goods and services/counter of sale/class of purchasers/nature of product/pricing

Copyright: fair dealing, such as for educational purposes, judicial proceedings, and legislative proceedings. Further, for a lawful possessor of a computer programme, the making of copies of the programme in certain circumstances does not constitute infringement.

Patents: As per the Indian Patents Act, the defendant can challenge the validity of the patent on grounds as provided in the Act. Further, in any suit for infringement of a patent by the making, using, or importation of any machine, apparatus or other article, or by the using of any process or by the importation, use, or distribution of any medicine or drug, it shall be a ground for defence that such making, using, importation, or distribution is in accordance with any one or more of the conditions specified in Section 47

Designs: All grounds available to a person seeking cancellation may be adopted as a defence in infringement proceedings.

Greece Small Flag Greece

Patents, utility models
In addition to asserting that the alleged infringing action / products do not fall within the claimed subject matter of the patent / utility model in question, the defendant may claim the following:

  • Nullity. The defendant may raise a nullity claim or file a counter-claim over nullity and introduce it before the same court. The grounds for patent nullity are set out in Section G below.
  • The subject matter of the invention has been conceived and exploited by the defendant or its assignor at the time of filing of the asserted patent and use of the subject matter is necessary for the defendant's business.
  • Use of the patent for research purposes.
  • Exhaustion of patent rights.
  • Time-bar. Injunction and/or damages claims are time-barred 5 years as from the date the plaintiff became aware of the infringement and the identity of the infringer and, in any event, 20 years as from the infringement.
  • Acquiescence and/or abusive exercise of the right holder's substantive rights. This would take the form of a claim the plaintiff has knowingly put up with the infringement for a considerable period of time, thus affording the defendant a legitimate interest to continue with its actions. Under Greek law, such defense would be based on Art 281 of the Greek Civil Code, which prohibits the use of private rights in violation of their economic and/or social purpose. However, there is a substantial body of case law ruling that such defense cannot be raised in intellectual property cases, as IP law does not only safeguard private (i.e. IP owner's) rights but also consumers' interests, which are of public law nature.

Non-culpability (lack of negligence and/or intent). It can only be raised as a defense against a damages (pecuniary or non pecuniary) claim, not against injunctive relief.

Registered designs
In addition to or regardless of a claim over lack of similarity, the defendant may raise the following defenses:

Private, non-commercial use of the design, and/or use for experimental or research purposes and/or reproduction of the design to provide examples or for teaching purposes
Nullity. The defendant may raise a nullity claim or file a counter-claim over nullity and introduce it before the same court. The grounds for patent nullity are set out in Section G below.

Design rights exhaustion.
Time-bar. Injunction and/or damages claims are time-barred 5 years as from the date the plaintiff became aware of the infringement and the identity of the infringer and, in any event, 20 years as from the infringement.

Acquiescence and/or abusive exercise of the right holder's substantive rights. This would take the form of a claim the plaintiff has knowingly put up with the infringement for a considerable period of time, thus affording the defendant a legitimate interest to continue with its actions. Under Greek law, such defense would be based on Art 281 of the Greek Civil Code, which prohibits the use of private rights in violation of their economic and/or social purpose. However, there is a substantial body of case law ruling that such defense cannot be raised in intellectual property cases, as IP law does not only safeguard private (i.e. IP owner's) rights but also consumers' interests, which are of public law nature.

Non-culpability (lack of negligence and/or intent). It can only be raised as a defense against a damages (pecuniary or non pecuniary) claim, not against injunctive relief.

The above defenses apply mutatis mutandis to semiconductor topographies infringement cases.

Trade marks
In addition to asserting lack of consumer confusion and/or famous TM violation, the defendant could raise the following defenses:

Use of (i) the name or address of the defendant, where the defendant is a natural person; (ii) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; and (iii) the trade mark itself for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

TM rights exhaustion.
Time-bar. An injunction claim is time-barred 20 years as from the date the plaintiff became aware of the infringement and the identity of the infringer, but a pecuniary damages claim is time barred 3 years after such time and a non pecuniary damages claim 5 years as from that time, except where the infringement would also qualify as a felony, in which case the time bar is extended to 20 years from the date the plaintiff became aware of the infringement and the identity of the infringer.

Acquiescence. The right holder cannot prohibit the use of a later registered trade mark, if it has knowingly put up with use of such later registered mark for a periof of 5 consecutive years.

Abusive exercise of the right holder's substantive rights. This would take the form of a claim the plaintiff has knowingly put up with the infringement for a considerable period of time, thus affording the defendant a legitimate interest to continue with its actions. Under Greek law, such defense would be based on Art 281 of the Greek Civil Code, which prohibits the use of private rights in violation of their economic and/or social purpose. However, there is a substantial body of case law ruling that such defense cannot be raised in intellectual property cases, as IP law does not only safeguard private (i.e. IP owner's) rights but also consumers' interests, which are of public law nature.

Non-culpability (lack of negligence and/or intent). It can only be raised as a defense against a damages (pecuniary or non pecuniary) claim, not against injunctive relief.

As far as invalidity is concerned, it is not a possible defense in trade mark enforcement cases, as the relevant cancellation action must be filed before the Greek TM Office and Greek courts are bound by the status of the mark at the time of proceedings. For this last reason, established case law on the matter also effectively rules out the possibility of the court staying proceedings, until a final decision is issued by the Greek TM Office and/or the administrative courts. However, in recent years, there have been instances where the courts have found that registered TMs infringed upon prior registered or un-registered rights, without this affecting their status as registered marks.

Unfair competition
In addition to asserting lack of violation of established business morals, the defendant may claim the following:

Time-bar. Unfair competition claims are time barred 18 months after the plaintiff became aware of the infringement and the identity of the infringer.

Lack of confusing similarity (unregistered signs).
The disputed information was not confidential or proprietary, had already been publicly disclosed by the plaintiff, or was disclosed in the context of legal obligations of the defendant towards regulatory authorities or courts (trade secrets).

Copyright
Use of the disputed work falls within exhaustive list of limitations to copyright provided under Greek copyright law, including private use, quotation of extracts, use in school textbooks and anthologies, use for teaching, research or criticism purposes, current event reporting etc. There is no "fair use" doctrine for copyright infringement in Greece
Time-bar. Injunction and/or damages claims are time-barred 5 years as from the date the plaintiff became aware of the infringement and the identity of the infringer and, in any event, 20 years as from the infringement.

Acquiescence and/or abusive exercise of the right holder's substantive rights. This would take the form of a claim the plaintiff has knowingly put up with the infringement for a considerable period of time, thus affording the defendant a legitimate interest to continue with its actions. Under Greek law, such defense would be based on Art 281 of the Greek Civil Code, which prohibits the use of private rights in violation of their economic and/or social purpose. However, there is a substantial body of case law ruling that such defense cannot be raised in intellectual property cases, as IP law does not only safeguard private (i.e. IP owner's) rights but also consumers' interests, which are of public law nature.

Non-culpability (lack of negligence and/or intent). It can only be raised as a defense against a damages (pecuniary or non pecuniary) claim, not against injunctive relief.

Updated: June 12, 2017