What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

Intellectual Property (2nd edition)

Japan Small Flag Japan

Basically, the defeated party shall bear the court costs. In the case of partial defeat, the burden of court costs on each party shall be determined by the court at its discretion. To recover attorneys’ fees a plaintiff needs to establish the amount of reasonable fees as damages. The amount of recoverable attorney’s fees depends on the complexity of the case and other circumstances. In many cases, the amount is around 10% of the financial damages awarded by the court.

If a plaintiff does not have any domicile, business office or other office in Japan, the court shall make an order to the effect that the plaintiff should provide security for court costs upon a petition by the defendant.

UAE Small Flag UAE

Costs of enforcement proceedings: see section 17/18 above

Costs recovery: UAE courts ordinarily award to the winning party a nominal amount as partial reimbursement of its legal fees. The winning party may however recover court fees.

Security for costs: UAE courts would order a claimant to provide security for costs only when issuing an interim attachment order at claimant's request (as per section 31 above).

Mexico Small Flag Mexico

Enforcement Proceeding

Cost (approximately)

Invalidation actions

$ 4,000 - $8,300 USD

Cancellation actions

$ 3,000 - $ 7,500 USD

Infringement actions

$ 6,500 - $ 15,500 USD

Criminal actions

$ 2,000 - $ 20,000 USD

There is not any cost recovery available for this kind of procedures but only for civil actions related with copyrights and related rights.

India Small Flag India

The entire cost of enforcement proceedings will include the official costs, as well as the professional fees for representation. While costs are often granted by the adjudicating court, these are symbolic and minimal. The punitive damages in intellectual property matters are usually not commensurate with the actual damages suffered by the Plaintiffs. Courts may require the deposit of monies with them, as security, however, this practice is typically used for money decrees, and not for costs as are granted in successful intellectual property actions.

In India, the realm of intellectual property law is developing quickly. Laws are TRIPS compliant, and evolving fairly swiftly. The balance the rights of creators and consumers is an important concern, which needs to be constantly kept in mind.

The smooth and consistent functioning of the Intellectual Property Offices is a vital step in the right direction. Further steps to take include the mandatory recording of security interests in any intellectual property, as well as a more cohesive online system.

Updated: June 15, 2018