What defences to infringement are available?

Intellectual Property (2nd edition)

Japan Small Flag Japan

Patents

  • Non-infringement
  • Patent invalidity
  • Exhaustion
  • Use for experimental or research purposes
  • Abuse of right
  • Prior user’s right, etc.

Trademark rights

  • Non-infringement
  • Non-use as a trade mark
  • Invalidity of trademark registration
  • Parallel importation
  • Abuse of right
  • Prior user’s right, etc.

Copyright

  • Non-infringement
  • Reproduction for private use
  • Citation
  • Exhaustion
  • Stage performance, etc. for non-commercial purposes
  • Reporting of current events
  • Exploitation of an artistic work on public display
  • Abuse of right, etc.

Design Rights

  • Non-infringement
  • Invalidity of design registration
  • Exhaustion
  • Use for experimental or research purposes
  • Abuse of right,
  • Prior user’s right etc.

UAE Small Flag UAE

Patents and utility certificates

  • Acts done for non-industrial/commercial purposes (this defence is only available in relation to patents infringement)
  • Activities related to academic research (this defence is only available in relation to patents infringement)
  • Good faith acts done by a person in the UAE prior to the filing date or priority date of a patent or utility certificate and that subsequently constitute an infringement

Trademarks

  • There are no statutory defences to trademark infringement.
  • A cancellation action against claimant's rights may be contemplated but it will be a separate action to the infringement claim.

Copyrights and Neighbouring rights

  • Copy of a published work for personal and non-commercial use (with the exception of works of fine art or applied art in private places, architectural works, computer programs and database – apart from a backup copy)
  • Copy of a protected work for use in judicial and similar proceedings
  • Copy of a protected work at libraries or documentation centre for the preservation of original documents
  • Copy at libraries or archives for a person's studies or research
  • Quotation of an extract of a protected work for the purpose of criticism or information
  • Performance of a protected work in family gatherings of in educational institutes against no remuneration
  • Broadcasting of fine arts, applied and plastic arts, and architectural works located in public places
  • Copy of short excerpts for cultural, educational or religious needs, for no profit
  • Copy by the press of extracts of publicly available works
  • Copy by the press of protected works relating to issues preoccupying the public opinion
  • Copy of public lectures and speeches for the purpose of reporting news

Designs

  • Good faith acts done by a person in the UAE prior to the filing date or priority date of an industrial drawing or design and that subsequently constitute an infringement

New plant varieties

  • Scientific experiments
  • Activities done for the purpose of deriving new varieties and
  • The use by farmers in their own holdings for the purpose of the propagation of the harvest they gained through growing the plant variety for non-commercial use.

Mexico Small Flag Mexico

Infringers might either file a response arguing that the infringement action is groundless and providing evidence that supports the legal use of the intellectual property right in matter; or file an invalidation action (as a counteraction) against the registration used as legal standing by the plaintiff.

India Small Flag India

Trademark: Honest concurrent use, acquiescence, no confusion due to difference in goods and services/counter of sale/class of purchasers/nature of product/pricing.

Copyright: Fair dealing, such as for educational purposes, judicial proceedings, and legislative proceedings. Further, for a lawful possessor of a computer programme, the making of copies of the programme in certain circumstances does not constitute infringement.

Patents: As per the Indian Patents Act, the defendant can challenge the validity of the patent on grounds as provided in the Act. Further, in any suit for infringement of a patent by the making, using, or importation of any machine, apparatus or other article, or by the using of any process or by the importation, use, or distribution of any medicine or drug, it shall be a ground for defence that such making, using, importation, or distribution is in accordance with any one or more of the conditions specified in Section 47 of the Act.

Designs: All grounds available to a person seeking cancellation may be adopted as a defence in infringement proceedings.

Updated: June 15, 2018