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

Bulgaria Small Flag Bulgaria

Disputes related to the creation, protection and use of IP rights shall be resolved by administrative proceedings, in court or through arbitration. Copyrights shall be protected only in court proceedings.

Malaysia Small Flag Malaysia

Civil proceedings: Possible reliefs include injunction, damages, search and seizure order, account of profits and statutory damages (patents, trade marks, geographical indication, copyright, industrial design).

Belgium Small Flag Belgium

In civil court proceedings, a claimant will traditionally seek temporary and final measures to stop infringement and claim damages. In the framework of that proceeding, a claimant may seek the production of evidence showing the amplitude of the infringement with a view to obtaining appropriate compensation for damages suffered. The court may order a defendant to contribute actively to the disclosure. A claimant may also seek other measures like seizure or forfeiture and destruction of the infringing goods and material used to manufacture them, total or partial closure of the establishment operated by the infringer, and temporary or permanent disqualification of the infringer from commercial activities.

A claimant may wish to freeze all evidence regarding the infringement first. He may request injunctive relief in summary proceedings or initiate proceedings on the merits to seek compensation for damages in addition to a cease and desist order.

A claimant may seek the invalidity of a patent or a trademark or the revocation of a trademark or designs.

Parties to a contract may call upon an arbitrator to decide on a dispute related to an intellectual property. Arbitrators have full jurisdiction in copyright disputes as well as in patent disputes, although they cannot decide in cases involving mandatory licenses. Arbitrators cannot declare a trademark, design or model invalid but they may hear arguments related thereto. Arbitrators may decide upon all other disputes related to the object, price and modalities of an agreement on intellectual property rights.

There is no specific administrative proceeding but an interested party may organise border measures through contacts with the customs authorities.

An alternative dispute resolution very similar to ICANN’s UDRP system was introduced to handle domain name disputes in the .be domain. The system is frequently used and involves a reimbursement program of successful claimants as well as an appeal system.

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)

Philippines Small Flag Philippines

In enforcing its rights, the intellectual property owner may initiate administrative (opposition of trademark applications, cancellation of trademark registrations/patents, trademark/patent infringement, unfair competition), civil (trademark/patent/copyright infringement, unfair competition, false or fraudulent declaration, false designation of origin, false description of representation), and criminal proceedings (trademark/patent/copyright infringement, unfair competition, false designation of origin, false description of representation).

Administrative complaints are filed with the IPO, while civil and criminal complaints are filed with the Regional Trial Court sitting as a Special Commercial Court.

The parties also have recourse to the Dispute Resolution System of the IPO. Such System primarily involves mediation and arbitration as an alternative to litigation before the same Office or the regular courts.

United States Small Flag United States

Intellectual property owners can enforce their rights in a variety of forums. For example, patent, registered trademark, and registered copyright owners can file infringement claims in federal district courts. In addition, intellectual property owners can also seek to enforce their rights with the International Trade Commission by filing a section 337 complaint. The ITC can investigate allegations of patent, trademark, or copyright infringement as well as other allegations of unfair competition.

Germany Small Flag Germany

  • Regular civil court infringement, non-infringement and cancellation proceedings
  • Preliminary injunctions
  • Proceedings before the German Patents and Trademarks Office (including opposition and cancellation)
  • Alternative dispute resolution

Switzerland Small Flag Switzerland

The registration of a patent, trademark or POA/PGI can be opposed by means of administrative proceedings before the competent authority which for patents, trademarks and non-agricultural POA/PGI is the Intellectual Property Institute. With respect to patents, opposition may only be filed on the grounds that the subject-matter of the patent is not patentable because it falls under a non-patentable category of invention listed in the Patent Act. Oppositions against trademarks can only be based on relative grounds, i.e. violation of a prior trademark right and not absolute grounds, i.e. descriptiveness, deception of consumers, and the like. Oppositions against the registration of a POA/PGI in the field of agriculture, opposition proceedings are handled by the Federal Office of Agriculture. Furthermore, infringement actions, cancellation actions or nullity actions can be initiated for all intellectual property rights before a competent civil court. Each of the 26 cantons designates one court in its jurisdiction competent for handling intellectual property matters with the exception of patent matters which are handled by the Federal Patent Court which became active on January 1st 2012 replacing the 26 cantonal jurisdictions.

Alternative dispute resolution is only an option if the parties have agreed to settle the matter by means of arbitration proceedings. This is the case with respect to domain names as registrars and domain name holders must follow the Uniform Domain-Name Dispute-Resolution Policy (UDRP) set forth by ICANN.

Ukraine Small Flag Ukraine

Ukrainian legislation prescribes the following options of enforcement of intellectual property rights: civil court proceedings, administrative and criminal proceedings, protection of rights on the ground of unfair competition legislation, alternative dispute resolution. Additionally, with respect to copyright and related rights the unit of state intellectual property inspectors acts on the matters of copyright enforcement as regards distribution, storage, transportation, and circulation of specimens of audiovisual works, computer software and databases.

Turkey Small Flag Turkey

Infringement of trademark rights requires imprisonment and administrative fine. In addition, the affected party may demand the court to ascertain and put an end to the infringement, and seize the instruments used for infringement for each of the rights and request for determination of the actual owner of the design or patent rights if any design and patent application is filed by a person who does not have the title to those rights implying that the design or patent is misappropriated. In case of infringement of industrial property rights, the owner of the relevant right may make claims for material and non-material damages from the party infringing those rights. In case of objection to the announcement of any industrial property right and the decisions to be made by the Board as a result of the assessment of the objection, the Authority may encourage the parties to take up settlement processes. IPL does not provide any right to litigation or claim apart from those provided above.

Sweden Small Flag Sweden

(a) Civil Court Proceedings
Civil court proceedings are available for each of the intellectual property rights under section A. In addition to damages other ways of proceeding are available, as will be described below.

(i) Infringement Proceedings
Regarding patents, trademarks, designs, tradenames, plant breeders’ rights, copyrights and typographies of semiconductor products, infringement claims can be brought as civil proceedings at the Patent and Market Court.

(ii) Revocation Proceedings
Concerning patents, trademarks, designs, trade names and plant breeders’ rights, it is possible to bring revocation proceedings. However, if an alleged infringer wants to raise invalidity as a defence during infringement proceedings the alleged infringes has to make a cross-action regarding the invalidity of the intellectual property.

(iii) Declaratory Proceedings
In regard of the intellectual properties as stated in the paragraph above, declaratory proceedings are available to confirm infringement. However, regarding patents, designs and plant breeders’ rights, the claimant can bring an action for declaratory judgment only if there is uncertainty whether the claimant enjoys protection against another party on the basis of the patent and this is prejudicial to the claimant.

(iv) Declaratory Non-infringement Proceedings
For patents, trademarks, designs, tradenames and plant breeders’ rights, declarations of non-infringement are available. Regarding patents, designs and plant breeders’ rights, there are three requirements for bringing a lawsuit to obtain a declaratory judgment on non-infringement. The lawsuit must be brought by a person that carries on a business or is planning to do so, there is an uncertainty regarding whether it is allowed to carry on the business because of the intellectual property and this uncertainty is prejudicial to that person.

(v) Injunctions
At civil court proceedings, injunctions, both preliminary and final, are available and the court can issue an injunction under the penalty of a fine in proceedings regarding to patents, trademarks, designs, tradenames, plant breeders’ rights, copyrights, typographies on semiconductor products and trade secrets.

(vi) Entitlement to priority
Regarding patents, trademarks, designs, trade names and plant breeders’ rights it is possible to claim entitlement to priority of the intellectual property.

(b) Intellectual Property Office Proceedings
Third parties can oppose the grant by the Patent office of patents, trademarks and designs within a certain amount of time (nine months regarding patents, three months regarding trademarks and two months regarding designs). The PRO then tries if the intellectual right shall be revoked.

(c) Administrative proceedings
Regarding trademarks and tradenames a third party who wishes to initiate a procedure to revoke a registration can apply for revocation before the authority designated by the government (administrative revocation). However, if the proprietor contests the application, the applicant must request that the claim shall be transferred to the Court if he or she wishes to maintain the claim. Therefore, an administrative revocation is only possible if the proprietor either does not contest the application or stays passive.

(d) Arbitration
The parties can agree to submit an infringement dispute to arbitration. An arbitration award can have effects in relation to damages. However, the issue of validity of for example a patent cannot be decided through arbitration, as this falls within the exclusive jurisdiction of the Patent and Market Court.

(e) Alternative dispute resolution (ADR)
Except for patent disputes relating to contracts (such as contracts concerning licences, research and development and so on), the use of ADR methods is fairly limited under Swedish law. The most common ADR methods available include mediation and negotiations between the parties to reach a settlement. However, in domain name cases ADRs are normal and frequent.

Spain Small Flag Spain

Civil court proceedings.
Conciliation: before commencing legal proceedings relating to inventions made in connection with an employment or service relationship, the dispute may be submitted, if the parties so agree, to an act of conciliation before the SPTO.

Mediation and Arbitration: those interested, may resort to mediation or submit to arbitration any disputes arising between them as far as the matters are not excluded from the free disposal of the parties. It is needed that both parties expressly agree to enter into mediation/arbitration.

The final arbitral award needs to be notarized, and shall have effects of res judicata, and the SPTO will proceed to carry out the necessary actions for its execution. The award is self-enforceable vis-à-vis third and can be appealed before the competent Court of Appeals (Audiencia Provincial).

The mediation agreement signed by the mediator and the parties, once raised to a public deed or approved by the Judge, is constituted as an enforcement order and the SPTO shall be notified to proceed with the execution thereof.

The SPTO shall be notified of the presentation of an appeal against the arbitration award or the exercise of a nullity action against the agreement in the mediation agreement.

Since 2017, the SPTO is statutory allowed administer arbitrations.

Israel Small Flag Israel

IP litigation in Israel generally follows the basic procedures of general Israeli litigation. Therefore, the owner of the property is granted procedural rights, including: civil court proceedings, alternative dispute resolution, copyright infringement claim, damages without proof of injury, injunction for copyright infringement, destruction of the infringing copies, a request for interim remedies, request for permanent injunction.

Apart from patents, the possibility of acting through the customs authorities is subject to each of the intellectual property rights.

Brazil Small Flag Brazil

  • Regular civil court infringement action, non-infringement declaratory action, non- cancelation/nullity declaratory action and cancellation/nullity actions
  • Preliminary injunctions
  • Writ of mandamus against the administrative decisions of BPTO/SNPC
  • Produce of evidence action
  • Proceedings before the BPTO/SNPC (including opposition and administrative nullity)
  • Alternative dispute resolution such as mediation and arbitration procedures

Updated: November 2, 2017