Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Intellectual Property (2nd edition)
Pre-trial warning letters and a 30-day dispute resolution period are mandatory for intellectual property right enforcement claims related to payment of damages or monetary compensation.
In addition, before filing of a trademark cancellation action due to non-use, it is mandatory to approach the trademark holder with a proposition to settle the matter by assigning or voluntarily cancelling the trademark registration. The duration of the mandatory dispute resolution period for non-use cancellation actions is 2 months.
Administrative enforcement and customs procedures are available as explained in the answers to questions 17 and 20.
Pursuant to the article 56 of the French Civil Proceedings Code (CPC), unless otherwise justified by the urgency or the issue at stake, the claimant must specify in the writ of summons the actions undertaken to amicably resolve the dispute. In the absence of any attempt to reach an amicable solution, the judge may suggest to the parties to initiate a conciliation or mediation procedure.
They are only mandatory if the dispute is based on a contractual matter where the contract provides for mandatory non-enforcement options and/or dispute resolution mechanisms.
No such mechanisms are mandatory in intellectual property disputes. The court is required to persuade the parties to resolve the matter amicably, especially by using mediation, but the parties are not required to accept this.
Under Italian Law the claimant does not have to comply with any preliminary requirement or condition such as dispute resolution mechanisms or non-court enforcement options before commencing judicial proceedings.
No unless contractual provisions to the contrary are provided.
The Chilean laws on Industrial Property and Intellectual Property do not consider alternative procedures for the resolution of disputes concerning industrial or intellectual rights.
As previously mentioned under 17, disputes concerning infringement of trademarks, patents and industrial designs, initiated before a civil court, shall be subject to mandatory mediation. The hearing of the case shall be invalid if the mandatory mediation process stipulated in the law has not been followed.
In the UK, the Civil Procedure Rules require litigants to engage in the "Pre-Action Protocol". Under this protocol, the Claimant should provide details of the claim and the basis on which it is made, the facts of the case and details of what the Claimant is seeking, and the Defendant should confirm whether the claim is accepted and, if not, why not.
However, the court will not expect the Pre-Action Protocol to be complied with where, among other things, telling the other party would defeat the purpose of the application or the urgency of the application is such that it is not practical to comply.
If a Claimant does not comply with the Pre-Action Protocol, it must inform the court that it has not done so and the Defendant may have additional time to file its Defence. There may also be cost consequences for the Claimant at the end of the case, when the court determines responsibility for legal costs.
There are no mandatory non-court enforcement options or dispute resolution mechanisms available in respect of intellectual property disputes.
They are not mandatory, though courts will always seek to reach a settlement between private individuals.
Enforcement of intellectual property rights against an alleged infringer generally falls to the federal court system. Federal courts often require that parties to litigation submit to facilitation, mediation, or arbitration as an alternative mechanism that can bring parties to a resolution. However, these proceedings cannot be mandated to resolve the dispute.
There is no mandatory system in relation to non-court enforcement options or dispute resolution mechanisms to be elected for intellectual property disputes.
Under the Rules of Procedure for IPO Mediation Proceedings, mediation is mandatory for the following administrative cases:
(a) Administrative complaints for violation of Intellectual Property Rights and/or Unfair Competition;
(b) Inter Partes cases;
(c) Disputes involving technology transfer payments;
(d) Disputes relating to the terms of a license involving the author's rights to public performance or other communication of his work;
(e) Cases appealed to the Office of the Director General from decisions of the BLA and the DITTB; and
(f) All other cases which may be referred to mediation during the settlement period declared by the Director General.
Mediation is done before the IPO Mediation Office.
Note however that cases with pending application for Temporary Restraining Order/ Preliminary Injunction, attachment or other ancillary remedies shall not be referred to mediation unless the parties, in joint written motion, pray that the case be made to undergo mediation.
Under the Rules of Procedure on Intellectual Property Rights Enforcement, the IPO has enforcement actions and visitorial power based on information, report and complaint received by the IPO. An IPR Enforcement Office is created under these Rules whose functions include the issuance of visitorial orders, compliance orders and mission orders, the filing of formal charges before the appropriate government agencies and/or tribunals, and the exercise of such other powers as may be necessary to ensure compliance with the IP Code.
Cases filed before the Regional Trial Courts may also undergo Court-Annexed Mediation, Judicial Dispute Resolution and Appeals Court Mediation.
Administrative enforcement actions are available as outlined above.
All disputes between employers and employees must first be referred to the Ministry of Labour for settlement.
An administrative procedure which is conducted by the Mexican Patent and Trademark Office. It is called “border measures”. Its main purpose is to seize or interrupt the free circulation of infringing products at the border.
There are no mandatory non-court enforcement or dispute resolution mechanisms mandatory in respect of intellectual property disputes, unless the contractual relationship between the parties mandates any specific form of non-court dispute mechanism.
No, there are no mandatory non-court enforcement options or dispute resolutions in Sweden.
No, non-court enforcement options or dispute resolution mechanisms are not mandatory (even if they exist).
In any circumstances, there are no non-court enforcement options or dispute resolution mechanisms mandatory in respect of IP disputes in Vietnam. However, in practice, except for cases of possible criminal liability, in any point of time regarding handling of infringement via administrative measure or court, concerned parties are advised to negotiate or conciliate with each other.
Non-court enforcement is not mandatory. However, in order to avoid bearing of costs if the defendant in court proceedings accepts the claim immediately, it is advisable to send a prior warning letter and request a declaration to cease and desist.
However, it is noted that, as discussed above, some proceedings may be filed before the Comptroller of Industrial Property, such as patent revocation proceedings, while others would have to be filed before the Patents Tribunal. Matters relating to an authorised collecting society or orphan works would also need to be addressed to the Copyright Board.
The Brazilian Code of Civil Procedure determines that, unless both parties expressly state that they do not wish to go through a mediation procedure, it will be carried out within the lawsuit, that is, in court, before the case moves to trial. Other than that, there is no mandatory non-court enforcement option or dispute resolution mechanisms.
It is not mandatory to engage in mediation. However, according to the Dispute Act, the parties shall investigate whether it is possible to reach an amicable settlement before initiating the court proceedings, and try to settle the dispute outside court.
As a matter of form, please note that the above-mentioned does not apply when filing a request for preliminary injunction in accordance with chapter 34 of the Dispute Act.