What defences to infringement are available?

Intellectual Property

Bulgaria Small Flag Bulgaria

The following final remedies are available:

  • civil protection: it could be accomplished by filing a claim before the court. The rightholder may claim cessation of the infringement, damages, as well as destruction of the infringing goods because of violation of their rights;
  • administrative protection: it could be accomplished with the assistance of state authorities, mainly of the Patent Office and the Ministry of Culture: the state officials are entitled to impose administrative penalties for each violation;
  • criminal protection: the violation of IP rights could be qualified as a crime according to the Bulgarian legislation and the violator can be subject to criminal liability.

Malaysia Small Flag Malaysia

Patents:
(a) Monopoly rights of a patentee are confined to activities which are carried out for industrial or commercial purposes only.

(b) Patent owners cannot control acts which are carried out in order to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs.

(c) A patentee or any third party who has his consent, who has placed patented products into circulation for the first time in the marketplace cannot thereafter utilise his exclusive rights as a patentee to control subsequent dealings with the products.

(d) Where the infringing act has been committed with the conditional or unconditional consent of the patent owner or his licensee.

(e) The rights of a patentee do not extend to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.

(f) No infringement proceedings can be taken where the patent has lapsed and has not been reinstated.

(g) Where the act is done pursuant to a compulsory licence.

(h) Where the exploitation is committed by the Government or any person authorised by the Government.

(i) Where a person has used the patented product or process in good faith.

(j) A purchaser of a patented article has an implied licence to repair it as long as the repair does not amount to the making of a new article.

Confidential information:
The common defence:

(a) The information is not confidential but is common knowledge

(b) The information claimed to be confidential is not identified

(c) There is just cause or excuse for the disclosure

Trade marks:
It is not trade mark infringement where:

(a) a person trades in his own name, name of his or his predecessor’s business and to use the name as a trade mark;

(b) the use in good faith by a person of a description of the character or quality of his goods or services (the description not importing a reference to the trade mark of another trader);

(c) the owner of an unregistered trade mark continuously used his trade mark before the use of the registered trade mark by the plaintiff (or his predecessor in business) or before the registration of the trade mark, whichever is earlier;

(d) the registered proprietor of a trade mark or his registered user has placed his mark on the goods which are then marketed, the registered proprietor loses all rights to control subsequent dealings with the goods;

(e) the registered proprietor or registered user has given implied or express consent to the use of the trade mark;

(f) independent manufacturers of spare parts or accessories in relation to trade marked goods used the trade mark for the purpose of informing the public that the parts and accessories are suitable for the goods. However, the use must not cause any deception or confusion that a connection exists in the course of trade between the registered trade mark owner and the manufacturer;

(g) the registered trade mark are used by concurrent proprietors.

Geographical Indication:
Institution of court proceedings for unlawful use of geographical indications can only be instituted by ‘an interested person’ as defined under the Act, such as individual consumers of goods bearing a false or misleading geographical indication.

Copyright:
It is not copyright infringement where:

(a) Acts restricted by copyright is done by way of fair dealing including for purposes of research, private study, criticism, review or the reporting of news or current events;

(b) Incidental inclusion of a copyright work in an artistic work, sound recording, film or broadcast, including its placement in public view;

(c) Private recording of broadcasts or any of its copyrighted work to be watched later;

(d) If the use of the copyright work is made by way of illustration for teaching purposes and is compatible with fair practice;

(e) Use made of a work by or under the direction or control of the Government, provided certain conditions are satisfied;

(f) Certain uses in relation to computer programs;

(g) The infringing act is done by way of parody, pastiche or caricature;

(h) Reading or recitation in public or in a broadcast by a person of any reasonable extract from a published literary work if accompanied by sufficient acknowledgement is not an infringement;

(i) The making and issuing of copies of any work into a format to cater for the special needs of people who are visually or hearing impaired and the issuing of such copies to the public by non-profit making bodies or institutions;

(j) Reproduction of work by broadcasting service intended exclusively for lawful broadcasting;

(k) Reproduction of articles on current topics or for informatory purposes;

(l) The making of a transient and incidental electronic copy of a work made available on a network where such copy is required for the viewing, listening or utilisation of the work.

Industrial Design
The industrial design may be revoked where it was not new at the priority date of the application for registration, and may be cancelled where the registration has been procured by unlawful means.

Belgium Small Flag Belgium

A defendant has several general substantive and procedural defences at his disposal, as well as defences specific to the different intellectual property rights. Procedural defences include objections for lack of jurisdiction or competence, or inadmissibility.

The most common substantive defences are arguments of non-infringement, where, for example, the defendant proves that the right holder has consented with his activity or that the activity does not fall within the scope of protection of the intellectual property right. Also, a defending party will often file counterclaims, for example, to obtain the forfeiture of the intellectual property right, abuse of rights, the lack of standing of the claimant, exhaustion of the intellectual property rights in the EU, or most importantly, the invalidity of the right. There is also an option to obtain a declaration of non-infringement pre-emptively before Belgian courts.

Defences specific to the different intellectual property rights generally concern actions which fall under the provided exceptions to the rights.

For patents, this includes: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes relating to the subject matter of the patented invention; (c) the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; and other acts concerning ships, aircraft and vehicles in transit (Art. XI.34 CEL). Genuine prior use or possession of the patented invention may also be used as a defence (Art. XI.36 CEL).

For trademarks, defences include the use by a third party in the course of trade of: (a) its name and address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or services; (c) the trademark, where it is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part; provided that such use is made in accordance with honest practices in industrial or commercial matters (Art. 2.23 BCIP). In addition, a defendant may prove the existence of a prior right to a similar sign. Proving the acquiescence of the holder of a prior trademark in the use of the sign is also a valid defence, if the prior trademark holder was aware of the use for a period of five years (art. 2.24 BCIP). A defendant may also invoke the revocation of the trademark as a result of it not being genuinely used for a continuous period of five years, or when it has become generic because of acts or inactivity of the holder (Art. 2.26 BCIP).

For designs, this includes: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source; (d) use of the design which is part of a complex product for the purposes of repair of that complex product in order to restore to its initial appearance (Art. 3.19 BCIP). There is also a defence of prior use of products that are identical in appearance to the design filed or that do not produce a different overall impression on an informed user (Art. 3.20 BCIP).

With regard to copyright, there is a long list of exceptions provided in Art. XI.190 CEL. These fair use defences include: free private performance or reproduction (private copy); parody and criticism of the work; the right to quote for the purposes of criticism, controversy, education or science; use of the work to report on current events, use as anthologies for educational purposes; use in temporary and technical acts of reproduction, use as occasional background information; etc. (Art. XI.190 CEL).

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.

Japan Small Flag Japan

Patents
Defenses include:

  • Use for experimental or research purposes, etc.
  • Patent invalidity
  • Prior user’s right
  • Non-infringement
  • Patent exhaustion

Trade Secrets
Defenses include:

  • The alleged trade secret does not meet the requirements specified in the Unfair Competition Prevention Act (see A.1.(a)).
  • Non-infringement
  • The trade secret was used or disclosed under a right acquired by the defendant

Registered Trademarks
Defenses include:

  • Using a person’s own name, famous abbreviations, etc.
  • Non-use as a trade mark
  • Invalid right
  • Prior user’s right
  • Non-infringement

Copyright
Defenses include:

  • Reproduction for private or citation use, non-commercial purposes, reporting a current event, judicial proceedings, etc.
  • Non-infringement of the copyright
  • Exhaustion of the right

Design Rights
Defenses include:

  • Use for experimental or research purposes. etc.
  • Right is invalid
  • Prior user’s right
  • Non-infringement
  • Exhaustion of the right

Mexico Small Flag Mexico

Infringers might either file a response arguing that the infringement action is groundless and providing evidence that supports the legal use of the intellectual property right in matter; or file an invalidation action (as a counteraction) against the registration used as legal standing by the plaintiff.

China Small Flag China

General defences include challenging the validity of IP rights.

For unregistered rights (i.e. copyright), defendants can argue the right does not amount to a copyright work and/or there has been no copying (or they had permission from the owner to copy).

For registered rights defendants can use the standard defences.

United Kingdom Small Flag United Kingdom

An act is only capable of infringing if it is done without the consent of the proprietor and in respect of a right which exists and is not invalid (or in respect of a tort which has been established, such as breach of confidence or passing off). One of the most common defences in infringement proceedings is therefore that the right is invalid (for registered rights) or does not subsist (for unregistered rights). The burden of establishing such a defence lies upon the alleged infringer.

Another very common defence is that the act complained of does not constitute an infringement. For instance, the alleged infringer may argue that the product or process does not fall within the scope of what is claimed in the patent, or that copyright is not infringed because there was no copying, or the copying does not relate to a substantial part of the work.

In respect of specific defences to IP infringement:

Defences to patent infringement

  • Non-infringing acts. There are a number of acts which are not infringements of a patent. The most common of these are acts done: privately and for non-commercial purposes; for experimental purposes or in a pharmacy in preparation of a medicine for an individual in accordance with a prescription.
  • Bolar exemption: Undertaking the tests and trials necessary for a generic medicine to utilise the shortened procedure for obtaining marketing approval will not infringe a patent. However, there is a period of data exclusivity within which data submitted in connection with an innovative drug cannot be used by third parties, and a period of market exclusivity within which generic medicines cannot be placed on the market. The combined period of exclusivity is typically around 10 years in Europe.
  • Gillette Defence: A Gillette defence is a technical argument which combines attacks on validity and non-infringement arguments. An alleged infringer may claim that their product or process is the same as, or obvious based on, prior art documents disclosed to the public before the relevant date (the priority date of the patent). In which case, if the patent owner claims that the product or process complained of falls within the scope of the patent, the patent will be invalid because its scope includes products or processes which were obvious in light of the prior art.
  • Innocent Infringement: Although not a defence to liability, no damages or account of profits can be awarded in respect of infringing activities if the infringer can prove that at the date of the infringement, or each infringing act, it was not aware, and had no reasonable grounds for supposing, that the patent existed (s.62 PA). The burden of proof is on the party asserting the defence. It rarely succeeds because patents are available on a public register.

Defences to registered trade mark infringement

  • Use relating to genuine goods: It is a defence if the sign complained of is used to identify goods or services belonging to the registered trade mark owner, or in accordance with honest practices in commercial matters, and which does not take unfair advantage or prejudice the distinctive character or repute of the mark. For instance, use of a mark to demonstrate that a product is compatible with a product of the registered trade mark owner.
  • Exhaustion of rights: Once goods are put on the market in the European Economic Area under the trade mark, by the proprietor or with their consent, it is not an infringement to deal in the goods in question provided that the goods have not been altered or impaired.
  • Honest Use: Use, in the course of trade, of a person's own name (natural and legal persons can rely on the own-name defence concerning UK trade marks; for EU trade marks, only natural persons can rely on the own-name defence) or indicators which are not distinctive or which concern the quality, quantity, geographical origin, time of production, or other characteristics of goods or services, or the purpose of the goods or services, are considered honest practices.
  • Comparative advertising: Use of a UK trade mark in permissible forms of comparative advertising will not constitute infringement of the mark when used in accordance with honest practices in industrial or commercial matters. In respect of EU trade marks, comparative advertising may again be permitted, provided it is not used in a manner contrary to Directive 2006/114/EC (concerning misleading comparative advertising).

Defences to registered design infringement

  • Non-infringing acts: Registered UK and European Community designs will not be infringed if the use relates to acts done privately, for non-commercial purposes, or experimental or teaching purposes, provided the use does not prejudice the right holder's right to commercially exploit the design and the right holder is acknowledged where possible.
  • Exhaustion of rights: Where a product incorporating a registered UK or European Community design is placed on the market in Europe, the right holder cannot control the distribution of the design and any purchaser of such a product can deal in it without the design right holder's consent.
  • Repairing a complex product: UK and European Community registered design right protection does not extend to spare parts used for the repair of a complex product (products composed of at least two replaceable component parts), where the design must be reproduced to the exact specification of the original in order for the product to be functional.
  • Innocent Infringement: In proceedings for the infringement of a UK registered design, damages will not be awarded against a Defendant who proves that, at the date of the infringement, he was not aware, and had no reasonable ground for supposing, that the design was registered. A person shall not be deemed to have been aware or to have had reasonable grounds for supposing the design was registered by reason only of the marking of a product with the word "registered" or similar, or with any words expressing or implying that the design applied to, or incorporated in, the product has been registered, unless the number of the design is also provided.

Defences to unregistered design right infringement

  • Innocent Infringement: Where, in an action for primary infringement of UK unregistered design right, it is shown that at the time of the infringement the Defendant did not know, and had no reason to believe, that the design right subsisted in the design, the Claimant will not be entitled to damages, but other remedies remain available. In the case of secondary infringement, where the Defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act.

Defences to copyright infringement

  • Making temporary copies: Use for non-commercial purposes by making temporary copies, where the temporary copy is short-lived and an essential part of the technological process, is not an infringement provided the copying is necessary for the relevant process and capable of being deleted automatically once the function has been achieved.
  • Research and private study: This applies to copyright in literary, dramatic, musical and artistic works or typographical arrangements, providing a defence for use consisting of non-commercial research and private study in situations where the use is a "fair dealing" and, in the case of non-commercial research, the right holder is acknowledged (unless it is impractical to do so). Whether the dealing is fair depends on: (i) the amount of the work used; (ii) whether the work is for commercial purposes; (iii) where the work has been copied; and (iv) whether the right holder has been deprived of trade.
  • Incidental inclusion: This applies to the incidental inclusion of an artistic work, sound recording or film.
  • Orphan works: There is a defence to infringement where the author of copyright in literary, dramatic, musical or artistic work is unknown, cannot be determined by reasonable enquiry, and it is reasonable to assume the copyright has expired.
  • Recording for time shifting: Recording copyright material for the sole purpose of allowing playback at a later date or time, provided there is no shifting of format, e.g. MP3 files to CDs. There are similar defences in respect of back-ups and decompilations of works under circumstances relating to software.
  • Parody, Caricature or Pastiche: Making limited use of copyright material for the purpose of parody, caricature or pastiche is a defence to infringement, provided that the use constitutes fair dealing, is noticeably different from the original work and constitutes an expression of humour.

South Africa Small Flag South Africa

Patents

Any ground upon which a patent may be revoked may be raised as a defence in infringement proceedings. They are as follows:

(i) That the patentee is not entitled under section 27 of the Patents Act to apply for the patent;

(ii) the grant of the patent is in fraud of the rights of the applicant or of any person under or through whom he or she claims;

(iii) that the invention concerned is not patentable under section 25;

(iv) the invention as illustrated or exemplified in the complete specification concerned cannot be performed or does not lead to results and advantages set out in the complete specification;

(v) the complete specification concerned does not sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be carried out by a person skilled in the art of such invention;

(vi) the claims of the complete specification concerned are not clear, or fairly based on the matter disclosed in the specification;

(vii) the prescribed declaration lodged in respect of the application for the patent contains a false statement or representation that is material and that the patentee knew to be false at the time the declaration was made;

(viii) the application for the patent should have been refused under the terms of section

36 (i.e. if the application is frivolous on the ground that it claims anything obviously contrary to well established natural laws, or if the invention will encourage offensive or immoral behaviour);

(ix) the complete specification claims as an invention a microbiological process or a product thereof and that the provisions of section 32(6) have not been complied with (i.e. samples of any micro-organism must be made available before acceptance).

Designs
Any ground upon which a design registration may be revoked may be raised as a defence in infringement proceedings. They are as follows:

(i) that the application for the registration of the design was not made by a person entitled thereto under section 14 (i.e.(a) the author of the design; or (b) where the author of the design executes the work for another person, the other person for whom the work is so executed; or (c) where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person; or (d) where the ownership in the design has passed to any other person, such other person);

(ii) that the registration of the design is in fraud of the rights of the applicant or of any person under or through whom he claims;

(iii) that the design in question is not registrable under section 14 (i.e. that in the case of an aesthetic design was not new and original and in the case of a functional design was not new and was commonplace);

(iv) that the application for the registration of the design contains a false statement or representation which is material and which the registered proprietor knew was false at the time when the statement or representation was made;

(v) that the application for the registration of the design should have been refused in terms of section 16 (i.e. the application was not made in the prescribed manner).

Plant Breeders’ Rights

The Act does not specify particular defences. Any defence on the basis that an act of infringement as set out in question 25 was not performed should however be available. Furthermore, a person who procured any propagating material of a variety in a legitimate manner shall not infringe the plant breeder's right in respect of the variety if he or she –

(a) resells that propagating material;

(b) subject to the provisions of the Act, sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;

(c) uses or multiplies that propagating material in the development of a different variety;

(d) uses that propagating material for purposes of bona fide research;

(e) uses that propagating material for private or non-commercial purposes; or

(f) is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.

Trade Marks

A registered trade mark is not infringed by—

(a) any bona fide use by a person of his own name, the name of his place of business, the name of any of his predecessors in business, or the name of any such predecessor’s place of business;

(b) the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or the rendering of the services;

(c) the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services;

(d) the importation into or the distribution, sale or offering for sale in the Republic of goods to which the trade mark has been applied by or with the consent of the proprietor thereof;

(e) the bona fide use by any person of any utilitarian features embodied in a container, shape, configuration, colour or pattern which is registered as a trade mark;

(f) the use of a trade mark in any manner in respect of or in relation to goods to be sold or otherwise traded in, or services to be performed, in any place, or in relation to goods to be exported to any market, or in any other manner in relation to which, having regard to any conditions or limitations entered in the register, the registration does not extend;

(g) the use of any identical or confusingly or deceptively similar trade mark which is registered:

Provided that paragraph (a) shall not apply to the name of any juristic person whose name was registered after the date of registration of the trade mark: Provided further that the use contemplated in paragraph (a), (b) or (c) is consistent with fair practice.

Copyright

Sections 12 to 19 of the Copyright Act of 1978 deal with defences to copyright infringement. These sections state as follows:

Section 12 - General exceptions from protection of literary and musical works:

(1) Copyright shall not be infringed by any fair dealing with a literary or musical work—

(a) for the purposes of research or private study by, or the personal or private use of, the person using the work;

(b) for the purposes of criticism or review of that work or of another work; or

(c) for the purpose of reporting current events—

(i) in a newspaper, magazine or similar periodical; or

(ii) by means of broadcasting or in a cinematograph film:

Provided that, in the case of paragraphs (b) and (c) (i), the source shall be mentioned, as well as the name of the author if it appears on the work.

(2) The copyright in a literary or musical work shall not be infringed by using the work for the purposes of judicial proceedings or by reproducing it for the purposes of a report of judicial proceedings.

(3) The copyright in a literary or musical work which is lawfully available to the public shall not be infringed by any quotation therefrom, including any quotation from articles in newspapers or periodicals that are in the form of summaries of any such work: Provided that the quotation shall be compatible with fair practice, that the extent thereof shall not exceed the extent justified by the purpose and that the source shall be mentioned, as well as the name of the author if it appears on the work.

(4) The copyright in a literary or musical work shall not be infringed by using such work, to the extent justified by the purpose, by way of illustration in any publication, broadcast or sound or visual record for teaching: Provided that such use shall be compatible with fair practice and that the source shall be mentioned, as well as the name of the author if it appears on the work.

(5) (a) The copyright in a literary or musical work shall not be infringed by the reproduction of such work by a broadcaster by means of its own facilities where such reproduction or any copy thereof is intended exclusively for lawful broadcasts of the broadcaster and is destroyed before the expiration of a period of six months immediately following the making of the reproduction, or such longer period as may be agreed to by the owner of the relevant part of the copyright in the work.

(b) Any reproduction of a work made under paragraph (a) may, if it is of an exceptional documentary nature, be preserved in the archives of the broadcaster, but shall, subject to the provisions of this Act, not be used for broadcasting or for any other purpose without the consent of the owner of the relevant part of the copyright in the work.

(6) (a) The copyright in a lecture, address or other work of a similar nature which is delivered in public shall not be infringed by reproducing it in the press or by broadcasting it, if such reproduction or broadcast is for an informatory purpose.

(b) The author of a lecture, address or other work referred to in paragraph (a) shall have the exclusive right of making a collection thereof.

(7) The copyright in an article published in a newspaper or periodical, or in a broadcast, on any current economic, political or religious topic shall not be infringed by reproducing it in the press or broadcasting it, if such reproduction or broadcast has not been expressly reserved and the source is clearly mentioned.

(8) (a) No copyright shall subsist in official texts of a legislative, administrative or legal nature, or in official translations of such texts, or in speeches of a political nature or in speeches delivered in the course of legal proceedings, or in news of the day that are mere items of press information.

(b) The author of the speeches referred to in paragraph (a) shall have the exclusive right of making a collection thereof.

(9) The provisions of subsections (1) to (7) inclusive shall apply also with reference to the making or use of an adaptation of a work.

(10) The provisions of subsections (6) and (7) shall apply also with reference to a work or an adaptation thereof which is transmitted in a diffusion service.

(11) The provisions of subsections (1) to (4) inclusive and (6), (7) and (10) shall be construed as embracing the right to use the work in question either in its original language or in a different language, and the right of translation of the author shall, in the latter event, be deemed not to have been infringed.

(12) The copyright in a literary or musical work shall not be infringed by the use thereof in a bona fide demonstration of radio or television receivers or any type of recording equipment or playback equipment to a client by a dealer in such equipment.

(13) An authorization to use a literary work as a basis for the making of a cinematograph film or as a contribution of a literary work to such making, shall, in the absence of an agreement to the contrary, include the right to broadcast such film.

Section 13 - General exceptions in respect of reproduction of works:

In addition to reproductions permitted in terms of this Act reproduction of a work shall also be permitted as prescribed by regulation, but in such a manner that the reproduction is not in conflict with a normal exploitation of the work and is not unreasonably prejudicial to the legitimate interests of the owner of the copyright.

Section 14 - Special exception in respect of records of musical works:

(1) The copyright in a musical work shall not be infringed by a person (in this section referred to as the “manufacturer”) who makes a record of the work or of an adaptation thereof in the Republic, whether from an imported disc, tape, matrix or otherwise, if—

(a) records embodying the work or a similar adaptation of the work were previously made in or imported into the Republic for the purposes of retail sale and were so made or imported by, or with the licence of, the owner of the copyright in the work;

(b) before making the record the manufacturer gave the prescribed notice to the owner of the copyright of his intention to make it;

(c) the manufacturer intends to sell the record by retail or to supply it for the purpose of resale by retail by another person or to use it for making other records to be so sold or so supplied; and

(d) in the case of a record which is sold by retail or supplied for the purpose of resale by retail, the manufacturer pays to the owner of the copyright, in the prescribed manner and at the prescribed time, the prescribed royalties.

(2) Where a record comprises, with or without other material, a performance of a musical work or of an adaptation of a musical work in which words are sung or are spoken that are incidental to, or in association with, the music and no copyright subsists in that work or, if copyright does subsist therein, the conditions specified in subsection (1) are fulfilled in relation to such copyright and—

(a) the words consist or form part of a literary work in which copyright subsists; and

(b) the records referred to in subsection (1) (a) were made or imported by or with the licence of the owner of the copyright in that literary work; and

(c) the conditions specified in subsection (1) (b) and (d) are fulfilled in relation to the owner of that copyright, the making of the record shall not constitute an infringement of the copyright in the literary work.

(3) For the purposes of this section an adaptation of a work shall be deemed to be similar to an adaptation thereof embodied in a previous record if the two adaptations do not substantially differ in their treatment of the work, either in respect of style or, apart from any difference in number, in respect of the performers required to perform them.

(4) A manufacturer may for the purposes of paragraph (a) of subsection (1) make the prescribed enquiries in order to ascertain whether the previous records referred to in that paragraph were previously made in or imported into the Republic, and if the owner of the copyright fails to reply to such enquiries within the prescribed period, the said previous records shall be taken to have been made or imported, as the case may be, with the licence of the owner of the copyright.

(5) The preceding provisions of this section shall apply also with reference to records of a part of a work or an adaptation thereof: Provided that the provisions of subsection (1) shall not apply with reference to—

(a) a record of the whole of a work or an adaptation thereof unless the previous records referred to in paragraph (a) of that subsection were records of the whole of the work or of a similar adaptation; or

(b) a record of a part of a work or an adaptation thereof unless the records previously made in or imported into the Republic as contemplated in paragraph (a) of that subsection were of, or included, that part of the work or of a similar adaptation.

Section 15- General exceptions from protection of artistic works:

(1) The copyright in an artistic work shall not be infringed by its inclusion in a cinematograph film or a television broadcast or transmission in a diffusion service, if such inclusion is merely by way of background, or incidental, to the principal matters represented in the film, broadcast or transmission.

(2) The copyright in a work of architecture or in the relevant drawings shall not be infringed by the reconstruction of that work on the same site in the same style as the original.

(3) The copyright in an artistic work shall not be infringed by its reproduction or inclusion in a cinematograph film or a television broadcast or transmission in a diffusion service, if such work is permanently situated in a street, square or a similar public place.

(3A) The copyright in an artistic work of which three-dimensional reproductions were made available, whether inside or outside the Republic, to the public by or with the consent of the copyright owner (hereinafter referred to as authorized reproductions), shall not be infringed if any person without the consent of the owner makes or makes available to the public three-dimensional reproductions or adaptations of the authorized reproductions, provided that the authorized reproductions primarily have a utilitarian purpose and are made by an industrial process.

(4) The provisions of section 12 (1), (2), (4), (5), (9), (10), (12) and (13) shall mutatis mutandis, in so far as they can be applied, apply with reference to artistic works.

UAE Small Flag UAE

Patents and utility certificates

  • Acts done for non-industrial/commercial purposes (this defence is only available in relation to patents infringement)
  • Activities related to academic research (this defence is only available in relation to patents infringement)
  • Good faith acts done by a person in the UAE prior to the filing date or priority date of a patent or utility certificate and that subsequently constitute an infringement

Trademarks

  • There are no statutory defences to trademark infringement.

A cancellation action against claimant's rights may be contemplated but it will be a separate action to the infringement claim.

Copyrights and Neighbouring rights

  • Copy of a published work for personal and non-commercial use (with the exception of works of fine art or applied art in private places, architectural works, computer programs and database – apart from a backup copy)
  • Copy of a protected work for use in judicial and similar proceedings
  • Copy of a protected work at libraries or documentation centre for the preservation of original documents
  • Copy at libraries or archives for a person's studies or research
  • Quotation of an extract of a protected work for the purpose of criticism or information
  • Performance of a protected work in family gatherings of in educational institutes against no remuneration
  • Broadcasting of fine arts, applied and plastic arts, and architectural works located in public places
  • Copy of short excerpts for cultural, educational or religious needs, for no profit
  • Copy by the press of extracts of publicly available works
  • Copy by the press of protected works relating to issues preoccupying the public opinion
  • Copy of public lectures and speeches for the purpose of reporting news

Designs

  • Good faith acts done by a person in the UAE prior to the filing date or priority date of an industrial drawing or design and that subsequently constitute an infringement

New plant varieties

  • Scientific experiments
  • Activities done for the purpose of deriving new varieties and
  • The use by farmers in their own holdings for the purpose of the propagation of the harvest they gained through growing the plant variety for non-commercial use.

United States Small Flag United States

Patent infringement defenses generally involve establishing that an accused device does not infringe the claims(s) of the patent or invalidity of an asserted patent. Non-infringement includes establishing that the accused device does not meet one or more elements found in the asserted claim(s). And a patent can be found invalid by establishing, for instance, that the invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the patent or that the applicant for the asserted patent committed inequitable conduct while obtaining the patent thereby rendering the patent unenforceable.

Trademark defenses include no likelihood of confusion and any of the available attacks on the validity of a trademark registration as well as equitable defenses such as laches and estoppel. Copyright infringement defenses include failing to establish ownership or copying as well as a number of other defenses, such as fair use, copyright invalidity, a license/assignment from the copyright owner, and joint ownership of the work along with equitable defenses. A statute of limitations defense is also available for copyright disputes.

Germany Small Flag Germany

Defences to infringement are for example:

  • Invalidity of the intellectual property right - for example cancellation for non-use of a trademark,
  • non-infringement,
  • statutory exemptions, for example Section 23, 24 Trademark Act (descriptive use, exhaustion),
  • experimental use,
  • use for making an application for market authorisation,
  • non-commercial use,
  • compulsory licence,
  • forfeiture of rights,
  • statutes of limitation,
  • competition law defence.

Invalidity of the patent is not a defence as such. However, the court can stay infringement proceedings pending the outcome of invalidity proceedings.

Switzerland Small Flag Switzerland

Defences available include non-infringement, nullity of the intellectual property right, right to be granted a licence where compulsory licenses exist, prior use, exhaustion of the intellectual property right, special privileges (such as farmer's privilege, research privilege or teaching privilege), private use, and forfeiture of rights.

Ukraine Small Flag Ukraine

The defences to infringement may include:

  • the expiration of the limitation period;
  • the absence of infringed rights or legitimate interest of the claimant;
  • the right to prior use;
  • the non-commercial /scientific / research use of IPR object, proof that the use of the IPR object falls within other exceptions and/or limitations prescribed by the law;
  • proof that alleged activities do not constitute infringement;
  • a defence of intellectual property rights invalidity can be raised by filing the counterclaim;
  • use under force majeure circumstances, subject to notification of the patent owner as soon as it becomes possible and subject to later payment of remuneration for the use of a patent;
  • a parallel claim for compulsory licensing; etc.

Turkey Small Flag Turkey

In the event that any registered trademark contains the name or address of real persons, makes explanations about the type, quality, quantity, intended use, value, geographical source, manufacture or presentation time or attributes of the commodities or services or else they are incorporated into especially accessories, spare parts or equivalent parts in cases where it is necessary to indicate the intended use of the commodities or services, the owner of the trademark may not prevent any such use. Also, the use of geographical indications or traditional product names shall constitute use in goodwill under IPL to the extent that any such use of the name of the real person or title of the legal person in terms of geographical indications or traditional product names does not mislead the public for commercial purposes and such uses shall not constitute infringement of the relevant rights.

Sweden Small Flag Sweden

General
Firstly, it should be noted that regarding all infringement claims under Swedish IP law the plaintiff has the burden of proof to show that an infringement constituting action has been made by the defendant.

However, this is not to confuse with specific assessment that the court has to make regarding if the actual IP-right has been infringed. Under Swedish law, such assessments are considered as legal questions rather than evidential issues. Hence, establishing infringement in this regard is not dependent on a production of evidence by the plaintiff. On the contrary, the court assesses the infringement assertion independently with regard to the scope of protection of the intellectual property right. However, and as described in detail below, it is not uncommon that the parties invoke a substantial amount of indirect evidence even in this regard.

Copyright
Since copyright is an unregistered right the court must first find that the plaintiff’s work is protected under the Copyright Act in order to grant a claim for infringement. Regarding the criteria for a work to be protected by copyright, please see section A. Secondly, and in order to establish infringement it must be found that the infringing product shows a substantial amount of similarities so that it must be considered as within the scope of protection of the plaintiff’s work. The extent of the scope of protection is determined with regard to the originality of the work.

Useful evidence in order to convince the court that the work should be entitled to copyright is expert opinions from Svensk Forms Opinionsnämnd or expert opinions written by a reputable professor.

Due to the fact that copyright is not a registered right in Sweden a common defense is to claim that the plaintiff’s work is not protected under the Copyright Act. Further, a useful objection is to focus on narrowing the scope of protection due to lack of originality of the work.

In this regard, useful evidence is to invoke similar prior art in order to show the lack of originality of the work. Since a lack of originality affects both the possibility for a work to obtain copyright as well as it scope of protection this is can be an effect full defense strategy.

Trademarks and trade names
Since trademarks and tradenames provides a mutual protection for each other (also known as “the cross-protection”), and are assessed under similar infringement criteria they are described jointly under this section.

In order to establish trademark infringement the court must find that there is a likelihood of confusion between the plaintiff’s trademark and the mark used by the defendant. This is the case if the infringer’s use of the mark leads to the belief that there is a connection between the party using the mark and the proprietor of the mark.

Well known trademarks have a greater protection which also includes a prohibition against use of reputation and measures by other traders that negatively affects the trademark’s distinctiveness or reputation.

Common evidence in infringement cases regarding trademarks are market surveys. Such market surveys are specifically used to show that a trademark is well known within the relevant public in order to entail the greater protection entitled to well-known trademarks. According to established case law the plaintiff must prove that at least one third of the relevant public has knowledge of the mark in order for it to be considered as well known. Aside from market surveys, expert opinions by reputable professors within the field are also common evidence.

A common defense strategy is to attack the validity of the plaintiff’s trademark. Invalidity proceedings are also filed with the Patent and Market Court and are usually handled jointly with infringement cases. Depending on the handling of the infringement case, the court can decide that there should be a stay in the proceedings in the infringement case awaiting the outcome of the invalidity case.

Marketing law
Even though the Marketing Act is not primarily legislation that protects intellectual property there are several grounds that can be invoked in order to target other trader’s infringing actions. The most common claims relating to intellectual property are the prohibitions against misleading about commercial origin and misleading use of another trader’s known and distinct product design. In addition to these specific grounds there is also a general prohibition against unfair marketing.

In respect of the general prohibition, marketing can be considered unfair if the marketing makes undue use of the reputation of another party, its products, services, trademarks etc. This applies even if the use of product features, names etc. would not be misleading in the sense that it could cause confusion about the commercial origin of the products or services concerned.

In all cases under the Marketing Act the plaintiff must show that the marketing affects or is likely to affect the consumer’s ability to make a well-founded business decision – the so-called transaction test. The burden of proof under these grounds means that it is sufficient to show that the marketing leads the consumer to make a decision that he/she would not otherwise have made. As regards confusingly similar products the assessment is very similar to the one made in trademark infringement cases. Generally, if the court finds that there is a likelihood of confusion it should suffice to be considered to affect the consumers’ ability to make a well-founded business decision.

Common evidence in cases based on the Marketing Act is market surveys that are mainly invoked to show the consumers knowledge and appreciation of the plaintiff’s products. Even though recent case law within this field has shown that such evidence in terms of market surveys are usually given a limited value due to leading questions, or lack of representativeness etc. they are still beneficial if used correctly.

Patents
According to Swedish case law the court may apply the doctrine of equivalence in order to asses an alleged infringement. In summary, the court must find the following in order to find that an infringement of a patent has occurred: (i) the inventive idea has been used; (ii) the problem underlying the solution is the same as in the patent; (iii) the result of the solution is similar; and (iv) the functional result is the same.

In addition, there are a number of indicators that the court consider suggest that the doctrine is not applicable: (i) a simple construction solution; (ii) the missing feature is particularly important in respect of the invention; (iii) the skilled person would not be able to think of replacing the missing feature by the feature according to the contested embodiment; (iv) the patent claim would cover prior art; and (v) it is clear from the application file that the disputed feature was introduced during the prosecution to limit the scope of the invention.

As regards defense strategies and in addition to a denial of infringement, the defendant can argue that the patent in question does not meet the requirements for a valid patent. In such case, the defendant has to file a claim for revocation of the patent with the court.

There are a few aspects of infringement and invalidity which are subject to specific rules on burden of proof. For example, if the patent concerns a method for production of a new substance the alleged infringer has the primary burden of proof to show that the substance has been produced with an alternative, non-infringing method. In respect of invalidity proceedings the burden of proof to show the invention possesses the patented technical effect switches to the patentee if the plaintiff makes it probable that such effect is lacking. If the invalidity attack is based on lack of novelty due to prior public use of the claimed invention, such use must be proven ‘up to the hilt’ involving a stricter burden of proof.

Unlawful use or disclosure of trade secrets
The Trade Secrets Act presents three main grounds that can be used against an infringing exploitation of intellectual property. All grounds have in common that it must be shown that the defendant has used or disclosed the trade secret intentionally or with negligence.

The trade secret itself could have been learned by the defendant either through (i) an employment, (ii) in confidence in conjunction with a business relationship, or (iii) from a person that has attained the trade secret in violation of (i) or (ii).

Further, and order to establish an unlawful use or reveal of the trade secret, the plaintiff must first show that the information in fact is a trade secret, see section A on which kind of data is covered by the act. Useful evidence in this regard could be confidentiality agreements and confidentially policies used by the entity.

As regards trade secrets that are given under the course of an employment it must be showed that the person knew or should have known that he was not permitted to disclose such secret.
As regards trade secrets which are learned in confidence in conjunction with a business relationship there is no requisite for the plaintiff to show that the person knew or should have known that he was not permitted to disclose the secret. This follows from the fact that the trade secret was learned in confidence.

Moreover, it is also prohibited to intentionally or by negligence disclose or use a trade secret which, pursuant to what he or she knew or should have known, was disclosed in contravention of the Freedom of Information and Official Secrets Act.

A defense strategy other than a denial of the use or disclosure of the trade secret is to claim that the information should not be considered as a trade secret. Useful evidence in this regard is to invoke documentation or correspondence that shows that the information was not held secret in a way that could categorise it as a trade secret.

Designs
In order to show that an infringement has been made in a registered design the court must find that the alleged infringing design does not produce, on the informed user, a different overall impression than that of the registered design. In assessing the scope of protection it is explicitly set out in the Design Protection Act that the degree of freedom of the designer in developing the design shall be considered.

A defense strategy in infringement cases, besides the objection that the scope of protection does not cover the infringing product, is to file a claim that the registration should be revoked. Useful evidence in this regard is similar prior art that can be used both to show the lack of novelty, which is a criteria for registration, or to argue that the scope of protection should in practice be limited to imitations due to the lack of freedom to variation within the field.

Registered plants varieties
In order to show that an infringement has been made in a registered plant, aside from direct imitations, the court must find that the alleged infringing plant is in breach with one of the following requisites: (i) the plant is not clearly distinguishable from the variety which has been registered, (ii) the plant is essentially derived from the registered variety, where the registered variety is not, in itself, an essentially derived variety; or (iii) the plant can only be produced through repeated use of the protected variety.

A plant variety shall be deemed to be essentially derived where it is predominantly derived from the original variety, or from a variety that in itself is

  1. predominantly derived from the original variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the original variety,
  2. is clearly distinguishable from the original variety; and
  3. except for the differences which result from the act of derivation, conforms with the original variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the original variety.

A defense strategy other than to claim that the plant does not infringe in the registered right under the grounds set out above is to commence revocation proceedings against the registration.

Topographies for Semiconductor Products
In order to show that an infringement has been made in a right to topography of a semiconductor product the court must find that the infringer has made reproductions of the topography, imported reproductions of the topography for commercial purposes or made the topography available to the public by offering reproductions of the topography for sale, rental, lending or other public distribution.

The relevant statute in the act prescribes that “reproduction of a topography” also includes a semiconductor product which has been manufactured using the topography.

The right to topographies for semiconductor products shows essential similarities to copyright. Hence, the right does not protect the idea but the pattern itself. Thus, the court will not assess whether the alleged infringing product functions in the same way as the plaintiff’s right but instead whether the same pattern has been used.

Since the right to topographies for semiconductor products is an unregistered right, a defense strategy is to claim that the plaintiff’s product should not be protected under the Topographies for Semiconductor Products Act. Based on the criteria for protection, such objection should focus on the assertion that the plaintiff’s product is not based on an intellectual effort and that the topography consists of elements that are commonplace in the semiconductor industry. Useful evidence in this regard is therefore to invoke other topographies that support this argument along with an expert opinion.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:

  • Non-infringement conduct: defendant might state that he/she does not exploit the patent's subject-matter since the challenged conduct does not fall within the scope of the patent.
  • Invalidation: the grounds for invalidating a patent can also be raised as a defence to a patent infringement claim.
  • Prior use in good faith (started or prepared before the patent's priority date): the patent over cannot enforce its rights against a third party in good faith, who would be entitled from continuing or commencing working the patent or from making preparations in the same manner as before in such a way as to meet the reasonable needs of their business.
  • Statute of limitations: time limit for bringing a civil action for infringement of a patent shall be five years from the time that the claim could have been filed.
  • Private use: patents cannot be enforced against acts carried out in private, having no commercial purpose.
  • Experimental use ("Bolar exception"): patents cannot be enforced against acts carried out for experimental purposes relating to patent's subject matter. Performing studies and trials needed for obtaining authorization for the commercialization of pharmaceutical drugs is also excluded from patent enforcement.

The defendant who is the owner of a later patent may not invoke its exclusive rights to defend himself against a patent infringement claim against him based on a prior patent.

TRADEMARKS:
Possible defenses to trade mark infringement are:

  • Invalidity of the registered trade mark;
  • Non-use of the claimant's trade mark within an uninterrupted five-year period;
  • Fair use;
  • Lack of confusion;
  • Exhaustion of owner's rights.

DESIGNS:
Possible defenses to design infringement are.

  • Invalidity of registered design (lack of novelty or individual character).
  • Lack of infringement (different general impression on the informed user).
  • Acts done privately and for non-commercial purposes.
  • Acts done for experimental purposes.
  • Acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.
  • Servicing and repairing of foreign vessels and aircrafts on a temporary stay on Spanish territory.
  • Exhaustion of owner's rights.
  • Prior use.

COPYRIGHTS:
The usual defences to copyright infringement actions are:

  • Lack of infringement.
  • Lack of originality of the claimant's work.
  • The content of the claimant's work was already in the public domain.
  • The copyright is exhausted.
  • Application of a copyright exception.
  • Parody defence.

The Copyright Act refers to the following exceptions to copyright enforcement:

  • Provisional reproduction and private copy.
  • Public security official procedures and disabilities.
  • Quotations and summaries for educational reasons or scientific investigations.
  • Articles on topical subjects.
  • The legitimate user of a database can, without the authorisation of the owner, perform all the necessary acts to access the content of the database and use it.
  • Technical recording by cable or satellite.
  • Reproduction, loan and consulting for investigation or preservation in specific premises such as museums, libraries or cultural institutions.
  • Official acts and religious ceremonies.

Provided that they are applicable, the same defences could be used for related rights.

Israel Small Flag Israel

The first defense argument is the claim that the owner of the right, has no rights and / or should not have received it. In patents, the claim will be that the owner should not have given the patent. In copyrights, a claim that the owner has no rights in the work, etc. The second defense argument is that there is no infringement. In patents, the infringement does not fall within the scope of patents claims, in designs – this is not a blatant imitation of the design. Copyright – no significant part of the work was taken, in trademarks – that there is no misleading similarity.

Each of the laws has specific defenses, such as in patents – Prior use defense (section 53 to the Israeli Patent law):

53. If, on the determining date, a person in Israel in good faith exploited the invention for which the patent is applied for, or if he in good faith made actual preparations for its exploitation, then he shall be entitled to exploit the invention himself and in the course of his business without consideration; for the purpose of this provision, the “determining date” is the date on which application for the patent was submitted in Israel or—if priority right under section 10 is claimed for that application—the date of submission of the previous application on which the claim for priority right is based.

Other defenses available to an alleged infringer include:

The patent is not infringed because:

  • The activity of the alleged infringer does not fall within the scope of the claims; or
  • The activity does not fall within the definition of ''exploitation'' of the invention, such as non-commercial use, experimental use aimed at improving the invention or making another invention and experimental use towards obtaining regulatory marketing approval for use after the expiry of the patent.
  • Invalidity of the patent.
  • The ownership of the invention belongs to the alleged infringer and not to the patent holder.
  • The alleged infringement was commenced after publication of the patent's expiry, even though it was subsequently reinstated.
  • The allegedly infringing use is made by a prior user, who under the law has the right to continue such use.

The patent holder has acquiesced or impliedly consented to the allegedly infringing use. Additional defences in all areas of intellectual property are defences of equity, such as acquiescence, laches, fair use, innocent infringer and good faith.

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Patents:

Infringement is not qualified in the following situations:

I. to acts carried out by unauthorized third parties, privately and without commercial purposes, provided these acts do not prejudice the economic interests of the patentholder;

II. to acts carried out by unauthorized third parties for experimental purposes, in connection with scientific or technological studies or researches;

III. to the preparation of a medicine in accordance with a medical prescription for individual cases, carried out by a qualified professional, as well as to the medicine so prepared;

IV. to a product manufactured in accordance with a process or product patent that has been introduced onto the domestic market directly by the patentholder or with his consent;

V. to third parties who, in the case of patents related to living material, use the patented product, without economic intent, as an initial source of variation or propagation to obtain other products; and

VI. to third parties who, in case of patents related to living material, use, place in circulation, or market a patented product that has been legally introduced into commerce by the patentholder or the holder of a license, provided that the patented product is not used for commercial multiplication or propagation of the living material in question

Industrial Designs: items I, II and IV of the defence to patent infringement apply to Industrial Designs

Trademarks:

The titleholder of a mark may not:

I. prevent merchants or distributors from using their own distinctive signs along with the mark of the product, in its promotion and commercialization;

II. prevent manufacturers of accessories from using the mark to indicate the purpose of the product, provided that fair competition practices are followed;

III. prevent the free circulation of the product placed on the domestic market by himself or by another with his consent, except as provided in Paragraphs 3 and 4 of Article 68; and

IV. prevent the mention of the mark in a speech, scientific or literary work, or in any other publication, provided it is done without commercial connotation and without detriment to its distinctive character.

Copyrights:

Article 46 of the Brazilian Copyright Law contemplates a few situations in which the use of copyright material is tolerated and not considered a violation, such as the reproduction in one copy of short extracts from a work for the private use of the copier, provided that it is done by him and without gainful intent; the quotation in books provided that the author is credited for the quoted passage; or the reproduction in any work of short extracts from existing works, regardless of their nature, or of the whole work in the case of a work of three-dimensional art, on condition that the reproduction is not in itself the main subject matter of the new work and does not jeopardize the normal exploitation of the work reproduced or unjustifiably prejudice the author’s legitimate interests.

Cultivars:

In broad terms, the breeder’s right in the plant variety shall not be deemed infringed by a person who:

I. stores and plants seeds for his own use on his premises or on the premises of third parties of which he has possession;

II. uses or sells as food or raw material the product of his planting, except for the purposes of reproduction;

III. uses the plant variety as a source of variation in genetic improvement or in scientific research;

IV. being a small rural producer, multiplies seed, for donation or exchange in dealings exclusively with other small rural producers, under programs of financing or support for small rural producers conducted by public bodies or non-governmental agencies, authorized by the Government.

Integrated Circuit Topographies:

The effects of the protection shall not apply:

I – to acts carried out by unauthorized third parties for the purposes of analysis, evaluation, teaching and research;

II – to acts which consist of the creation or exploitation of a topography which is the result of analysis, evaluation and research on the protected topography, on the condition that the resulting topography is not substantially identical to the protected topography;

III – to acts consisting of the importation, sale or distribution by other means for commercial or private purposes, of integrated circuits or products containing them, put into circulation by the holder of the corresponding integrated circuit topography registration or with his consent; and

IV – to importation of Integrated Circuit Topography, carried out or ordered by a person or persons unaware, at the time of obtaining the integrated circuit or the product, or with no reasonable grounds to suspect, that the product or integrated circuit incorporated an illegally reproduced, protected topography.

Updated: November 2, 2017