What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?

Intellectual Property

Singapore Small Flag Singapore

Injunction, damages, an account of profits, order for delivery up or destruction of infringing goods

For copyright and trade marks, statutory damages in lieu of damages or an account of profits may also be awarded. Specific only to trade marks, an order may also be made to erase the offending mark.

France Small Flag France

Pursuant to IPC articles L. 331-1-1 (copyright), L. 521-6 (design), L.615-3 (patents) and L.716-6, a right owner can apply, at a preliminary stage, either ex parte or inter partes, for measure to prevent imminent infringement or to stop infringement.

Interim remedies includes in this respect:

  • interlocutory injunction to cease the allegedly infringing acts, eventually under a penalty;
  • the lodging of guarantee to ensure the rightholder’s compensation;
  • the seizure of the litigious goods or their withdrawal from distribution channels.

Should a claimant succeed in its infringement action, available final remedies would include:

  • the issuance of a permanent injunction to cease the infringing acts;
  • the grant of damages;
  • the seizure or destruction of infringing goods;
  • the withdrawal of the infringing products from distribution channels;
  • the publication of the Court decision.

Concerning legal entities, under IPC articles L.335-5 (copyright), L.521-10 (designs), and L.716-11-1 (trademarks), the court may also order the total or partial closure of the infringing organisation, either permanently or temporarily.

It should be noted that infringers can also face criminal sanctions (see question 16).

Portugal Small Flag Portugal

R: The infringement of an IP right legitimates the harmed party to demand a compensation from the offender. If said compensation is not voluntarily paid, it may be claimed in Court or in any other alternative settlement of disputes process. When the parties don’t find by themselves a remedy based on an agreement, the Court/entity responsible for deciding the dispute may also order the cease of the infraction. When infringing goods are placed on the market, its removal may also be ordered. Sometimes these decisions are combined with compulsory penalties. If the infringement consists on a crime, the offender may also be condemned to prison or to the payment of a penalty fine.

India Small Flag India

Patents:
In case of infringement of patents, the following interim and final remedies are available in India:

  • Temporary or interim injunction
  • Damages and account of profits
  • Reasonable royalty
  • Permanent injunctions
  • Ex parte injunctions
  • Other remedies include seizure of infringing goods etc

Designs:
A registered proprietor can institute a suit for infringement in a district court or a high court, depending on the pecuniary jurisdiction, for temporary or permanent injunction and/or recovery of damages against any person engaged in the piracy of design.

The remedy of passing off is also available under the laws of designs. However, the remedy of passing off cannot be combined with the remedy of infringement.

Copyright and trademarks:
In case of copyright infringement, the following civil and criminal remedies are available:

Civil remedies:
Interlocutory injunctions, pecuniary remedies in the form of damages and account of profits, Anton Pillar orders, Mareva injunctions.

Criminal Remedies for Copyright:
Any person who knowingly infringes or abets the infringement of copyright in any work commits criminal offence under S. 63 of the Copyright Act. The minimum punishment for infringement of copyright is imprisonment for six months with the minimum fine of INR 50,000 (USD 780 approx), In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of INR 1 lac (USD 1580 approx.).

Criminal remedies for trademarks: the Trade Marks Act provides sanctions for falsifying and falsely applying trade marks, which is punishable with imprisonment for a term between six months and three years, and file between INR 50,000 (USD 780 approx.), and INR 3 lacs (USD 4670 approx.).

Greece Small Flag Greece

Both interim and final relief is available over IP infringement and are generally similar for all IP rights.

The main remedies afforded in interim relief proceedings are: preliminary injunction, provisional seizure of infringing items, publication of the operative part of the judgment in the press or online, and threat of pecuniary damages in case of repetition of the infringement. Moreover, an order for monetary guarantee against future damages claims or "freezing" of assets may also be available. Finally, for flagrant or very urgent matters, Greek civil procedure law also allows for temporary restraining orders.

The main remedies afforded in main proceedings are: definitive injunction, destruction or delivery up of infringing items, damages (pecuniary and non pecuniary), publication of the operative part of the judgment in the press or online, threat of pecuniary damages in case of repetition of the infringement. Pecuniary damages are awarded in the form of the infringer's profits from the infringement, hypothetical royalties for a license of the relevant IP right, or restoration of the IP owner's incurred loss on account of the infringement.

Japan Small Flag Japan

Remedies include:

  • Interim/preliminary and/or final injunction (including measures necessary to suspend and prevent infringement)
  • Compensation for damage
  • Measures to restore credibility

Mexico Small Flag Mexico

Inventions

IP right

Interim remedy

Final remedy

Patents

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products;

 

3) Seizure of infringing goods; and

 

4) Closure of the establishment.

 

 

1) Fine

 

2) Temporary/permanent closure

 

3) Administrative detention

 

4) Infringement declaration

 

5) Stop the commercialization of the infringing products

 

Utility models

Industrial designs

Integrated circuits

 

Brands

IP right

Interim remedy

Final remedy

Trademarks

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products;

 

3) Seizure of infringing goods; and

 

4) Closure of the establishment.

 

1) Fine;

 

2) Temporary/permanent closure;

 

3) Administrative detention;

 

4) Infringement declaration; and

 

5) Order to stop the commercialization of the infringing products.

 

 

Trade names

Slogans

Appellations of Origin

 

Copyright and other rights

IP right

Interim remedy

Final remedy

Copyright

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products;

 

3) Seizure of infringing goods; and

 

4) Closure of the establishment.

 

Within an administrative procedure, the final remedies available are the following:

1) Fine;

 

2) Temporary/permanent closure;

 

3) Administrative detention;

 

4) Infringement declaration; and

 

5) Order to stop the commercialization of the infringing products.

 

On the other hand, if a civil action is initiated, the final remedies available would be the following:

1) Infringement declaration;

 

2) Order to stop the commercialization of the infringing products;

 

3) Order to pay damages; and

 

4) Order to pay litigation expenses.

Related rights

Reservation of rights

Plant varieties

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products; and

 

3) Seizure of goods.

 

A fine determined by the authority.

 

China Small Flag China

Remedies include injunctions, damages, public apologies, destruction of any infringing products and tools or moulds used for the infringing activities.

United Kingdom Small Flag United Kingdom

Interim orders and remedies
During proceedings, the most common forms of interim relief and measure that an IP right owner may seek from the court are:

Search and preservation orders: Formerly known as Anton Piller orders, a search and preservation order allows the Claimant's solicitors to search a Defendant's premises and seize any infringing articles or incriminating documents. To secure the award of this order the Claimant must show that: (i) they have a strong prima facie case, (ii) the actual or potential damage to the Claimant is very serious, and (iii) the Defendant has possession of infringing articles or incriminating documents and there is a real possibility they will dispose of or destroy them.

Norwich Pharmacal Orders: A Norwich Pharmacal order is an order compelling a Defendant to disclose the identity of the supplier of an infringing article. A failure to comply with the order may result in the Defendant being in contempt of court.

Interim Injunction (Preliminary Injunction): The IP right owner may seek an interim injunction to prevent the alleged infringer from infringing, or continuing to infringe, the IP right in question during the proceedings. Interim injunctions may be secured on an emergency basis, as an ex partes application. Interim injunction proceedings can be quick and cost efficient, particularly in trade mark cases. Because of issues of construction and validity, interim injunctions can be hard to obtain in patent cases, except where the infringing product is a generic medicine, which will necessarily infringe a patent for the original product. Interim injunctions in appropriate cases can be granted within days, or sometimes hours. However, an alleged infringer may appeal against the grant of an interim injunction.

In considering whether to grant an interim injunction, the court will consider whether there is a serious question to be tried, whether the balance of convenience lies in favour of granting, or not granting, the injunction, and whether granting an injunction best preserves the status quo. This will also involve consideration of whether damages would be adequate compensation for each of the parties if the interim injunction were wrongly granted or refused. The IP right owner will be required to give a cross-undertaking in damages, to undertake to pay the alleged infringer damages in the event that the interim injunction is wrongly granted (i.e. if the court ultimately determines that the IP right was not valid or not infringed).

The court will also consider the difference in time between the IP right owner knowing of the infringement and making the interim injunction application. Delay in making an application adversely affects the likelihood of an interim injunction being awarded.

If, following the trial, the court determines that the IP right is valid, and infringer, the IP right owner may seek:

Damages or an account of the infringer's profits: the IP right owner may seek either damages or an account of profits. Damages are intended to compensate the IP right owner for losses caused by the infringement. Damages are usually based on the profits the IP right owner would have made in respect the sales lost as a result of the infringement. If the infringer should have taken a licence from the IP right owner, damages may be based on lost royalty revenue or, where the IP right owner does not sell products or grant licences, damages may be measured on the basis of a hypothetical reasonable royalty. An account of profit is based on the profits made by the infringer, rather than the harm caused to the IP right owner. The court may allow various deductions (such as a portion of overheads) and may consider the contribution of the infringement to profits (e.g. the contribution of an infringing component to the sales of a larger product).

Injunctive relief: A final injunction prohibits further infringing activity by the infringer for the duration of the right. An injunction is not an automatic entitlement and it remains at the court's discretion whether one is granted or substituted for financial compensation, for instance if the infringement is trivial or where no future threat of infringement exists.

Delivery Up/Destruction of Infringing Articles: A successful Claimant may seek an order for the delivery up or destruction of the infringing articles and the courts are under an obligation to consider the proportionality of the request for such an order against the gravity of the infringement.

Declaratory Relief: Where an IP right owner has brought a claim of infringement and is successful, the court will make a declaration that the IP right has been infringed. Similarly, where a patent is held to be valid, a declaration of validity may be awarded, and accordingly, where a patent is held to be invalid, a declaration of invalidity may be ordered in conjunction with a revocation order. If part of a right is valid, for instance if some claims of a patent are invalid and some are valid, or if a trade mark is valid in relation to certain goods and services, but not others, the IP right owner may apply to amend its right, to remove the invalid aspects.

Orders for Publication: There is scope for the court to order a party, at their own cost, to publicise the outcome of a case.

South Africa Small Flag South Africa

Patents and Designs
Urgent and non-urgent interim injunctions, final injunctions. See Q18 above for other remedies.

Patents
A patentee may apply to the Registrar of Patents for a patent to be endorsed ‘licences of right’. If granted, any person who wants a licence will be entitled to one as of right. Compulsory licences for patents are also available on application to the Commissioner.

Designs
Compulsory licenses for design registrations are available on application to a High Court.

Plant Breeders’ Rights
Without proof of damages, the holder of a plant breeders’ right can recover by action monetary compensation up to a certain amount. A holder can also institute a claim for actual damages. A competent court can make an order in respect of custody, surrender or disposal of any book, document, plant propagating material, product, substance or other article, in addition to any other remedy which it deems fit.

Trade Marks
Where a trade mark registered in terms of this Act has been infringed, any High Court having jurisdiction may grant the proprietor the following relief, namely—

  1. an interdict;
  2. an order for removal of the infringing mark from all material and, where the infringing mark is inseparable or incapable of being removed from the material, an order that all such material be delivered up to the proprietor;
  3. damages, including those arising from acts performed after advertisement of the acceptance of an application for registration which, if performed after registration, would amount to infringement of the rights acquired by registration; and
  4. in lieu of damages, at the option of the proprietor, a reasonable royalty which would have been payable by a licensee for the use of the trade mark concerned, including any use which took place after advertisement of the acceptance of an application for registration and which, if taking place after registration, would amount to infringement of the rights acquired by registration.

For the purposes of determining the amount of any damages or reasonable royalty to be awarded, the court may direct an enquiry to be held and may prescribe such procedures for conducting such enquiry as it may deem fit.

Copyright
The remedies for infringement of copyright include an interdict, damages, delivery of infringing copies or plates used or intended to be used for infringing copies. In lieu of damages the plaintiff may, at his or her option, be awarded an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee in respect of the work or type of work concerned.

UAE Small Flag UAE

Interim remedies

  • Precautionary order :
  • to attach infringing goods,
  • to gather evidence of the infringement (only available for trademark, copyright and neighbouring right infringement),
  • to stop the publication, exhibition, reproduction of a work (only available for copyright and neighbouring right infringement),
  • to assess the income resulted from publication or exhibition of the work (only available for copyright and neighbouring right infringement), requested ex-parte by the right holder (or the licensee in patent and design cases). A lawsuit on the merits should be filed within 8 days of the issue of the order in patent, industrial drawings and designs, and trademark infringement cases, and within 15 days in copyright or neighbouring right infringement cases, failing which the order will be null and void.
  • Order prohibiting a defendant from leaving the country (where there is a risk of the defendant fleeing the country);
  • Appointment of an expert to examine evidence which may be destroyed or lost.

Final remedies

  • Injunction to stop the infringing acts (although the right for an injunction is not expressly provided for under the under the UAE Trademark Law and the UAE Patent and Design Law, courts have already granted injunctive orders in trademark infringement cases).
  • Damages to compensate for the damage suffered (although the right to seek compensation is omitted in the Patent an Design Law and in the Copyright Law, claimants may rely on the provisions of the Civil Transactions Act and the Commercial Transactions Law to request damages), it being specified that under the UAE Trademark Law, the right to compensation is subjected to the commission of a criminal offense as provided for under articles 37 and 38.
  • Confiscation and destruction of the infringing goods and equipment used to commit the infringement
  • Publication of the judgment

Philippines Small Flag Philippines

An owner of a patent, trademark, or copyright may bring a civil action before a court of competent jurisdiction, to recover appropriate damages from the infringer. An injunction in favor of the owner of a patent, trademark or copyright may also be granted restraining such infringement. The court may also order the destruction of infringing materials for violations of trademark. Impounding of trademark infringing goods is likewise possible. In a copyright infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings.

United States Small Flag United States

Owners of patents and registered trademarks can seek infringement remedies that include monetary as well as injunctive relief. Injunctive relief may be preliminary or permanent. Owners of a registered copyright is entitled to actual damages and any of the infringer’s profits or statutory damages, which can be up to $150,000, as well as cost’s and attorney’s fees.

Germany Small Flag Germany

Remedies include:

  • Preliminary Injunctions, for example regarding restraining orders, rendering of information and seizure of goods by the court bailiff and permanent injunctions;
  • declaratory relief;
  • injunctive relief;
  • damages;
  • disclosure of information and accounts;
  • delivery up / destruction of infringing products;
  • recall of infringing products and removal from the market;
  • publication of the decision, for example under Section 140e Patent Act and Section 24e Utility Model Act;
  • Reimbursement of the statutory legal costs and fees for bringing the action.

Switzerland Small Flag Switzerland

Remedies available include injunctions (interim or final), a declaratory judgment, assignment of intellectual property right, an order to disclose the origin and quantity of the infringing objects in the defendant’s possession and to disclose the addressees and the extent of any transfer to commercial recipients, rendering of accounts (for the assessment of damages), damages, redress or surrender of profits, publication of the judgment and destruction of infringing goods and their removal from the market.

As regards patents, an action for assignment must be filed within two years from the official date of the publication of the patent specification. An action against a defendant acting in bad faith, however, has no filing deadline.

Ukraine Small Flag Ukraine

Remedies for infringement of each of the intellectual property rights may include:

  • damages (in case of copyright infringement payment of compensation is possible as alternative to damages);
  • prohibition to conduct certain actions in future (prohibition of further unauthorized use of intellectual property object);
  • confiscation and destruction of infringing products;
  • other actions upon request of the plaintiff.

Turkey Small Flag Turkey

Owners of rights whose industrial property rights are infringed may file a litigation before the relevant court to ask for (i) determination of whether or not the action is an infringement, (ii) prevention of any potential infringement, (iii) putting an end to the infringement, (iv) elimination of the infringement, (v) indemnification of material and non-material damages, (vi) seizure of products constituting infringement as well as tools solely used for manufacturing those products or tools for performing the patented procedures, (vii) granting ownership rights to the applicant in relation to the seized products, equipment and machines, (iix) introduction of measures for preventing the continuation of the infringement, and (ix) announcement of the final verdict in a daily newspaper or similar means of publication in its entirety or as a summery and notification of the same to the relevant parties by imposing the costs on the opponent party if any justifiable reason or benefit exists in that respect. IPL provides the crimes that can be prosecuted upon complaint in case of infringement of trademark rights as well as the penalties to be applied for those crimes. The owner of the right shall be entitled ask the court to issue an order for a number of provisional injunctions before or during the litigation for the infringement of the industrial property rights by proving the existence or potential threat of any action that constitutes infringement. Those provisional injunctions include, without limitation, the prevention and discontinuation of the infringement of the right, seizure of products manufactured by means of infringement of the right or else constituting basis for infringement and granting a security for the indemnification of any loss.

Sweden Small Flag Sweden

See answer above.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:
The patentee has legal actions to enforce the exclusive rights granted under patent. Before the civil jurisdiction, the owner whose patent rights have been infringed may seek:

  • cessation of the acts that infringe his/her rights;
  • compensation for damages;
  • seizure of the objects produced or imported in infringement of the patent, and of all means exclusively used for such production or for carrying out the patented process;
  • if feasible, forfeiture of the seized objects and means;
  • the adoption of those measures needed to prevent continued infringement of the patent, in particular, the transformation of the objects or means seized or their destruction when this is necessary to prevent infringement of the patent;
  • publication of the judgment at the infringer's expense and notification to concerned third parties.

It is important to note that the Spanish legislation allows the parties to seek provisional enforcement of non-final civil judgments (patent invalidation judgments are excluded). This can be made by the initiation of expedited enforcement proceedings.

PATENTS, TRADEMARKS, DESIGNS & COPYRIGHTS:
Precautionary measures:
The IP right holder is entitled to request interim precautionary measures to ensure the effectiveness of the judgment adopted in the main action.
Three criteria must be satisfied to obtain an interim injunction:

  • fumus boni iuris (ie, a prima facie case);
  • periculum in mora (ie, urgency); and
  • the provision of a bond to guarantee potential damages to the defendant.

An interim injunction may be issued either ex parte or following a contradictory hearing.
There are no legal time limits for the pursuit of interim relief. However, as one of the criteria to be satisfied in order to obtain an interim injunction is urgency, the corresponding request should be filed as soon as possible after becoming aware of the infringing acts.
Precautionary measures may consist of:

  • cessation of acts that could infringe the right of the petitioner or its prohibition, when there are rational indications to imply the imminence of such acts.
  • retention and deposit of goods allegedly infringing the IP right of the owner as well as of the means exclusively destined to the infringement.
  • securing of a compensation for damages.
  • relevant registry entries.

Final remedies:
The IP right holder may seek the following remedies:

  • cessation of the infringing acts;
  • compensation for damages;
  • delivery or destruction of the infringing goods at the infringer’s expense;
  • delivery or destruction of the means principally used to commit the infringement at the infringer’s expense;
  • transfer of ownership of the infringing goods and the means intended to commit the infringement; and
  • publication of the judgment at the infringer’s expense.

Israel Small Flag Israel

The following remedies are available to IP owners for infringement claims:

Damages
Monetary damage awards are relatively small compared to the norm in OECD countries. An award of damages generally requires proof of infringement and amount of damages, or, at least, a reasonable estimate of damages. In assessing the amount of monetary damages, a court may require the plaintiff to provide an accounting of the amount of the damages. However, the court’s final award of damages will not necessarily be bound by this accounting. Courts routinely award statutory (stipulated) damages, without proof of damage; in the amount of up to NIS 100,000 (approximately US$27,700).

Punitive Damages
Punitive damages are available in Patents if the court concludes that the infringement continued after the rights owner gave notice of the infringement. In trademarks, designs and copyrights, the Court may also take into consideration punitive interest when determining the damages. In which case the amount of the punitive damage award will not exceed the amount of the award for actual damages.

Preliminary and Permanent Injunctions
Preliminary injunctions may be issued if a party can provide apparent proof of cause, convince the court of urgency and, in most cases, provide its own or a bank guaranty. Approximately one month later, the court usually holds a more comprehensive hearing to consider the continuation of the preliminary injunction. Often the preliminary injunction is left in force throughout the litigation of the main claim. Since such litigation may continue for years, and given the dynamic pace of change in high-tech sectors, the preliminary injunction is usually sufficient to restrain or repress competition.

Giving Account
The court may order a defendant to provide the plaintiff a complete report on details and accounts with regards to its infringing activities.

Costs
The courts generally award costs to the prevailing party in litigation. However, costs generally are subject to caps set by regulation and rarely amount to more than 50% of the actual legal fees expended.

Collection and/or Destruction of Infringing Items
In cases of trademark or copyright infringement, a trademark or copyright owner may demand that the infringer deliver to the owner or destroy all copies of the infringing material as well as the relevant printing plates. In cases of trade secret infringement, the court may issue an order to enter into private premises and seize relevant evidence.

Updated: August 23, 2017