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?
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.
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.
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.
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.
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.
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.
Grounds for an action include acquiring, using or disclosing through wrongful acquisition. The other grounds are specified in the Unfair Competition Prevention Act.
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.
- 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.
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.
Requirements for establishing infringement
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.
Requirements for establishing an Infringement
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.
Appellations of Origin
Any non-authorized use of the intellectual property right (unfair competition).
Copyright and other rights
Requirements for establishing an Infringement
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.
Any violation of the holder’s rights.
Reservation of rights
Any non-authorized use of the intellectual property right.
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.
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.
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.
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  3 All ER 413; BBC v HarperCollins  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').
Pursuant to the English common law (Reckitt & Colman Products v. Borden  UKHL 12; Starbucks v. British Sky Broadcasting  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.
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 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.
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.
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;
(f) stocking for any of the purposes referred to in paragraphs (a) to (e),
(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.
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 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.
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.
- 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.
- 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.
In order to prove patent infringement, the patentee must be able to show:
a. The existence of a valid patent which may be proved by the Letters Patent;
b. His right to the patent; and
c. Evidence proving any of the acts of making, using, offering for sale, selling, or importing of the patented product in violation of the patentee’s right.
In order to prove trademark infringement, the following must be shown:
a. The trademark being infringed is registered in the IPO, which may be proved by the Certificate of Registration;
b. The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
c. The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;
d. The use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
e. The use or application of the infringing mark is without the consent of the trademark owner or the assignee thereof.
As remedies for infringement of intellectual property rights vary from criminal, civil, to administrative, each type of remedy requires a different standard of proof to establish infringement.
In administrative proceedings, the standard of evidence is substantial evidence – the amount of relevant evidence, which a reasonable mind might accept as adequate to justify a conclusion. In civil cases, the standard of proof is preponderance of evidence, which is probability of the truth. Finally, in criminal cases, the standard is higher as the guilt must be proved beyond reasonable doubt, which requires moral certainty or that degree of proof, which produces conviction in an unprejudiced mind.
What defences to infringement are available?
The following defences are available against a claim for patent infringement:
- Invalidity of the patent or any claim thereof allegedly being infringed on the ground of lack of novelty; lack of enablement, being contrary to public order or morality;
- Prescription: For purposes of claiming damages, the IP Code provides for a prescriptive period of four (4) years as no damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement. A criminal action for patent infringement prescribes after the lapse of three (3) years from the date of the commission of the crime.
The following defenses are available against a claim for trademark infringement:
- Prior user in good faith. Under the IP Code, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise.
- Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing;
- Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications.
- Lack of notice or knowledge. Under the IP Code, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. However, such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration.
In copyright infringement, the following defences are available:
- That the act falls under any of the following as provided in Section 184 of the IP Code:
a. The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society;
b. The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned;
c. The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated;
d. The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose;
e. The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned;
f. The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work;
g. The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast;
h. The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use;
i. The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations;
j. Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title;
k. Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner;
- That the act constitutes fair use under Section 185 of the IP Code, such as: (a) the use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes; (b) Decompilation, or the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs.
- That the published work was reproduced in a single copy only by a natural person, exclusively for research and private study. This however will not apply if the reproduction is of: (a) a work of architecture in the form of building or other construction; (b) an entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means; (c) a compilation of data and other materials; (d) a computer program except it is a single back-up copy or adaptation of a computer program and the copy or adaptation is necessary for the use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and for archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable; (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author.
- That the act falls under Section 188 of the IP Code on the permitted reprographic reproduction by libraries. Particularly, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction:
a. Where the work by reason of its fragile character or rarity cannot be lent to user in its original form;
b. Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and
c. Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher;
- Prescription. The owner of a copyright is barred from recovering damages for acts of infringement committed beyond four (4) years prior to initiating action for infringement.
Patent infringement involves determining the boundaries of what has been invented by determining the elements of each claim and how those elements are defined by the patent. Once those boundaries have been established—during a process called claim construction--it is determined whether an accused device or process satisfies all of the elements of at least one claim as those elements have been defined by the patent. A patent owner must establish that the accused device includes all of the elements of at least one claim by a preponderance of the evidence to establish infringement.
The trademark owner can establish trademark infringement when a junior user’s use of a similar mark creates a likelihood of confusion. Establishing that a likelihood of confusion exists can be shown with survey evidence that confusion exists, evidence of actual confusion between the two marks, and an inference drawn from a comparison of the two marks and the context of their use in the marketplace. A preponderance of the evidence must establish that a likelihood of confusion exists.
Copyright infringement is shown when a copyright owner establishes ownership of the copyright and that one of the following rights has been violated: 1) reproduction of a copyrighted work; 2) preparation of derivative works based on the copyrighted work; 3) distribution of copies or phonorecords of the copyrighted work to the public; 4) performance of the work publicly; 5) display of the work publicly; or 6) with respect to a sound recording, performance of the work publicly by means of digital audio transmission. An owner establishes copying by proving that the infringer had access to the copyrighted work and that the copied work is substantially similar to the copyrighted work. This must be established by a preponderance of the evidence.
To establish infringement of any intellectual property right, the plaintiff must prove all facts of the case that sum up to a prohibited act; in general regardless of fault, intent or negligence.
In the absence of the consent of the proprietor of the patent, third parties are prohibited from:
- producing, offering, putting on the market or using a patented product, or importing or possessing the product for such purposes;
- using a patented method or offering the method for use; and
- offering, putting on the market, using or importing, or possessing for such purposes, a product obtained directly from a patented manufacturing method.
This also applies to equivalent infringements, where a third party does not use a feature of the claimed invention but an equivalent feature that has the same effect as the clamed feature, Section 9 Patent Act.
In accordance with Section 10 Patent Act a third party is also not allowed to supply or to offer to supply within Germany an essential element of the invention, when the third party knows or it is obvious, that such action is suitable and intended to be used for exploiting the invention.
b) Utility models
The grounds for infringement of utility models are the same as for patent infringements.
c) Confidential Information
The employer has to prove that the employee communicated, without authorisation, a trade or industrial secret with which he was entrusted, or to which he had access, during the course of the employment relationship to another person for the purposes of competition, for personal gain, for the benefit of a third party, or with the intent of causing damage to the owner of the business.
It is also an infringement of competition law and criminal law, when a person, for the purposes of competition, for personal gain, for the benefit of a third party, or with the intent of causing damage to the owner of the business, acquires or secures, without authorisation, a trade or industrial secret
- by using technical means;
- by creating an embodied communication of the secret; or
- by removing an item in which the secret is embodied; or
- without authorisation, uses or communicates to anyone a trade secret which he acquired through one of the communications referred to above, or through an act of his own or of a third party pursuant to above mentioned, or which he has otherwise acquired or secured without authorisation.
d) Trade marks
Without prior permission of the proprietor, third parties are prohibited to use
- an identical sign for identical products or services;
- a sign, which can create confusions, because of its identity or its similarity to the other sign and the products and services for which this sign stands for;
- an identical sign for different products and services, when the use takes unfair advantage of or when the use damages without justification the distinctive character or the repute of the trade mark which has a reputation in Germany.
e) Business names
The grounds for infringement of a protected business name are the same as for trade mark infringements.
f) Geographical indications
Indications of geographical origin may not be used in the course of trade for goods or services which do not originate from the place, area, territory or country which is designated by the indication of geographical origin if it is likely to mislead concerning the geographical origin should such names, indications or signs for goods or services of different origin be used. If the goods or services marked by an indication of geographical origin have special properties or a special quality, the indication of geographical origin may only be used in the course of trade for the corresponding goods or services of this origin if the goods or services have these properties or this quality. If an indication of geographical origin enjoys a particular reputation, it may not be used in the course of trade for goods or services of a different origin even if it is not likely to mislead concerning the geographical origin if use provides without good cause an opportunity for goods or services of a different origin to take unfair advantage of, or be detrimental to, the reputation of the indication of geographical origin or its distinctive character.
For geographical indications that are protected as collective trademarks, please see above d) Trade marks.
g) Supplementary protection of creative property under competition law
Subject of supplementary protection is not the imitated product as such, but the particular manner of how a third party achievement that is worthy of protection is used and utilized for the purposes of competition. An act of unfair competition occurs where a person offers goods or services that are replicas of goods or services of a competitor if he
- causes avoidable deception of the purchaser regarding their commercial origin;
- unreasonably exploits or impairs the assessment of the replicated goods or services;
- dishonestly obtained the knowledge or documents needed for the replicas.
h) Registered Design
According to Section 38a Design Act, a design infringement action can be brought where a third party manufactures, offers, puts on the market, imports, exports or uses a product which contains or uses the registered design, or possesses such product for the mentioned reasons. Also when, in the view of an informed user, a design produces the same overall impression as the earlier design.
A copyright infringement action can be brought for violation of the owner's exclusive rights set out in Sections 12 to 23 Copyright Act,
- right to publish the work,
- Right to be named as the author,
- Rights regarding distortion and other mutilation of the work
- Right of duplication,
- Right of distribution,
- Right of exhibition,
- Right of presentation of the work,
- Right of making the work available to the public,
- Broadcasting right,
- Rights of editing and rearrangement.
Regarding database rights, it is prohibited to copy and/or distribute the data base and/or to make it available to the public, Section 87b Copyright Act.
j) Semiconductor topography rights
Under Section 6 Semiconductor Protection Act, third parties not having the owner's consent are prohibited from reproducing the topography and from offering, putting on the market or distributing, or importing for such purposes, the topography or the semiconductor product containing the topography.
k) Plant variety rights
A plant variety right infringement action can be brought for violation of the owners exclusive rights to
- produce, to condition for purposes of propagation, to place on the market, to import or export propagating material of the protected variety, or
- to store propagating material of the protected variety for one of the purposes designated above,
- to carry out acts in accordance with aforementioned regarding other plants or parts of plants, or products obtained directly therefrom, if propagating material was used in their production without the consent of the holder of the plant variety right, and the holder of the plant variety right did not have an opportunity to exercise his/her variety protection right with regard to this utilisation.
For establishing of a patent infringement the claimant has to establish a construction of the patent claim and then compare the established claim with the product allegedly infringing the patent. The scope of protection of a design includes covers both identical shapes as well as shapes that copy the essential features and thus produce the same overall impression as the registered design. To establish a design infringement the rights holder must show that the allegedly infringing shape is identical or creates the same overall impression as the infringed design. Trademark owners must establish the use of an identical or confusingly similar mark for identical or similar goods/services and owners of PGI/POA must show that the PGI/POA is used without meeting the requirements set out in the product specification. Topography right owners have the exclusive right to reproduce the topography and to establish infringement they must show that there is an unauthorized reproduction of the topography by the infringer. Plant variety right holders must show that unauthorized production or reproduction of the propagating material of the variety protected or conditioning for the purpose of propagation is taking place or that unauthorized materials of the protected variety are sold and marketed. Copyright owners also have the exclusive right to use and reproduce their work and to establish infringement they must show that the infringer has used or reproduced the work without authorization.
As regards necessary evidence, the claimant will have to substantiate its infringement claim with the appropriate evidence which can be documents such as correspondence between the parties, drawings of the invention or design and of the defendant's product/process, documents on prior art, sales and marketing materials, product specimens with proof of purchase, witness evidence, private expert evidence (which, however is considered to be mere party allegations) and requests for court-appointed experts. Because copyrights are not registered copyright claims should include evidence as to the date of creation of the work and the subsequent use of the work.
Unless otherwise provided by the law, the burden of proof to establish infringement rests with the claimant.
For instance, the claimant should establish, regarding:
- Copyright: that infringing work reproduces the prior work or constituent original elements of the prior work;
- Industrial design: that litigious product reproduces the combination of substantial features according to figures, listed in the State register;
- Trademark: that the litigious sign is identical or similar to the prior trademark, designates identical or similar products, other requirements may apply as prescribed by the laws;
- Invention / utility model: that the litigious product is manufactured with the use of a patented invention/utility model and / or applying such a product (every feature of independent claim or its equivalent must be used), offering it for, selling, import, and other introducing it on the market, or storage of such a product with the purposes previously specified; or applying the process protected by the patent, or offering its applying within the territory of Ukraine.
Pursuant to procedural rules, infringement can be established by any means.
However, the following means mainly apply for establishing the fact of infringement:
- interim injunctions aimed to preserve the evidence of infringement and / or withholding infringing products;
- customs withholding the infringing products at the border, until a court renders final decision;
- investigation reports survey;
- witness statements;
- expert reports appointed by the judge and others.
PATENTS & UTILITY MODELS:
Under Spanish law, anyone who exploits the patented subject matter without the patentee's consent may be liable for patent infringement.
Forbidden conducts include a broad array of commercial activities which entail the exploitation of the patented invention, such as manufacturing, offering for sale, putting on the market, using the patented product or importing or possessing the product for one of the above-mentioned purposes, and also making use of a patented process or offering such use, offering for sale, putting on the market, using the product directly obtained by the patented process or importing or possessing the product for any of said purposes.
Indirect infringement of a patent occurs when a third party, without the consent of the proprietor of the patent, hands over, or offers to hand over, to unauthorized persons the means to an essential part of the invention to be used for putting the invention into effect. The third party must be aware that the means to the invention will be used in this way.
A trade mark infringement occurs when a third party, without the consent of the owner, uses in the course of trade:
- Any sign that is identical to the trade mark in relation to goods or services that are identical to those for which the trade mark is registered;
- Any sign that, since it is identical or similar to the trade mark and since the goods or services are identical or similar, creates a risk of confusion among the public (the risk of confusion includes the risk of association between the sign and the trade mark);
- Any sign that is identical or similar to the trade mark in relation to goods or services that are not similar to those for which the trade mark is registered, when the trade mark is well known or famous in Spain and:
- when the use of the sign made without just cause may suggest a connection between those goods or services and the trade mark owner; or
- where the use may generally imply unfair advantage of, or cause damage to the distinctive character or the repute or awareness of the registered trade mark.
The evidence necessary to prove a trademark infringement may vary depending on the circumstances of the case and should be decided on a case to case basis.
The registration of the design will confer to its owner the exclusive right to use it and to prohibit its use by third parties without its consent.
For these purposes, use shall mean the manufacture, supply, marketing, import and export or use of a product incorporating the design, as well as storage of said product for any of the aforementioned purposes.
The protection conferred by the registered design shall extend to any design that does not produce a different general impression on the informed user.
In order to determine the scope of the protection, the author's margin of freedom when designing will be taken into account.
The evidence necessary to prove a design infringement may vary depending on the circumstances of the case and should be decided on a case to case basis.
Copyright is infringed by anyone that exploits the copyrighted subject matter without authorisation. Specifically, the unauthorised reproduction, distribution, public communication; and transformation of the copyrighted work are deemed infringing conducts.