What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?

Intellectual Property

Singapore Small Flag Singapore

Copyright – When a person, without the license of the owner of the copyright, does or authorises in Singapore any act comprised in the copyright; or when a person who trades in an article in Singapore, knowing that it is an infringing article.

Registered designs – When a person makes for sale an article which is substantially similar with the registered design.

Geographical indications – Where the goods, or the packing of which, bear a term identical with a registered geographical indication, but which do not originate from the place indicated by that registered geographical indication.

Layout-designs (topographies) of integrated circuits – Proof of a 'causal connection' (i.e. that the alleged infringing chip was copied from the plaintiff's layout-design).

Patents – When a person makes, disposes of, offers to dispose of, uses, imports, or keeps the product without the consent of the patent proprietor; when a person uses, or offers for use, in Singapore, when he knows that its use without the consent of the patent proprietor it would be an infringement of the patent; or when a person disposes of, offers to dispose of, uses, imports, or keeps any product obtained directly by means of the patented process.

Plant varieties – When a person, who is not entitled to do so, does or authorises the doing in Singapore of the production or reproduction; conditioning for the purpose of propagation; offers for sale; sells or markets; exports; imports; or stocks for any of the aforementioned purposes a registered plant variety.

Trade marks – Where there is identity between marks and between goods/services; confusion caused by similarity between marks and between goods/ services. As for the common law action of passing off, goodwill, misrepresentation, and damage is required.

Trade secrets/know-how – Necessary quality of confidence; obligation of confidence; unauthorised use of information.

France Small Flag France

Unless otherwise provided by the IPC, the burden of proof to establish infringement rests with the claimant pursuant to CC article 9.

Under French law, the general principle is that infringement should be assessed in relation to overall similarities and not to differences.

Therefore, the claimant should establish, regarding:

  • copyright, that the counterfeiting work reproduces the original features of the prior work;
  • design, that the counterfeiting design or model produces the same visual impression that the prior design or model;
  • trademark, that the litigious sign is identical or similar to the prior trademark, designates identical or similar products or services and creates a likelihood of confusion for the consumer;
  • patent, that the litigious product reproduces or has been manufactured following a process that reproduces the patent’s claims.

Pursuant to French procedure rules, infringement can be established by any means.

However, the following means are usually preferred to establish the existence and the extent of the alleged infringement:

  • seizure: IPRs holders may request ex parte the authorization from the president of the Court of first instance to have a bailiff, possibly accompanied by the relevant expert(s) and/or police officer(s), enter the alleged infringer or a third party’s premises, to gather evidence of the infringement and, notably, seize or describe the infringing products or process, collect and copy any relevant documents demonstrating the infringement and the extent of the prejudice suffered (see. Copyright (IPC art. L.332-1 and 4); Design (L.521-4); Patent (L.615-5); Plant varieties (L.623-27-1); Trademarks (art. L.716-7);
  • customs withholding: IPRs holders may request from customs to hold allegedly counterfeiting goods (see. Copyright (IPC art. L.335-10), Design (L.521-14); Patents (L.614-32); Plant varieties (L623-36); Trademarks (L.716-8); Geographical indications (L.722-9);
  • expert reports either appointed by the judge or amicably requested from a party;
  • investigation reports survey or witness statements;
  • bailiff reports.

Portugal Small Flag Portugal

R: Portuguese law only requires evidence of the existence of the previous right and evidence of the real infringement. If the owner of a previous right believes that thirst parties are infringing theirs rights, they shall prove that.

India Small Flag India

Patent: In case of infringement of product patent, it is essential for the plaintiff to establish that the product used by the defendant is identical or similar to the product patented by the plaintiff. However, in case of process patent, the onus of proof to establish that the process used by her is to obtain a product identical to the product of the patented process. In view of the same, any form of documentary evidence may be produced before the court to establish that there is infringement or non-infringement. Both the parties may also provide expert evidence in the form of affidavits.

Trademark: infringement requires that the impugned mark be identical or similar to the senior mark, and typically used in relation to the same goods and services. Infringement actions can only be taken in relation to registered Trade marks. Further, plaintiff may be required to prove goodwill and reputation, deception, and damage or likelihood of damage to the plaintiff.

Copyright: any unauthorised publication of the copyrighted work will constitute infringement.

Geographical indication: No infringement proceedings

Confidential information and know-how: will depend on the contractual relationship between the parties.

Designs: For design infringement, it must be established that there has been a piracy of design, and in that context, any form of documentary evidence, or infringing articles may be produced before the court as evidence.

Greece Small Flag Greece

To establish infringement, the aggrieved party must (i) establish its rights and (ii), depending on the type of IP right, prove the actions / behaviour amounting to unauthorised use, and/or interference with the exercise of its rights by the defendant. In particular:

  • Patents, utility models. The courts take a holistic approach to the subject-matter of the patent asserted in order to decide whether the defendant's activity is covered by the claims of the patent. This approach can be seen as an application of the doctrine of equivalents, although the case law is not very sophisticated. The same approach is applied mutatis mutandis for plant varieties and semiconductor topographies.
  • Registered designs. Identity and/or an impression of similarity in the eyes of the "informed user" of the design must be proven to establish infringement.
  • Trademarks, unregistered designs and marks. Identity and/or confusing similarity between the marks involved are necessary to establish infringement. Also, in the case of famous TMs, the court will assess whether, regardless of confusing similarity, (i) there is such similarity between the famous TM and the later mark as that the relevant public establishes a link between the two and (ii) use without due cause of the later mark for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
  • Trade secrets. Unauthorised communication of a business's confidential information by an employee or third party to others, with competitive intent.
  • Copyright. Unauthorised interference with the rights of the copyright owner, such as unauthorised reproduction, adaptation etc.

For the purposes of injunctive relief, the culpability of the defendant is not relevant. However, for the purposes of a damages award, the plaintiff must, at minimum, prove negligence on the part of the defendant.

Evidence necessary to establish infringement should include proof of plaintiff's rights (e.g. registration certificates, evidence of use of the relevant rights, such as samples of products, photos, documents of third parties) and proof of the defendant's actions (e.g. samples or photos of infringing goods, photos, web site screen shots). Witness testimonies, market surveys and expert opinions are also very useful.

Japan Small Flag Japan

Patents
The grounds are:

  • Direct infringement: Producing, using, or assigning patented products or using patented methods, and so on.
  • Indirect infringement: Producing or assigning products exclusively used for patented products, or methods for commercial purposes, and so on.

Trade Secrets
Grounds for an action include acquiring, using or disclosing through wrongful acquisition. The other grounds are specified in the Unfair Competition Prevention Act.

Registered Trademarks
Infringing actions include:

  • Using a mark that is identical or similar to a registered trade mark for a person’s goods or services that are identical or similar to designated goods or services
  • Possessing goods with a mark on the goods or packaging that is identical or similar to a registered trade mark for the purpose of assignment, etc.

Copyright
Grounds include:

  • Infringement of rights of reproduction, recitation, exhibition, etc.
  • Infringement of the author’s moral rights
  • Deemed infringement, such as importing goods produced by an infringing act supposedly when it occurred for commercial purposes, etc.

Design Rights
The grounds are:

  • Direct infringement: Manufacturing, selling, etc. a registered design or any similar design for commercial purposes.
  • Indirect infringement: Producing, assigning, etc. any product to be used exclusively for the production of a product using a registered or similar design for commercial purposes.

Generally, documents to show the accused constructions/operation of products, process and/or services, etc are important as evidence.

Mexico Small Flag Mexico

Inventions

IP right

Requirements for establishing infringement

Necessary evidence

Patents

Any non-authorized use of the intellectual property right (unfair competition).

All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.

Utility models

Industrial designs

Integrated circuits

Trade secret

Disclosure.

Brands

IP right

Requirements for establishing an Infringement

Necessary evidence

Trademarks

Any non-authorized use of the intellectual property right (unfair competition).

All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.

Trade names

Slogans

Appellations of Origin

Any non-authorized use of the intellectual property right (unfair competition).

Copyright and other rights

IP right

Requirements for establishing an Infringement

Necessary evidence

Copyright

Any non-authorized use of the intellectual property right as well as any violation of the author’s moral rights.

All sort of evidence is allowed but that one contrary to the morality or the law.

Examination of parties is not allowed but only when the case is decided by a civil court.

Related rights

Any violation of the holder’s rights.

Reservation of rights

Any non-authorized use of the intellectual property right.

Plant varieties

Any non-authorized use of the intellectual property right.

All sort of evidence is allowed but that one contrary to the morality or the law.

China Small Flag China

Copyright infringement requires evidence the plaintiff owns the relevant work which is capable of copyright protection and the defendant has copied a whole or substantial part of the copyright work without permission. Ownership can be proven through copyright statements asserting ownership, photographs of the work, a copyright registration certificate or an agreement governing copyright ownership.

Patent Infringement requires evidence the plaintiff owns the relevant patent right. For invention or utility model patents, the plaintiff must prove that the defendant has, for commercial purposes, manufactured, used, offered for sale, sold or imported a product which infringes the patent in suit. Invention patent infringement includes the use of a process, offering for sale or selling a product directly obtained through a process which infringes the patent. Plaintiffs may argue construction both literally and/or using the doctrine of equivalents. In relation to a design patent the plaintiff must prove the defendant, for business purposes, manufactured, offered for sale, sold or imported a product which infringes the patented design (i.e. it is the same or substantially similar to the design patent).

Trademark infringement firstly requires evidence that the plaintiff owns the relevant trademark. The plaintiff must prove the defendant is using a mark that is identical to a registered trademark on the same goods without the authorisation of the trademark registrant or using a mark that is similar to a registered trademark on the same goods, or using a mark that is identical with or similar to a registered trademark on similar goods, which may lead to customer confusion, without the authorisation of the trademark registrant. Proof of use can include product packages, sale contracts, advertising materials, products bearing the mark.

Evidence of similarity should be supplied in the form of a comparison with the plaintiff's mark.
Trade secret actions require evidence of breach of China's Anti-Unfair Competition Act. To achieve this, the plaintiff must show that the defendant improperly obtained their business secrets by theft, promise of gains, intimidation or other improper means. Disclosing, using or allowing others to use the business secrets improperly obtained will also amount to a breach. The plaintiff must prove the relevant trade secrets have been properly contained to remain confidential.

The Anti-Unfair Competition Act can be the basis of an action in respect of various counterfeiting actions and unauthorised use of another's brand. Article 5(2) of the Act provides that unfair competition includes unauthorised use of names, packaging or decoration unique to well-known goods (or services) or the names, packaging or decoration similar to those of well-known goods (or services) so that their goods are confused with the well-known goods of others, causing buyers to mistake them for the well-known goods of others. Article 5(3) provides alternative grounds for an unfair competition claim. This requires evidence of the use, without authorisation, of another's enterprise name or personal name, leading purchasers to mistake goods for the goods of others. It is necessary to provide evidence that the plaintiff's name, packaging, or decoration was sufficiently unique or similar to create a link in consumers' minds. This is similar but distinct from proving well-known trademark status, which is a much higher standard.

Evidence could be pleadings by the parties, documentary evidence, audio-visual materials, electronic data, witness testimony, expert opinion and inspection records and examination. It is common to submit documentary evidence as proof of infringing activities with notarised purchases serving as evidence of manufacture/sale of infringing goods.

United Kingdom Small Flag United Kingdom

At the outset of court proceedings, the claimant's 'particulars of claim' must set out in a succinct way the alleged legal basis for the claimant's claim and the facts relied upon to substantiate liability.

Once the exchange of pleadings has completed and the factual and technical issues between the parties are apparent, disclosure may be given, and witness evidence and/or expert evidence may submitted by the parties in support of their respective cases, in accordance with the procedure outlined above. The burden of establishing infringement lies upon the party alleging it, the standard being the balance of probabilities. However in some contexts the evidential burden may shift.

Patents
It is an infringement of a patent to do any of the following in the UK while the patent is in force without the consent of the proprietor of the patent:

a. Where the invention is a product: make, dispose, offer to dispose, use, import, or keep the product (whether for disposal or otherwise) in the UK.

b. Where the invention is a process: use the process or offer it for use in the UK with knowledge, or when it is obvious to a reasonable person in the circumstances, that the use of the process without the consent of the proprietor would be an infringement; or make, dispose of, offer to dispose of, use, import, or keep any product obtained directly by means of that process.

Usually, any disclosure obligation upon the party alleged to infringe in respect of the alleged infringing product or process is satisfied by the provision of a 'product and process description'.

When the invention is a process, there may be a presumption that products are made using the patented process, shifting the evidential burden to the party alleged to infringe to show that the end product was made by non-infringing means.

Breach of confidence
Pursuant to the English common law (Coco v Clark (1969) RPC 41; Saltman v Campbell [1963] 3 All ER 413; BBC v HarperCollins [2010] EWHC 2424 (Ch)), it is a tort to use in an unauthorised manner, to the detriment of the originating party, information which has the necessary quality of confidence and is subject to an obligation of confidence. To have the necessary quality of confidence, the information must not be in the public domain or form part of an employee's general skill and knowledge. The requisite obligation of confidence may exist pursuant to a contractual obligation or the circumstances in which it was imparted.

Registered trade marks
A person will infringe a registered trade mark if he uses in the course of trade a sign:

a. which is identical to the trade mark, in relation to identical goods or services to those for which the mark is registered;

b. where because the sign is (i) identical to the registered trade mark and used in relation to similar goods or services to those for which the mark is registered, or (ii) similar to the registered trade mark and used in relation to identical or similar goods or services to those for which the mark is registered, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association.

c. that is identical or similar to the registered trade mark, in relation to goods or services (whether or not identical or similar), where the registered trade mark has a reputation in the UK and the use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of or the repute of the registered trade mark.

The assessment of the elements making up the torts, particularly those categorised as b. and c. above, is multifactorial (or 'global').

Passing off
Pursuant to the English common law (Reckitt & Colman Products v. Borden [1990] UKHL 12; Starbucks v. British Sky Broadcasting [2015] UKSC 31), the tort of passing off requires the establishment of three elements: (i) there is goodwill attached to the claimant's goods or services in the UK; (ii) there has been a misrepresentation by the defendant leading or is likely to lead the public to believe that the goods or services they offer are the goods or services of the claimant or there is some other authorised link with the claimant; and (iii) the claimant suffers damage as a result.

Designs
It is an infringement of a UK registered design and a European Community registered or unregistered design, to use the design and any design which does not produce on the informed user a different overall impression. For these purposes, 'use' includes making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

UK unregistered design right is infringed by a person who, without the licence of the design right owner, makes articles that are exactly or substantially to that design, or makes a design document recording the design for the purpose of enabling articles to be made that are exactly or substantially to that design.

UK unregistered design right is also infringed ("secondary infringement") by a person who, without the licence of the design right owner, imports into the UK for commercial purposes, has in his possession for commercial purposes or sells, lets for hire or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article (i.e. exactly or substantially to the protected design).

Copyright
Copyright is infringed by a person who, without the licence of the copyright owner, does any of the acts restricted by copyright. The restricted acts are copying the work, issuing copies of the work to the public, renting or lending the work to the public, performing showing or playing the work in public, communicating the work to the public making an adaption of the work or doing any of the above in relation to an adapation, and authorising another to do any of the above. Infringement may be by the doing of a restricted act in relation to the protected work as a whole or any substantial part of it.

Where it is shown that an article is a copy of a work and that copyright subsists or has subsisted at any time, the court will presume, until the contrary is proved, that the article was made at a time when copyright subsisted in the work. There is a presumption of infringement if: (i) the infringer had access to the original work, and (ii) the infringing work and the original are similar.

It is a "secondary infringement" of copyright to import an infringing copy (other than for private and domestic use), to possess or deal with an infringing copy, to provide means for making copies, to permit use of premises for an infringing performance and to provide apparatus for an infringing performance, where the infringer knows or has reason to believe that the item he deals in or acts he performs are infringing.

South Africa Small Flag South Africa

Patents

The patentee must prove that the alleged infringer carried out at least one of the exclusive acts reserved for the patentee, i.e. making, using, exercising, offering to dispose of, disposing of or importing, with respect to an article, method, process etc. which embodies all of the features of at least one of the claims of the patent.

Documents, exhibits, oral evidence and the like may be relied on as evidence.

Designs

The design proprietor must prove that the alleged infringer carried out at least one of the exclusive acts reserved for the registered design proprietor i.e. making, importing, using or disposing in respect of any article included in the class in which the design is registered and embodying the registered design or a design not substantially different from the registered design. Documents, exhibits, oral evidence and the like may be relied on as evidence.

Plant Breeders’ Rights

A plant breeder's right shall be infringed by any person who –

(a) not being the holder of the plant breeder's right, performs, or causes to be performed, any of certain prohibited acts without a licence;

(b) has obtained a licence but fails to comply with any term or condition thereof;

(c) uses the approved denomination of a protected variety in relation to plants or propagating material of any other variety for any purpose whatsoever; and

(d) sells plants or propagating material of a protected variety under any other denomination than the approved denomination of that variety.

The prohibited acts are the following:

(a) production or reproduction (multiplication);
(b) conditioning for the purpose of propagation;
(c) sale or any other form of marketing;
(d) exporting;
(e) importing;
(f) stocking for any of the purposes referred to in paragraphs (a) to (e),
of –

(i) propagating material of the relevant variety; or

(ii) harvested material, including plants, which was obtai
ned through the unauthorised use of propagating material of the relevant variety.

Any evidence normally permitted or required in a court of law can be used.

Trade Marks

The rights acquired by registration of a trade mark shall be infringed by—

(a) the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;

(b) the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;

(c) the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception.

The proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain the use in the Republic of a trade mark which constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services which are identical or similar to the goods or services in respect of which the trade mark is well known and where the use is likely to cause deception or confusion.

A certified extract from the register of trade marks certified by the Registrar of Trade Marks and sealed with the seal of his office shall be admitted as evidence to prove a trade mark registration. In order to prove that a trade mark is well-known, evidence needs to be adduced to support that the trade mark is known by a substantial number of persons in the relevant sector of the public.

Copyright

Copyright shall be infringed by any person, not being the owner of the copyright, who, without the licence of such owner, does or causes any other person to do, in the Republic, any act which the owner has the exclusive rights to do or to authorise. This is regarded as direct copyright infringement.

Indirect copyright infringement occurs when any person who, without the licence of the owner of the copyright and at a time when copyright subsists in a work—

(a) imports an article into the Republic for a purpose other than for his private and domestic use;

(b) sells, lets, or by way of trade offers or exposes for sale or hire in the Republic any article;

(c) distributes in the Republic any article for the purposes of trade, or for any other purpose, to such an extent that the owner of the copyright in question is prejudicially affected; or

(d) acquires an article relating to a computer program in the Republic,

if to his knowledge the making of that article constituted an infringement of that copyright or would have constituted such an infringement if the article had been made in the Republic.

Evidence of ownership of copyright is required to be adduced. This could be a difficult evidentiary burden to overcome, especially if it is not possible to obtain an affidavit from the author of the work, confirming that the work is original.

UAE Small Flag UAE

Registered rights are vital to take action against infringements and counterfeits. Without registered rights, action through administrative or criminal actions are not possible, your only options will be a civil court case.

Patents and utility certificates

  • Proof of granted rights in the UAE
  • Proof that the defendant has, for commercial purposes,
  • If the granted right covers a product: manufactured, used, retained, sold, or imported an infringing product without the permission of the right owner.
  • If the granted right covers an industrial process: used an infringing process and the product obtained directly therefrom, and/or retained, imported said product, without authorisation.
  • Criminal liability may only be incurred if the infringement was intentional.

Trade marks

  • Proof of registered or unregistered trade mark rights in the UAE
  • Proof that the defendant has:
  • counterfeited or imitated a lawfully registered trade mark in a manner that would lead to the deception of the public, for the same or similar goods and services;
  • knowingly used a counterfeit or imitated trade mark;
  • affixed on a product a registered trade mark in bad faith or used without a right to do so;
  • knowingly sold, offered to sell, circulated or possessed (with intent to sell) goods bearing a counterfeited, imitated or wrongfully affixed trademark (this provision protects unregistered as well as registered rights): or
  • knowingly provided or offered to provide services under a counterfeited or imitated trademark or otherwise used a trademark without a right to do so (again this provides some protection for unregistered marks).

The forgoing acts constitute criminal offenses under the articles 37 and 38 of the UAE Trade Mark Law. A defendant may not have committed any of these offenses (and may therefore not bear criminal liability) but may nevertheless have infringed claimant's trademark rights if it has:

  • used an identical or a similar mark for products or services that are identical with or similar to the products or services for which claimant's trade mark is registered, in such a way that confuses the consumers.

However, in such a situation, the claimant will not have a right to seek compensation for the damage suffered as a result of the infringement to the extent that such right results from the commission of one of the criminal offenses as listed in articles 37 and 38.

Copyrights and Neighbouring Rights

  • Proof of ownership of the copyrights in the relevant work (the relevant paper trail showing the ownership of the rights to the claimant is paramount).
  • Proof that defendant has, without a written permission from the author or the holder of the neighbouring right or their successors:
  • made any protected work, performance, phonogram, broadcasting program available to the public
  • sold, rented or put in circulation by any way whatsoever a protected work, phonogram, broadcasting program protected in accordance with the provisions of this law.
  • manufactured or imported without having a right, for the purpose of sale or rental of any equipment, instruments or apparatus designed or prepared for the purpose of fraud against any technology used by the author or the holder of the neighbouring right to arrange or administer such rights or for preservation of specific standard of quality of the copies.
  • delayed or disgraced, without having a right, any technological protection or electronic information meant to arrange and administer the protected rights
  • loaded or stored any copy of the programs, applications, or databases in the computer before having a license from the author, the right holder of their successor.
  • used a computer programs or its application without a prior permission from the author or his successors.

The following acts constitute criminal offenses under the articles 37, 38 and 39 of the UAE Copyright Law. A defendant may not have committed any of these offenses (and may therefore not bear criminal liability) but may nevertheless have infringed claimant's copyrights in case of a violation of its moral rights.

Designs

  • Proof of registered drawing/design rights in the UAE
  • Proof that the defendant has:
  • used the industrial drawing or design for the manufacturing of any product;
  • Imported or acquired any product relating to the industrial drawing or design with the intention of using or selling that product.

Updated: June 27, 2017