What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

Intellectual Property

Singapore Small Flag Singapore

For all of the intellectual property rights described above, civil court proceedings, intellectual property office proceedings, and alternative dispute resolution are available.

In addition, for copyright, geographical indications and trade marks, administrative proceedings are also available.

France Small Flag France

Other options available in French jurisdictions for IPRs enforcement are:

Civil court proceedings:

  • Infringement action;
  • Invalidity action for patents and trademarks;
  • Declaration of non-infringement for patents (see question 30).

Administrative proceedings:

  • Trademark opposition proceedings. Opposition decisions can be appealed before Paris Court of Appeal;
  • Pursuant to article 45 of the Trademark directive, administrative procedure before the French Office for the revocation or declaration of invalidity of a trademark should be created.

Portugal Small Flag Portugal

R: In Portugal the enforcement options available are civil court proceedings, administrative court proceedings, administrative proceedings before the Costumes Authorities. The parties may also enforce IP rights before the Arbitration Courts. IP office proceedings only apply to the registration process.

India Small Flag India

There are broadly 3 types of Enforcements/Remedies for IP in India:

Civil Remedies:
Upon IP infringement civil remedies can be enforced by filing a suit for infringement and/or passing off (in case of unregistered trademarks) in the competent court. Following reliefs of civil nature can be granted:

  • Injunction: Injunction is prohibition of an action by a party to a law suit. If the plaintiff establishes that the prima facie case is in his favor, injunction is granted.
  • Anton Pillar orders/ Ex-parte orders: Anton Pillar orders, permits the plaintiff’s counsel to enter the infringer’s premises and seize evidence of infringement. This order is passed when there is a serious danger of removal/destruction of the infringing articles. Such an order is granted on an ex-parte application. Infringing goods are delivered to the plaintiff or destroyed if the orders of delivery-up and destruction are passed.
  • Orders to deliver up/surrender or seize and destroy.
  • An award of costs and damages: An award of cost and damages are two mutually exclusive remedies. Damages are granted to compensate the losses incurred by the plaintiff on account of defendant’s infringing act, whereas actual amounts of profits are handed over to the plaintiff as the second measure.
  • Tracing orders: Under tracing remedies, an infringer can be ordered to provide details like from where he got his supplies of infringing goods. Failure to provide such information is taken as contempt of court.
  • Rendition of Accounts or Account of Profit.

Criminal Remedies:
Criminal remedies in India are provided for Trademarks, Copyrights and Patent as elucidated in point 16 above.

Administrative remedies:

  • Opposition against a similar trademark or against registration of a Geographical Indication;
  • Pre-Grant Opposition;
  • Rectification of a registered trademark/ design;
  • Patent Invalidation; and
  • Recordal with Customs to prevent the import of infringing goods.

Greece Small Flag Greece

  • The main enforcement tool for IP rights is civil court proceedings. Additionally, proceedings relating to the registration, validity of trade marks (e.g., opposition, cancellation or appeals against refusal) are instituted before the Greek TM Office and, on further appeal, the administrative courts.
  • Arbitration and mediation are also available to resolve intellectual property rights disputes.
  • Arbitration rules are included in the Greek Code of Civil Procedure (Arts. 867 et seq.).

    Mediation, which was introduced rather recently, does not currently appear to have gained any traction, at least as regards IP disputes. It may take the form of either judicial mediation or out-of-court mediation.

  • Finally, there are “soft law” alternatives, such as the Communication Review Board, a self-regulatory body of the Greek advertising industry. Its decisions are not enforceable, but, in practice, respected.

Japan Small Flag Japan

Civil court proceedings are available for each rights. Alternative dispute resolution procedures, including mediation and arbitration, are also available.

Mexico Small Flag Mexico

IP right

Other enforcement

Inventions

· Intellectual Property Office proceedings: cancellation,
infringement and invalidation actions.

· Alternative Dispute Resolutions, namely, arbitration.

Brands

Copyrights

· Civil Courts proceedings: compensation for damages.

· Copyrights Office proceedings: invalidation and
infringement actions.

· Intellectual Property Office proceedings: trade-related
infringements and preliminary injunctions or preventive
measures.

· Alternative Dispute Resolution, namely, arbitration and
conciliation.

China Small Flag China

(A) Civil court proceedings are available for all the intellectual property rights in section A.

(B) Administrative proceedings are available in respect of patents, copyright, trademarks, and unfair competition (trade secrets).

(C) The .CN and .中国 domain names, wireless website addresses and SMS website addresses that are registered within two years of creation can be settled by the Online Dispute Resolution Centre under the China International Economic and Trade Arbitration Commission.

(D) Customs seizure actions are available in relation to trademarks, patents and copyright. In practice, Customs are most proactive in relation to trademarks recorded at Customs.

(E) Large trade fairs in China can have complaints centres (e.g. the Canton Fair) where it is possible to file complaints in respect of patents, copyright and trademarks to get infringing products removed.

United Kingdom Small Flag United Kingdom

Civil court proceedings
In the UK, IP rights are most commonly enforced through civil court proceedings.

The UK has three jurisdictions: England and Wales, Scotland, and Northern Ireland. Each has its own legal system and procedures, the UK Supreme Court being the final court of appeal for all in civil cases. The overwhelming majority of IP litigation in the UK takes place in the courts of England and Wales.

The Chancery division of the High Court is the appropriate forum for more complex and valuable IP claims of all types. The Chancery Division's Patents Court has jurisdiction in respect of disputes regarding patents, SPCs, registered designs, plant variety rights and semiconductor topography rights. In the Chancery Division there is no cap on recoverable damages or costs.

For less complex and smaller value IP claims, the Intellectual Property Enterprise Court (IPEC) (which is itself within the Chancery Division) offers a more streamlined litigation procedure, with caps on monetary compensation (£500,000) and recoverable costs (£50,000 for the liability stage and £25,000 for the quantum stage). The IPEC has jurisdiction to hear disputes regarding all types of intellectual property right and takes its jurisdiction (including in respect of the types of relief that it can award) from that of the High Court.

The IPEC also has a "small claims" track, with more limited damages (£10,000) and costs caps, in which low value disputes regarding copyright, trade mark, passing off and unregistered design right may be heard.

In addition, some County Courts with a Chancery District Registry, have jurisdiction in respect of low value intellectual property disputes (but not in respect of the types of right for which the Patents Court has jurisdiction).

UKIPO
While the UKIPO is not a court, it has some (limited) jurisdiction to hear disputes in respect of UK patents, UK registered design rights and UK registered trade marks, most notably in respect of validity and entitlement. The UKIPO is also able to provide non-binding opinions, including in respect of infringement, in some circumstances. However as the UKIPO's power to award relief is limited, it plays a very limited role in enforcement of intellectual property rights.

Alternative Dispute Resolution
Alternative dispute resolution requires the voluntary engagement of both parties (unless the parties have entered a contract which obliges them to use ADR). It is encouraged by the Civil Procedure Rules.

The most common types of ADR are:

  • Arbitration, which is similar to civil court proceedings, but the proceedings are conducted in private before a tribunal, rather than before a public court. The judgment of the arbitral tribunal is binding on the parties and can be kept confidential.
  • Expert determination, which is conducted in private and involves an expert considering and assessing submissions made by the parties. The process is more flexible than arbitration and usually much less expensive. The decision of the expert is binding.
  • Mediation, which is essentially a private commercial negotiation facilitated by a trained mediator. The parties are encouraged to find a commercial solution to the dispute, but the mediator does not give a decision and the process is not binding, so if the parties are unable to agree, the dispute will continue.

South Africa Small Flag South Africa

Patents
Patents are enforced by way of a patent infringement action that is instituted in a specialised Court, namely the Court of the Commissioner of Patents. In practice, the Commissioner is a judge of a particular division of the High Court of South Africa, being appointed per matter. There are no tribunals other than the Court of the Commissioner of Patents available as a Court of first instance. Applications for urgent interim injunctions may be instituted for urgent matters. Alternative dispute resolution or arbitration can also be used.

Designs
Actions for infringement of Registered Designs are brought before a High Court having jurisdiction. Applications for urgent interim injunctions may be instituted for urgent matters. Alternative dispute resolution or arbitration can also be used.

Plant Breeders’ Rights
Enforcement is through the civil courts. Alternative dispute resolution or arbitration can also be used.

Trade Marks
The following options are available for trade mark enforcement:

  • Trade mark infringement proceedings, which are civil proceedings filed in the High Court.
  • Opposition proceedings, which are civil proceedings that are filed with the Tribunal of the Registrar of Trade Marks.
  • Trade mark cancellation proceedings, which are civil proceedings that are filed with the Tribunal of the Registrar of Trade Marks or the High Court.
  • Civil proceedings relating to counterfeit goods are filed in the High Court. Criminal proceedings are filed with the South African Police Services.
  • Domain name dispute resolution in respect of the .co.za domain name extension is filed with the South African Institute of Intellectual Property, which has been appointed as an accredited domain name dispute resolution provider.
  • Advertising complaints are filed with the Advertising Standards Authority, which is an industry body.

Copyright
Copyright infringement proceedings may be filed in the High Court as civil proceedings or a criminal complaint may be filed with the South African Police Services. Disputes between copyright licensing bodies may be dealt with by the Copyright Tribunal.

UAE Small Flag UAE

The other enforcement options available are:

Right

Civil court

IPO proceedings

Administrative

Trade Marks

Yes, infringement and cancellation actions

Yes, opposition and limited cancellation actions

Yes, Economic Department complaints, Custom recordals and complaints

Patents (UAE national filing)

Yes, infringement and cancellation actions

Yes, opposition actions

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Patents (GCC patent filing)

Yes, infringement and cancellation actions

Yes, opposition actions

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Utility certificates
Designs

Yes, infringement and cancellation actions

Yes, opposition actions

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Copyright & neighbouring rights

Yes, infringement and cancellation/amendment actions

None

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Updated: June 27, 2017