Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Proceedings in which a claim is made in respect of the infringement of a copyright or for breach of confidence may be begun in the State Court or High Court by writ, choice of forum depends on the quantum of damages/account of profits sought. Proceedings in which a claim is made in respect of the infringement of a patent or trade mark shall be begun in the High Court by writ.
Proceedings will involve the filing of pleadings, discovery, the exchange of evidence through affidavits and trial in open court with cross-examination of witnesses and the filing of submissions
Generally, court proceedings can last between 12 – 18 months depending on the complexity of the matter and the number of interlocutory applications taken out. Appeals for infringement proceedings are to the Court of Appeal and it can take a few months to a year for appeals to be heard.
The relief available for the infringement of a patent or trade mark include an injunction, an order for the defendant to deliver up or destroy any infringing products or goods, damages, an account of profits, and a declaration that the patent or mark is valid and has been infringed by the defendant.
In addition, for copyright and trade marks, the plaintiff can also obtain orders to erase, remove, or obliterate the infringing works/articles, and in certain cases, may be awarded statutory damages.
In accordance with the Judicial Organization Code and the IPC:
- Paris Court of First Instance has exclusive jurisdiction over patent-related matters;
- the following Courts of First Instance have exclusive jurisdiction in relation to copyright and neighbouring rights, design, trademarks and geographical indications: Bordeaux, Lille, Lyon, Marseille, Nanterre , Nancy, Paris, Rennes, Strasbourg, Fort-de-France;
- the following Courts of First Instance have exclusive jurisdiction over plant varieties certifications related matters: Marseille, Bordeaux, Strasbourg, Lille, Limoges, Lyon, Nancy, Paris, Rennes, Toulouse.
Proceedings are initiated with the writ of summons being served by a bailiff to the defendant.
A first procedural hearing takes place during which the pre-trial judge checks whether:
- the defendant has appointed a lawyer, and
- the claimant has provided the defendant’s attorney with his exhibits (usually 8 weeks after the first procedural hearing).
A second procedural hearing is set for the filing of defendant’s submissions in defence and exhibits (usually 6-8 weeks from filing the writ with the Court).
A third procedural hearing is set for the filing of the defendant’s submissions in defence and exhibits in reply (approximatively 6-8 weeks after the second procedural hearing).
The judge can schedule additional hearings to allow the parties to file supplementary submissions or close the debates and set a date for the final hearing (approximatively 6-8 weeks after the third procedural hearing).
A final hearing is held for pleadings, the Court’s decision being usually issued between 1 to 3 months after the oral debates.
Appeals must be filed with the Court of Appeal within 1 month from the notification of the first instance decision. Foreign companies are granted an additional 2 months delay.
R: In what regards to most of the IP rights the IP Court is the one who have jurisdiction, which is a centralized and specialized Court. The procedure mainly consists in written allegations from each part (usually trial will only take place when witnesses hearings are necessary), the time to judgment and award of relief will take around two years. An appeal to the Court of Appeals is possible.
The court in question will be first determined on the basis of the location of the alleged infringement, or, alternatively, the location of the Defendant’s place of business. In a case involving trade mark and copyright infringement, a suit may be filed depending on the Plaintiff’s place of business or residence as well.
Further, on the basis of the sum of the relief claimed, the district court or the relevant High Court will have jurisdiction of the matter. These rules are determined by the various states in India and therefore there is no uniformity in terms of pecuniary jurisdiction between the various states.
A suit needs to be filed along with Interlocutory Application for temporary injunction etc., on the basis of the procedure as laid out by the court in question. Once the case has been heard on preliminary issues, the matter is admitted and then heard in detail on merits. Both parties are given time to submit both oral and written submissions, and admission and denial of documents and examination of witnesses is undertaken.
The time to formal judgment is typically between two and five years.
Relief sought (such as injunction, delivery up of infringing materials, rendition of accounts etc.) are granted along with damages. However, the quantum of damages would depend on the merits of the case.
Yes, provision of appeal is available to any party who is aggrieved by any order or judgement of the court.
IP disputes are brought before the IP Chambers of the Athens or Thessaloniki First Instance Courts, depending on the territoriality of the dispute. Actions based solely on unfair competition law may are brought before the competent first instance court, depending on the territoriality of the dispute.
Proceedings are initiated via an introductory writ filed with the court and served upon the defendant within 30 days (or 60 days in case the defendant is domiciled outside Greece) as from filing.
Parties must file their written arguments and evidence within 100 days (or 130 days in case the defendant is domiciled outside Greece) as from the filing of the action and a reply to each other's arguments and evidence within a further period of 15 days. Witness testimonies are submitted in the form of sworn affidavits.
Upon conclusion of the aforesaid documents stage, the court schedules a hearing, which is a pure formality to conclude the proceedings. In exceptional circumstances, the court may require that witnesses are examined and cross-examined during such hearing.
The court will usually deliver its judgment within 4 - 7 months as from the hearing date.
Appeals to the first instance judgments are available and are brought before the IP Chambers of the Athens and Thessaloniki Courts of Appeal.
A final appeal, only on points of law, may be filed with the Supreme Court, Areios Pagos.
The basics of a lawsuit at a Japanese court for a civil infringement case are as follows:
a plaintiff submits a complaint to a court, and the court then specifies the first court hearing date and serves to a defendant the complaint. The defendant needs to submit an answer 1 week before the first hearing date. After the first hearing date, each party submits briefs and evidence to each other, and after examining evidence, the court makes a decision. Since Japan does not adopt a jury system in civil cases, judges conclude both factual and legal issues.
For the time to judgment, see 18. For the award of relief, see 31.
The jurisdiction for civil infringement cases is as follows:
Patents, including utility model rights, and Copyrights for Computer Programs
- the Tokyo/Osaka District Court in the first instance;
- the Intellectual Property High Court as the appellate court; and
- the Supreme Court in the last instance.
Trade Secrets, Registered Trademarks, Copyrights (other than those for Computer Programs) and Design Rights
- the District Courts related to the case, and the Tokyo/Osaka District Court in the first instance;
- the High Courts with jurisdiction over the first instance courts, and the Intellectual Property High Court instead of the Tokyo High Court as the appellate court; and
- the Supreme Court in the last instance.
How to start
Time to trial
Time to judgement
Any available appeals?
Federal Administrative Court
By filing an initial pleading
1 - 2 years; however, it would depend on the complexity and particularities of the case.
2)Response by the defendant
4)Revision of evidence
6 - 8 months; however, this time would depend on the complexity and particularities of the case.
Federal Circuit Court
Mexican Supreme Court
Two factors determine jurisdiction in Mainland China: where the defendant is domiciled and where the infringing act takes place.
Intermediate People's Courts generally hear first instance IP cases. However, the Supreme People's Court has appointed several Basic People's Courts to hear IP cases brought in the province of the appointed court and designated adjacent regions. Trademark cases (with the exception of well-known trademarks) are heard in lower level district courts.
In 2015, China established specialist IP courts in Beijing, Shanghai and Guangzhou to hear the following IP disputes within the courts' respective jurisdictions:
- Civil and administrative actions involving patents, semiconductor topographies, plant varieties, complex trade secrets, and copyright relating to computer software;
- Administrative actions against a State Council department or a People's Government of county level or above for an administrative act involving copyright, trademark, and unfair competition; and
- Civil actions involving well-known trademarks.
Intermediate People's Courts, which sit at the same level as specialist courts, in the Beijing, Shanghai and Guangdong regions no longer accept cases concerning the abovementioned actions, with the exception of the Guangdong-based Shenzhen Intermediate People's Court, which has its own IP tribunal. District courts in these regions no longer accept actions concerning items (1) and (3) above. In regions without a specialist IP court, Intermediate People's Courts will hear (1) to (3) above.
In addition, the Beijing specialist IP Court has jurisdiction over first instance administrative cases relating to objections against: (a) licensing and confirmation of validity of patents and trademarks; (b) compulsory licence decisions and compulsory licence fees; (c) any other act by a public authority involving licensing and confirmation of intellectual property rights.
Specialist IP tribunals with cross-regional jurisdiction have also been established in Nanjing, Suzhou, Wuhan and Chengdu to hear IP cases in these (and adjacent) regions.
• How to start proceedings, the basics of the procedure the time to trial
Plaintiffs must file pleadings at the court with jurisdiction. Provided the conditions to bring an action are met, the court shall place the action on its trial docket within seven days of receipt and notify the parties of its acceptance. If the conditions are not satisfied, the court will announce its decision not to accept the case within seven days of the case being filed.
The parties will exchange evidence. Usually, there will be a separate evidence exchange hearing.
Cases concerning only domestic parties should conclude within six months of the date the case was accepted. Cases involving foreign IP owners have no fixed timeline but ideally take 6-9 months.
• The format of the trial, the time to judgment and award of relief
Courts try civil cases in public, except those involving State secrets, private matters of individuals (including trade secrets), or where the law stipulates otherwise.
Simple IP trials usually last 1 day, complex trials can be longer. At trial, the court will first verify the litigants, set out the cause of action, notify litigants of their rights and obligations and enquire whether the parties have submitted applications or abstentions. Trials begin with a court investigation which involves hearing statements by the litigants, and then examining witnesses (if any) and documentary evidence. Following this, the court will hear submissions from both sides. The parties may engage in mediation prior to judgment. There is no fixed timeline from trial to written judgment (and, occasionally, this can take a significant amount of time). Once the written judgment is issued, it is enforceable by the court of first instance or a court at the same level as the court where the property subject to execution is located.
The courts which have jurisdiction in intellectual property disputes in England and Wales are discussed above (see Question 17). Before commencing court proceedings, there are pre-action procedures which should be considered (see Question 23). Proceedings can then be commenced by the Claimant filing a Claim Form, followed by Particulars of Claim, which outline details of the case. Once the Defendant has filed its Defence and any Counterclaim, and the Claimant has had the opportunity to respond, the case will then proceed to a Case Management Conference ("CMC").
At the CMC, the court will set out the timetable for the case, up to the date of trial. Between the CMC and the trial, the parties will exchange the names and evidence of their expert witnesses and fact witnesses, undertake and produce the results of any experiments, provide any models, photographs, survey evidence and any other evidence to be relied on at the trial, and give disclosure, if it is ordered.
Shortly before the trial, the court will hold a pre-trial review hearing to finalise matters such as the timetable for trial.
The trial itself will typically last 1-2 days in the IPEC and 3 to 15 days in the High Court. The trial commences with opening submissions the parties, followed by any cross-examination of expert and fact witnesses, and closing submissions. Specialist intellectual property barristers are typically instructed to represent the parties in the Court, although in some circumstances solicitors and patent attorneys may also make submissions in Court.
An appeal is available if the judgment contains, or may contain, an error of law. An appeal will review only the law and how it has been applied – there is no re-trial of the facts of the case, and very limited ability to introduce new evidence during an appeal.
The primary remedies sought in civil litigation are typically:
- for an IP owner, a declaration that its right has been infringed, an injunction to prevent the other party infringing its rights, monetary relief (damages or an account of profits) and recovery of its legal costs, plus interest; and
- for the alleged infringer, an order that the IP right is invalid and/or that it is not infringed by the allegedly infringing acts, plus recovery of its legal costs and interest.
The jurisdiction of the court is broad and the type of relief awarded by the court therefore continues to evolve to adapt to developments in the commercial and technical environment of disputes.
An infringement action is commenced by the issuance of a combined summons (including a statement of particulars). The defendant must thereafter deliver a notice of intention to defend. After delivery of the notice of intention to defend, the defendant must deliver a plea setting out its defence, for example, non-infringement and invalidity of the patent plus any counterclaim, such as revocation of the patent. The plaintiff must deliver a replication or plea to the counterclaim and thereafter, the defendant must file its replication in reconvention. Specific time periods are prescribed for the aforementioned steps. Once pleadings are closed, each party calls on the other to discover documents that are relevant to any matters in the action. A pre-trial conference is held with both parties as soon as possible after the discovery stage but no later than six weeks before the trial date. If there is an intention to lead expert evidence the parties must, before the trial commences, file a notice of such intention and provide a summary of each expert’s reasoned opinion.
The parties commence a trial with opening arguments. Thereafter, the witnesses are called for the purposes of oral evidence. This is commenced by examination-in-chief followed by cross examination. The party calling the witness also has an opportunity to re-examine the witness. Expert witness statements providing a summary of the evidence are exchanged between the parties in advance of the trial. At the conclusion of the evidence, both parties submit closing arguments. Usually, in patent matters, the Court is adjourned until a future date for closing arguments and the parties submit written heads of argument in advance of the allocated date.
A trial usually lasts two to four weeks for complex matters, but for less complex matters, this period could be as short as three to five days. Judgment is usually available fairly soon after conclusion of the trial, for example three to five weeks, but delays can be experienced, depending on the complexity of the matter.
The plaintiffs may be awarded an interdict, delivery up of any infringing product or any article or product of which the infringing product forms an inseparable part; and damages. 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 or sub-licensee in respect of the patent concerned.
There is no automatic right of appeal. A party wishing to appeal a judgment needs to apply to the Court of the Commissioner of Patents for leave to appeal (within 15 days from the date of judgment). If the court is satisfied that there is a reasonable prospect that another court may arrive at a different finding, leave to appeal (usually to the Supreme Court of Appeal) will be granted.
The same procedure applies in actions for design infringement except that the court hearing the actions is the High Court and not the Court of the Commissioner of Patents. The plaintiffs may be awarded an interdict, surrender of any infringing product or any article or product of which the infringing product forms an inseparable part, damages or a reasonable royalty in lieu of damages.
Plant Breeders’ Rights
Depending on the amount of damages claimed the Magistrate’s Court or the High Court will have jurisdiction to hear the matter. The area of the Magistrate or High court having jurisdiction will be where the defendant is, inter alia, resident or domiciled, where the cause of action arose or where allegedly infringing material was seized/attached.
An infringement action is commenced by the issuance of a combined summons (including a statement of particulars). The defendant must thereafter deliver a notice of intention to defend. After delivery of the notice of intention to defend, the defendant must deliver a plea setting out its defence, for example, non-infringement and invalidity of the PBR plus any counterclaim, such as revocation of the PBR. The plaintiff must deliver a replication or plea to the counterclaim and thereafter, the defendant must file its replication in reconvention. Specific time periods are prescribed for the aforementioned steps. Once pleadings are closed, each party calls on the other to discover documents that are relevant to any matters in the action. A pre-trial conference is held with both parties as soon as possible after the discovery stage but no later than six weeks before the trial date. If there is an intention to lead expert evidence the parties must, before the trial commences, file a notice of such intention and provide a summary of each expert’s reasoned opinion.
The parties commence a trial with opening arguments. Thereafter, the witnesses are called for the purposes of oral evidence. This is commenced by examination-in-chief followed by cross examination. The party calling the witness also has an opportunity to re-examine the witness. Expert witness statements providing a summary of the evidence are exchanged between the parties in advance of the trial. At the conclusion of the evidence, both parties submit closing arguments. Usually, the Court is adjourned until a future date for closing arguments and the parties submit written heads of argument in advance of the allocated date.
A trial usually lasts two to four weeks for complex matters, but for less complex matters, this period could be as short as three to five days. Judgment is usually available fairly soon after conclusion of the trial, for example three to five weeks, but delays can be experienced, depending on the complexity of the matter.
The plaintiff may without proof of damages which might arise from infringement, be awarded compensation in respect of infringement in an amount not exceeding R10 000. Alternatively, on proof of damages, the plaintiff may be awarded damages. The court may also make an order in respect of the custody, surrender or disposal of any book, document, plant, propagating material, product, substance or other article.
There is no automatic right of appeal. A party wishing to appeal a judgment needs to apply to the Magistrate or High Court judge for leave to appeal (within 15 days from the date of judgment). If the court is satisfied that there is a reasonable prospect that another court may arrive at a different finding, leave to appeal will be granted.
Trade Marks and Copyright
The High Court has jurisdiction to hear matters of trade mark infringement, copyright infringement proceedings and trade mark cancellation matters. The Applicant will institute such proceedings by way of a notice of motion together with founding evidence.
The founding papers are served on the Respondent, who will have five court days to file a notice of his intention to oppose the application. If the notice is filed, the Respondent will have a further 15 court days to file his answering papers. Thereafter, the Applicant will have 10 court days to file a reply. Therefore, proceedings are generally conducted by way of documentary evidence, unless there is a dispute of fact, in which case, oral evidence from witnesses are required.
Once pleadings in an application have closed, the matter may be set down for hearing. South Africa follows a dual-bar system, so a barrister is usually briefed to prepare heads of argument and appear in the High Court to argue the application.
The length of civil infringement proceedings can vary as it largely depends on the manner in which it is contested. Once the matter has been argued by the barristers, the High Court Judge will generally reserve judgment, which may be handed down at the earliest within a couple of months.
A judgment from a single High Court Judge may be appealed to the Full Bench of the High Court or to the Supreme Court of Appeal.
Civil court action
The UAE has a Federal Court system, which consists of a Court of First Instance, Court of Appeal and Court of Cassation. However, a separate court system exists for the emirates of Dubai and Ras al Khaimeh. Would-be litigants would need to bring action in the Court which has jurisdiction as mentioned below.
In addition to the "on-shore" judicial system, some of the Free Zones which operate within the UAE also have, or in some cases will shortly have, their own Court systems, such as the Dubai International Financial Centre, Abu Dhabi Global Markets and Dubai Multi Commodities Centre.
The UAE courts having jurisdiction in infringement matters are:
- The court of the domicile of the respondent, place of residence or work (absent his or her domicile in the UAE);
- The court in the jurisdiction of which the damage occurred, or
- The court in the jurisdiction of which the agreement was made or executed.
- It is necessary to appoint a UAE advocate as these are the only lawyers with rights of audience in the UAE courts.
- There is little to no oral advocacy in IP proceedings. Plaintiff files a writ with the court and shall pay court fees, the amount of which depends on the value of the claim. The writ must contain the following: identity of the parties, court in charge of the case, presentation of facts, purpose of the claim, list of documentary evidence.
- Initially the case will be handled by the case management office, who will initially try to see if a settlement is possible. If a settlement is not possible, the Case Management Office (CMO) will set time frames in which the parties can file further written submissions and supporting materials. This can involve a number of exchanges of submissions.
- Once the CMO will then decide when to transfer the matter to the appointed judge. The judge will then decide if further submissions are required, or whether to set the matter for a decision. This may not necessarily be a decision on the merits, but could be a decision by the judge to appoint an expert. The expert, chosen by the judge, may not have any experience in IP matters, but will be tasked by the judge to answer a series of questions put forward by the Judge. The expert will meet with the parties to help obtain information and documentation to answer the questions and prepare a report to the Court. The Expert's report is non-binding. Once the judge is satisfied that the parties have had sufficient opportunity to present their cases, the court sets a date for the final hearing and judgment. In practice, there is no hearing of oral arguments.
- Time to judgment: see section 18 above, 6-12 months with no expert; up to 24 months if an expert is appointed
- The Courts of First Instance decision may be appealed to the Court of Appeal. The appeal is a second trial on the merits. The Court of Appeal makes its own findings of fact and law and it usually takes 6-8 months. The appeal decision may be further appealed to the Court of Cassation. The Court of Cassation proceedings, usually last 6-12 months, but can take longer if the matter is remitted to the lower court for comments. The Court of Appeal decision will be enforceable even if an appeal is filed with cassation, unless the appellant obtains a suspension of the implementation of the ruling of the Appeal Court (which is at the discretion of the Court of Cassation). The Court of Cassation only decides issues of law. It can only cancel or refuse to cancel an appellate decision (it is not entitled to reverse the decision as a Court of Appeal would do) and remand to another lower Court of Appeal.
- It is common for IP related court cases to be appealed to the Court of Appeal and a relatively high number are appealed to the Court of Cassation.
Criminal court action
- Criminal complaint filed with the Police (the Dubai Police has a specialized department in charge of IP infringement) or directly with the Public Prosecutor;
- The Public Prosecutor transfers the matter to the Police for investigation or, if the complaint is filed directly with the Police, the Police submit the complaint to the Public Prosecutor for approval.
- The Police carry out an investigation, including raids and interrogations, to gather evidence of the infringement, and submit its investigation report to the Public Prosecutor.
- The Public Prosecutor may order the Police to provide additional material evidence and information related to the criminal acts. If the Public Prosecutor finds sufficient evidence of the criminal acts, it will refer the case to the criminal court which has jurisdiction for where the crime occurred.
- The Public Prosecutor may order the dismissal of the complaint and closure of the investigations due to lack of evidence.
- If the claimant wishes to monitor progress of the criminal proceedings, it can file a civil claim against the defendant that is joined with the criminal proceedings (at the Public Prosecutor stage or when the matter is referred to the criminal courts). This will also allow the claimant to be officially represented at the hearing. A civil claim will be required to obtain damages.
- Time to judgment: see section 18 above
- Right to appeal: see section 19.1 above (there are also three levels of court in the criminal courts)
Civil cases involving intellectual property violations are cognizable by the Regional Trial Court designated by the Supreme Court as a Special Commercial Court. The action may be filed with the proper court with territorial jurisdiction over the complainant’s residence or the residence of the prospective defendant, although venue is purely a matter of procedure and may thus be waived by both parties through prior agreements such as venue clauses, or by the defendant failing to object to an improper venue.
The proceedings are initiated by the filing of a Complaint and the payment of the required docket fees. The Complaint must be under oath and must also contain: (1) a Certificate of Non-Forum Shopping, or essentially a sworn declaration that the complainant has not initiated a case involving the same facts, issues, and parties in any other court or tribunal (e.g. the IPO), and (2) affidavits, in question-and-answer form, attesting to the allegations. If there is no Special Commercial Court designated in the place where the action is filed, the Complaint is raffled to the proper branch. After the raffle, summons must be issued by the court within five (5) days.
Upon receipt of the summons, the defendant must file an Answer to the Complaint, which should likewise include affidavits of the same format supporting the defense. Unlike in ordinary civil actions, the failure to file an Answer allows the court on its own (motu proprio or ex mero motu) to render judgment as may be warranted by the allegations of the Complaint and the evidence or affidavits on record.
Within thirty days after the filing of the Answer (or upon joinder of the issues of the case), either party may resort to discovery. Five (5) days thereafter (or from the lapse of the allowed period for discovery), the court shall set the case for pre-trial and, afterwards, mediation and judicial dispute resolution, if necessary. If said alternative modes of dispute resolution fail, pre-trial is terminated. If the parties decide to submit the case on the basis of position papers, the parties may file the same for the consideration of the court. On the other hand, if there are matters to be clarified, the court may set the case for clarificatory hearings and afterwards require the submission of position papers. If the court deems a trial necessary, trial then proceeds, with the affidavits above substituting for direct examination of witnesses, and culminates with the order for the parties to submit their respective draft decisions. The court will then proceed to render judgment.
A party aggrieved by the decision of the court is not allowed to seek its reconsideration, since a motion for reconsideration is a prohibited pleading. Instead, it must appeal the decision of the court to the Court of Appeals.
For criminal cases, the case is initiated by filing a complaint-affidavit with the Department of Justice or the office of the prosecutor that has jurisdiction over the offense charged. The rules then follow the general rules of procedure for criminal cases, except that the parties must appear for mediation over the civil aspect (i.e. damages) of the criminal action. Under Philippine law, however, the criminal liability itself cannot be settled or compromised.
In either case, a deposition of a witness abroad may be taken upon application by the interested party and within six (6) months from the date of the order allowing the deposition.
Federal courts have jurisdiction over patent law under the Patent Act, enforcement of trademarks (registered and unregistered) under the Lanham Act, and federally-registered copyrights under the Copyright Act. Complaints are filed in federal district court where venue is proper. After a complaint has been filed and served on the defendant, the defendant files an answer and discovery begins. The amount of time that passes between filing of the complaint and judgment from the court can vary between one to three years, depending on the docket of the court. Trials can be carried out before ultimately resolving the matter and the trials are decided by a jury or by the judge in a bench trial if the right to a jury trial has been waived. Intellectual property owners may be entitled to monetary damages, injunctive relief, or both. Litigants in a patent dispute have the right to an appeal to the Court of Appeals for the Federal Circuit, which usually provides a decision within twelve to eighteen months. Otherwise, final judgments can be appealed to a geographically-located court of appeals.
For patents, utility models, trademarks, designs, copyright and unfair competition, the relevant pieces of legislation concentrate court proceedings with specified courts in each Federal State.
Proceedings are initiated by a complaint. The court may then order written proceedings or schedule an early oral hearing.
The time to trial depends on the procedure chosen by the court in regular proceedings, and can vary from a few months until the oral hearing to over a year. Following the oral hearing, the court will close the proceedings and issue a decision in due course.
Remedies available include injunctive relief, disclosure of information and rendering of accounts, damages, destruction of goods, publication of the decision etc.
In preliminary injunction proceedings, a decision can be obtained within 24 to 48 hours. Remedies available include, depending on the IP right involved, injunctive relief, a very limited claim for disclosure of certain information, surrender of goods to a sequester, right to inspection.
In intellectual property matters each of the 26 cantons designates a court to handle intellectual property matters with the exception of patent matters which are handled by the Federal Patent Court. The cantons usually designate either the cantonal court of appeal or the commercial court (if existing in their jurisdiction) as the competent court for intellectual property matters.
Proceedings are initiated by filing a (written) claim with the competent court. The court will then issue an order setting a deadline for the advance payment of the court fees. The claim submitted by the claimant will be forwarded to the respondent for response. Usually there are two rounds of exchange of writs, in complex matters even three and based on the evidence filed the court will decide on how to proceed with any evidentiary hearings or in-court settlement hearings. The time to judgement will strongly depend on the parties requesting extensions of deadlines, the complexity of the case and the evidence submitted. The minimum is one year but the time to judgement can easily take several years. Awards of relief or remedies include Injunctions (preliminary or final), a declaratory judgment as to the validity of the intellectual property or infringement/non-infringement, assignment, order to disclose the origin and quantity of the objects in the defendant's possession and to disclose the addressees and the extent of any transfer to commercial recipients, rendering of accounts, damages, redress or surrender of profits, publication of the judgement and/or the destruction of infringing goods and their removal from the market. Decisions by the cantonal courts or the Federal Patent Court can be appealed to the Federal Supreme Court.
Depending whether the parties are legal entities or individuals, a claim is raised before the general jurisdiction courts or economic courts.
The civil court action is initiated upon submitting of the claim to the court, by any person whose rights have been infringed.
The administrative and criminal proceeding can be initiated on the ground of the complaint filed by the person or on the ground of investigation of the enforcement authorities.
The format of the trial is oral and public.
The average timeframe of the civil court proceeding at the first instance is up to 10 months. The average timeframe of the administrative proceeding at the court, is up to 6 months, criminal proceeding at the court – up to 10 months. The average timeframe of appeal (and second appeal) proceeding is 6 months.
The judgment is being declared during the court hearing (with the full text of the court decision to be prepared and signed afterwards, in average within 10 working days after the judgment is rendered). The courts of second appeal may render the judgment within the framework of written proceeding and then provide the parties with full text of the judgment.
The judgment can be enforced, and the relief be awarded by the losing party on voluntary basis. Also, the winning party may apply to the state bailiff service that controls the compulsory judgment enforcement, in certain cases – with assistance of the fiscal authorities, bank institutions and other authorities. Request for compulsory execution of judgment may be filed within three years after the judgment has come in force.
Appeal (and second appeal) can be filed on the ground of infringement of material and/or procedural law as well as on the ground of wrong estimation of merits of the case.
The court having jurisdiction on cases falling under the scope of IPL shall be the court of intellectual and industrial rights and criminal court of intellectual and industrial rights. If a civil court of intellectual and industrial rights is not available in a certain district, the civil court of first instance shall have jurisdiction. If a criminal court of intellectual and industrial rights is not available, it shall be replaced by the criminal court of first instance. With respect to litigations to be filed by the owner of industrial property rights against third parties, the court having jurisdiction shall be the one that is located in (i) the domicile address of the claimant, (ii) the place where the action infringing the law was committed or (iii) the place where the effects of this action are observed. If the claimant is not domiciled in Turkey, the court having jurisdiction shall be the one where the registered office of the owner’s agent that is entered into the registration is available or, if the claimant no longer has an agent, the court where the head office of the Authority is located (Ankara). Regarding the litigations to be filed by third parties against the owner of industrial property rights, the court having jurisdiction shall be the one that is located in the domicile address of the respondent (that is, the owner of industrial property rights). If the applicant or owner of industrial property rights is not domiciled in Turkey, the court having jurisdiction shall be the one where the registered office of the owner’s agent that is entered into the registration is available or, if the owner no longer has an agent, the court where the head office of the Authority is located (Ankara). As for the litigations to be filed against the Authority, Ankara Civil Court of Intellectual and Industrial Rights shall have jurisdiction.
Litigations filed for intellectual and industrial property rights shall be subject to written proceedings and it shall be essential to conclude the litigation in a reasonable time based on the right to fair trial. It shall be possible to appeal the finalized verdicts of the court as well as rejection of provisional injunction and precautionary distraint requests and verdicts to be rendered upon objection against the acceptance of any such request.
The proceedings start when an action is filed with the Patent and Market Court, which has exclusive jurisdiction for proceedings regarding intellectual property rights. After this, exchange of documents follows where the arguments and evidence are first presented in writing and later at the hearing, orally. Decisions rendered by the Patent and market Court can be appealed to the Patent and Market Court of Appeal at second instance and to the Supreme Court at third instance. From the date of trial it takes about six weeks for the judgment to be made available.
An action brought due to a breach of the Act on Protecting of Trade Secrets is tried before a general court since the Patent and Market court does not have jurisdiction in these matters.
Civil court proceedings:
Competent courts in civil court proceedings:
The competence to hear civil judicial cases on Patents, Trademarks and Designs corresponds to the Civil courts of Barcelona, Madrid and Valencia.
However, in those civil judicial proceedings cases in which either a EUTM or a Community design is invoked together with a Spanish trademark and/or Spanish Design the competence to hear the case corresponds to the EUTM Courts located in Alicante.
Copyright infringement cases are to be brought before the tribunals of the place where the infringement took place, or where there are illicit copies (claimant’s choice).
How to start civil court proceedings:
Civil court proceedings should be commenced by the filing a writ of claim describing the facts of the controversy, reasoning the legal grounds supporting the claims and detailing the corresponding petitions.
If the claimant is interested in requesting interim injunctions measures to ensure the effectiveness of the judgement adopted in the main action, such request, in principle, should be filed together with the writ of claim on the merits.
Exceptionally, in cases of special urgency or necessity, there is the possibility of filing a request for interim injunction measures prior to the filing of the writ of claim on the merits. However, the measures will be rendered ineffective if the claim on the merits is not filed within the twenty days following the adoption of the interim injunctions measures. If the facts so justifies, interim injunctions might be also filed after the commencement of the main case.
Basics of the civil procedure:
Civil court proceedings commence with the filing of the claimant´s writ of claim. If the claim fulfils the necessary formalities, the Court will accept the claim to procedure and a copy of the writ of claim will be served to the defendant to prepare and file its answer to the claim within 20 working days term.
The defendant when replying to the claim can also file its own counterclaim, copy of which will be then served to the claimant to respond.
In an unprecedented exemption to the general rule in civil proceedings, the defendant in patent cases ("alleged infringer") will be granted a two-month term to answer the claim /file a counter claim (Section 119). General principle under Spanish law is that defendants in civil litigation have 20 working days to prepare their defence and file all relevant documents to sustain their case.
It is still to see if such term will be also applicable to other IP (non-patent) cases.
Once both parties have filed their corresponding initial writs (writ of claim, possible counterclaim and responses) the Court will fix a date for a pre-trial hearing. The time to the pre-trial hearing would vary depending on the complexity of the case and the competent court´s workload. However, in normal circumstances, it would take place in the two or three months following the filing of the parties’ initial writs.
The aim of the pre-trial hearing is exploring the possibility of reaching an agreement between the parties. While some judges are pro-active in this respect and encourage parties to settle the dispute (even proposing guidelines to do so), the majority of judges leave this to the parties' initiative. If no agreement is possible, assessing the need to conduct a trial hearing and deciding on the evidence to be produced during such trial hearing.
In the case that, the Court considers that the evidence filed by the parties together with their corresponding writs (writ of claim, possible counterclaim and responses) is enough to decide the case on the merits, there will be no trial hearing. The Court will issue its judgement in the next three to six months after the pre-trial hearing.
If, however, the Court considers that the evidence filed by the parties together with their corresponding writs (writ of claim, possible counterclaim and responses) is not enough to decide the case on the merits, it will decide on the evidence proposed by the parties at the trial and fix a date for the trial hearing.
The time to trial may depend, again, on the complexity of the case and the competent court´s workload. Nevertheless, in normal circumstances, the trial hearing would take place six to nine months after the pre-trial hearing.
Format of the trial in civil court proceedings:
The trial shall commence practicing the admitted evidence.
Although it is the parties' duty to impel and foster judicial proceedings (adversarial principle), the Court might take a pro-active approach during the case and can raise questions to counsels, parties, witnesses and experts. Spanish law also provides that the Judge can request the deposition of witnesses or the disclosure of documents on the Judge's own initiative.
Further, having set out its conclusions on the facts at issue, each party may orally inform the legal arguments on which its claims are based.
If the Court does not consider itself sufficiently illustrated on the case with the conclusions and reports provided for by the parties, it may request pleading counsels further explanations.
Usually the trial hearing takes place in one day. However, the Court may decide to conduct the trial hearing in several days depending on the complexity of the matter and the amount of evidence to be produced during the trial hearing.
In normal circumstances, a decision on first instance would be issued within three to six months following the trial hearing.
Award and relief in civil court proceedings:
Among other things, the Patent, Utility Model, Trademark and/or Design 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;
- publication of the judgment at the infringer’s expense, and
- reimbursable legal costs.
Possible appeals in civil court proceedings:
The judgement of first instance can be appealed before the Court of Appeal. The Court of Appeal would be able to review both the assessment of the evidence produced in proceedings on the facts as well as the legal reasoning of the judgement of first instance.
Solely if certain requirements are met there is the possibility of filing new evidence during the appeal phase and of conducting an appeal hearing.
Further, the appeal decision can be appealed before the Supreme Court if certain (and very restrict) requirements are met. The Supreme Court would only review the legal reasoning of the appeal judgement (error of law) but would not re-asses the facts of the case.