What defences to infringement are available?
Intellectual Property (2nd edition)
Defences to infringement vary depending on a case. The most common defences are arguing that there is no criteria of infringement (lack of confusing similarity with a trademark, non-use of a patent, personal use, non-commercial use, etc.) and that the plaintiff is not entitled to the relevant intellectual property rights. The latter is not directly available with registered rights such as trademarks and patents since a separate invalidity action needs to be filed with the Chamber for Patent Disputes. However non-use cancellation actions with the Intellectual Property Court against trademarks are very common as an infringement defence.
General defences include challenging the validity of IP rights.
For patents, defences to infringement also include prior art defence, which applies if the alleged infringing technology or design belongs to the prior art or is a prior design, and prior use defence, which however is limited to the scope of alleged infringer’s practicing the concerned patent prior to the filing date of the patent.
For unregistered rights (i.e. copyright), defendants can argue the right does not amount to a copyright work and/or there has been no copying (or they had permission from the owner to copy).
For registered rights defendants can use the standard defences.
For trademarks, infringement defences usually include arguing the dissimilarity of the marks and/or goods/services, no confusion/misleading will be caused, and may also occasionally include to argue the OEM use, fair use, or prior use with certain influence under Article 59 of PRC Trademark Law. For sellers, they may also argue that they have no knowledge of the infringing goods by proving the legality of acquiring such goods and pointing out the provider as per Article 60 of PRC Trademark Law, to avoid fines and/or other punishments except to be ordered to cease selling the goods.
In case of infringement action, available defences include:
- Procedural defences:
- procedural defences are defined as “any mean aiming to have the procedure declared irregular, extinguished or stayed” and include:
- the lack of jurisdiction of the court seized;
- the exception of lis pendens and related cases;
- the stay of the proceedings;
- irregularities affecting the validity of the writ of summons.
- defence of non-admissibility defined as any mean seeking to have the plaintiff claim’s declared inadmissible, without entering into the merits of the case, for lack of a right of action, such as a not being the proper party, lack of interest, statute of limitations, fixed time-limit or res judicata.
- procedural defences are defined as “any mean aiming to have the procedure declared irregular, extinguished or stayed” and include:
- Invalidity of the IPR at stake;
- Invalidity of the seizure;
- Exhaustion of rights;
- Lawful customs transit : pursuant to prior case law from the Supreme Court, the holder of such goods benefited from a “legitimate reason” and, thus, infringement should be ruled out in this situation. However, in a recent decision ( January 17, 2018, n°15-29.276), the French Supreme Court overturned its jurisprudence, as the EU Directive did not provide such exception to infringement. As a result, the Supreme Court held that, the trademark being affixed in France, the Court of Appeal had rightfully found that, although the goods were intended to be exported to China, infringement was characterised in the present case.
As regards patents, specific defences notably include:
- private non-commercial use;
- experimental use;
- acts, studies and tests required for the filing an application for a marketing authorization or the grant of advertising visa;
- acts performed to create, discover or develop new plant varieties;
- personal prior use.
As regards trademarks, specific defences include:
- the existence of a prior right (company name, business name, sign board);
- the preclusion due to acquiescence of the litigious use;
- the revocation for non-use of the trademark;
- the trademark has become generic or misleading;
- the absence of use of the litigious sign in the course of trade and/or as a trademark;
- the use of the litigious sign as a necessary reference or a geographical indication;
- the use in good faith of its own name.
As regards copyright, specific defences include the exceptions listed in the article L. 122-5 of the IPC in particular:
- private performance or copy;
- analysis or brief quotation;
- press review, news or public speech, public searches;
- accessory reproduction of a building or a sculpture.
Available defences include without being limited to non-infringement (e.g. no likelihood of confusion in trademark matters), prior use( to the registration), non-use, invalidity of the IP right, exhaustion of the IP right, forfeiture of rights, , compulsory licence, special privileges, private use.
In general, the most common defences in IP infringement cases concern the following arguments:
a) that the act complained did not qualify as an infringement, due to being within a specific statutory exemption (such as fair use for copyrights, the Bolar exemption for patents, or exhaustion of rights); or
b) that the claimant was not entitled to the right the claim is based on (e.g., not holding the copyright). This defence may not be used in infringement proceedings of registered rights (such as patents or trade marks), as the court is not authorised to assess the validity of these rights (this is the Patent Office's exclusive prerogative).
There is no definite list of defences, so others are available depending on the nature of each case.
The alleged infringer may use some defences in order to paralyse the infringement legal action brought against it. Therefore, the alleged infringer may claim for example:
- the invalidity of the contested IP right,
- the existence of a license of the contested IP right,
- the use of the contested patent for private, non-commercial or experimental purposes,
- the study or experimentation made to obtain the marketing authorisation for medicinal products,
- the descriptive use of the contested trademark,
- the registration in bad faith of the contested trademark.
Patents (and SPCs):
- The act was done privately and on a non-commercial scale, provided that it does not substantially prejudice the economic interest of the owner of the patent
- The act consists in making or using the invention for purely experimental purposes or for scientific research
- The act consists in the extemporaneous preparation of a medicine in accordance with a medical prescription made for individual cases by a medical doctor or in a pharmacy and act concerns a medicine thus prepared
- The act concerns a patent protected product which has been put on the market by the owner of the patent or with his explicit consent, committed after that product has been put on Cyprus market.
- No similarity between the trade marks involved.
- No similarity between the goods and/or services covered by the trade marks involved.
- The trade mark against which infringement proceedings have started it is not used in trade.
- The reputation of the trade mark against which infringement proceedings have started.
- Honest, concurrent use of the trade marks involved.
- Bona fide use of the trade mark against which infringement proceedings have started.
- Unreasonable delay by the claimant to start the infringement proceedings.
- Orphan works, that is to say works whose author is unknown, or cannot be determined by reasonable enquiry.
- Temporary copies of the works.
- “Fair dealing”, which is bona fide use of the work for research, private use, critical analysis or reference to current facts; in case of public use the title and the author of the work must be stated.
- Private use of the work for non-direct or indirect commercial purposes provided that the authors receive fair compensation.
- Reproduction of parts of the work under circumstances and provided that the author of the work is stated.
- Reproduction and distribution of copies of an artistic work which permanently installed in a place where it is visible to the public.
- Reproduction on paper by means of any photographic technique, except musical scores, provided that the authors receive fair compensation.
- Use of the work for educational, teaching and research purposes provided that the author of the work is stated.
- Use of the work for artistic, archival and cultural purposes.
- Incidental inclusion for artistic works in movies or programmes.
- Use of the work for information purposes, that is to say reproduction of articles related to financial, political and religious matters when their use is not expressly prohibited and provided that the name of the author is stated.
- Use of the work for social purposes.
- Use of the work for purposes of legal, parliamentary or administrative proceedings.
- Private and non-commercial act
- Act done for experimental purposes
- Reproduction for teaching purposes provided that the source of the design is revealed and these acts are not contrary to the customary trade and do not adversely affect the exploitation of the design
- Certain acts in respect of ships or aircraft registered outside of Cyprus
The first defense argument is the claim that the owner of the right, has no rights and / or should not have received it. In patents, the claim will be that the owner should not have been given the patent. In copyrights, a claim that the owner has no rights in the work, etc. The second defense argument is that there is no infringement. In patents, the infringement does not fall within the scope of patents claims, in designs – this is not a blatant imitation of the design. Copyright – no significant part of the work was taken, in trademarks – that there is no misleading similarity.
Each of the laws has specific defenses, such as in patents – Prior use defense (section 53 to the Israeli Patent law):
53. If, on the determining date, a person in Israel in good faith exploited the invention for which the patent is applied for, or if he in good faith made actual preparations for its exploitation, then he shall be entitled to exploit the invention himself and in the course of his business without consideration; for the purpose of this provision, the “determining date” is the date on which application for the patent was submitted in Israel or—if priority right under section 10 is claimed for that application—the date of submission of the previous application on which the claim for priority right is based.
Other defenses available to an alleged infringer include:
The patent is not infringed because:
- The activity of the alleged infringer does not fall within the scope of the claims; or
- The activity does not fall within the definition of ''exploitation'' of the invention, such as non-commercial use, experimental use aimed at improving the invention or making another invention and experimental use towards obtaining regulatory marketing approval for use after the expiry of the patent.
- Invalidity of the patent.
- The ownership of the invention belongs to the alleged infringer and not to the patent holder.
- The alleged infringement was commenced after publication of the patent's expiry, even though it was subsequently reinstated.
- The allegedly infringing use is made by a prior user, who under the law has the right to continue such use.
The patent holder has acquiesced or impliedly consented to the allegedly infringing use. Additional defences in all areas of intellectual property are defences of equity, such as acquiescence, laches, fair use, innocent infringer and good faith.
Patents, utility models
- The most common defence in infringement cases are invalidity objections and nullity actions. Full or partial nullity declarations can be either made by way of an independent legal action or a counterclaim during the infringement proceedings.
- Defendants may also claim that they or their assignors had already conceived and exploited the subject matter of the invention at the time of filing of the patent and that they have used it for the purposes of their business.
Further possible defences are:
- Allegation that the patent has been used for research purposes.
- Exhaustion of patent rights.
- Allegation concerning the abusive exercise of the right holder’s substantive rights.
- Prescription. Injunction and/or damages claims are statute barred 5 years after the date the patentee became aware of the infringement or of the damage concerned and of the person of the infringer, or in any case twenty years after the date on which the infringement was committed.
- Acquiescence of the right holder.
The most common defence in industrial design infringement cases are invalidity objections and nullity actions
Further possible defences are:
- Use of the design for private, non-commercial purposes, and/or use for experimental or research purposes as well as reproduction of the design for providing examples or for teaching purposes.
- Exhaustion of design rights.
- Prescription. Injunction and/or damages claims are statute barred 5 years after the date the patentee became aware of the infringement or of the damage concerned and of the person of the infringer, or in any case twenty years after the date on which the infringement was committed.
- Acquiescence of the right holder.
The above defenses also apply to semiconductor topographies infringement cases.
In civil law cases, the defendant, may inter alia invoke the following defenses:
- No likelihood of confusion between the marks exists.
- The earlier mark is not famous.
- The sign is not used as trademark but in a descriptive way.
- The use of the mark by the plaintiff is misleading.
- The defendant has a prior right (e.g. trademark, non-registered mark, tradename).
- Acquiescence by the proprietor of the earlier mark in the use of the infringing mark.
- Limitation of a trademark right.
- Exhaustion of trademark rights.
- Time bar/Prescription.
In the context of administrative proceedings (opposition or invalidity proceedings), if the grace period for non-use of the registered mark has expired, the defendant can request the trademark owner to prove that it has put its trademark to genuine use within the relevant period.
In addition to asserting lack of violation of established business morals, the defendant may claim the following:
- Consent of the plaintiff.
- Usual/acceptable of the defendant’s behaviour.
- Abuse of rights.
The defendant, may, inter alia, invoke the following defenses:
- The disclosed information was not confidential or proprietary.
- The disclosed information was in the public domain or have become lawfully publicly available.
- The information was communicated under obligation to a judicial, administrative or regulatory authority.
The defendant, may, inter alia, invoke:
- Lack of infringement.
- Lack of originality of the claimant's work.
- The copyright is exhausted.
- Limitations to copyright under Greek copyright law, such as private reproduction, quotation of extracts, use in school textbooks and anthologies, use for teaching and related purposes.
An act is only capable of infringing if it is done without the consent of the proprietor and in respect of a right which exists and is not invalid (or in respect of a tort which has been established, such as breach of confidence or passing off). One of the most common defences in infringement proceedings is therefore that the right is invalid (for registered rights) or does not subsist (for unregistered rights). The burden of establishing such a defence lies upon the alleged infringer.
Another very common defence is that the act complained of does not constitute an infringement. For instance, the alleged infringer may argue that the product or process does not fall within the scope of what is claimed in the patent, or that copyright is not infringed because there was no copying, or the copying does not relate to a substantial part of the work.
Further, and generally speaking, once goods are put on the market in the European Economic Area by the proprietor of the relevant intellectual property or with their consent, it is not an infringement to deal in the goods in question. The so-called 'exhaustion' of the intellectual property right(s) may therefore operate as a defence in infringement proceedings.
In respect of specific defences to IP infringement:
Defences to patent infringement
- Non-infringing acts. There are a number of acts which are not infringements of a patent. The most common of these are acts done: privately and for non-commercial purposes; for experimental purposes; or in a pharmacy in preparation of a medicine for an individual in accordance with a prescription.
- 'Bolar' exemption: Undertaking the tests and trials necessary for a generic medicine to utilise the shortened procedure for obtaining marketing approval will not infringe a patent. (However, there is a period of data exclusivity within which data submitted in connection with an innovative drug cannot be used by third parties, and a period of market exclusivity within which generic medicines cannot be placed on the market. The combined period of exclusivity is typically around 10 years in Europe).
- Gillette Defence: A Gillette defence is a technical argument which combines attacks on validity and non-infringement arguments. An alleged infringer may claim that their product or process is the same as, or obvious based on, prior art documents disclosed to the public before the relevant date (the priority date of the patent). In which case, if the patent owner claims that the product or process complained of falls within the scope of the patent, the patent will be invalid because its scope includes products or processes which were obvious in light of the prior art.
- Innocent Infringement: Although not a defence to liability, no damages or account of profits can be awarded in respect of infringing activities if the infringer can prove that at the date of the infringement, or each infringing act, it was not aware, and had no reasonable grounds for supposing, that the patent existed (s.62 PA). The burden of proof is on the party asserting the defence. It rarely succeeds because patents are available on a public register.
- Repair vs remanufacture: UK jurisprudence recognises a distinction between subsequent alterations to products which amount to remanufacture and those which amount to repair. The principle of exhaustion covers subsequent work to repair a patented product but not works that would amount to infringement by 'making'. However, the notions of making and repairing may overlap, and so must be interpreted contextually, the question being a matter of fact and degree.
Defences to registered trade mark infringement
- Use relating to genuine goods: It is a defence if the sign complained of is used to identify goods or services belonging to the registered trade mark owner, or in accordance with honest practices in commercial matters, and which does not take unfair advantage or prejudice the distinctive character or repute of the mark. For instance, use of a mark to demonstrate that a product is compatible with a product of the registered trade mark owner may be permissible.
- Exhaustion of rights: Once goods are put on the market in the European Economic Area under the trade mark, by the proprietor or with their consent, it is not an infringement to deal in the goods in question provided that the goods have not been altered or impaired.
- Honest Use: Use, in the course of trade, of a person's own name (natural and legal persons can rely on the own-name defence concerning UK trade marks; for EU trade marks, only natural persons can rely on the own-name defence) or indicators which are not distinctive or which concern the quality, quantity, geographical origin, time of production, or other characteristics of goods or services, or the purpose of the goods or services, are considered honest practices.
- Comparative advertising: Use of a UK trade mark in permissible forms of comparative advertising will not constitute infringement of the mark when used in accordance with honest practices in industrial or commercial matters. In respect of EU trade marks, comparative advertising may again be permitted, provided it is not used in a manner contrary to Directive 2006/114/EC (concerning misleading comparative advertising).
Defences to registered design infringement
- Non-infringing acts: Registered UK and European Community designs will not be infringed if the use relates to acts done privately, for non-commercial purposes, or experimental or teaching purposes, provided the use does not prejudice the right holder's right to commercially exploit the design and the right holder is acknowledged where possible.
- Repairing a complex product: UK and European Community registered design right protection does not extend to spare parts used for the repair of a complex product (products composed of at least two replaceable component parts), where the design must be reproduced to the exact specification of the original in order for the product to be functional.
- Innocent Infringement: In proceedings for the infringement of a UK registered design, damages will not be awarded against a Defendant who proves that, at the date of the infringement, he was not aware, and had no reasonable ground for supposing, that the design was registered. A person shall not be deemed to have been aware or to have had reasonable grounds for supposing the design was registered by reason only of the marking of a product with the word "registered" or similar, or with any words expressing or implying that the design applied to, or incorporated in, the product has been registered, unless the number of the design is also provided.
Defences to unregistered design right infringement
- Innocent Infringement: Where, in an action for primary infringement of UK unregistered design right, it is shown that at the time of the infringement the Defendant did not know, and had no reason to believe, that the design right subsisted in the design, the Claimant will not be entitled to damages, but other remedies remain available. In the case of secondary infringement, where the Defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act.
Defences to copyright infringement
- Making temporary copies: Use for non-commercial purposes by making temporary copies, where the temporary copy is short-lived and an essential part of the technological process, is not an infringement provided the copying is necessary for the relevant process and capable of being deleted automatically once the function has been achieved.
- Research and private study: This applies to copyright in literary, dramatic, musical and artistic works or typographical arrangements, providing a defence for use consisting of non-commercial research and private study in situations where the use is a "fair dealing" and, in the case of non-commercial research, the right holder is acknowledged (unless it is impractical to do so). Whether the dealing is fair depends on: (i) the amount of the work used; (ii) whether the work is for commercial purposes; (iii) where the work has been copied; and (iv) whether the right holder has been deprived of trade.
- Incidental inclusion: This applies to the incidental inclusion of an artistic work, sound recording or film.
- Orphan works: There is a defence to infringement where the author of copyright in literary, dramatic, musical or artistic work is unknown, cannot be determined by reasonable enquiry, and it is reasonable to assume the copyright has expired.
- Recording for time shifting: Recording copyright material for the sole purpose of allowing playback at a later date or time, provided there is no shifting of format, e.g. MP3 files to CDs. There are similar defences in respect of back-ups and decompilations of works under circumstances relating to software.
- Parody, Caricature or Pastiche: Making limited use of copyright material for the purpose of parody, caricature or pastiche is a defence to infringement, provided that the use constitutes fair dealing, is noticeably different from the original work and constitutes an expression of humour.
Patents: The defendant can challenge validity of the patent on grounds such as:
- the applicant obtained the invention from the person of whom the opponent is the legal representative;
- invention is not patentable, unclear and incomplete specification, unclear claims or beyond the scope of the disclosure;
- specification claiming invention other than that described in provisional specification and such other invention either forms the subject of an application made by the opponent for a patent which if granted would bear a date in the interval between the date of the application and the leaving of the complete specification, or has been made available to the public by publication in any document in that interval;
- damages are not to be awarded against a defendant who proves that at the date of infringement he was not aware and had no reasonable ground for supposing, that the patent existed and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the application to an article of the word ‘patent’, “patented”, or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanied the word or words in question.
Trade Marks: A claim of infringement can be rebutted by virtue of the fact that the trade mark is used in good faith e.g. it is the person’s name or the name of the person’s place of business, so long as such use does not result in a likelihood of confusion or otherwise interfere with an existing trade mark or other property right or the name of the predecessor in business of the person or the name of the predecessor’s place of business; the person uses a mark in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services or the time of production of goods or of the rendering of services; the person uses the trade mark in good faith to indicate the intended purpose of goods, in particular as accessories or spare parts, or services; or the person uses the trade mark for the purposes of comparative advertising.
If the right to the use of a trade mark is subject to any conditions or limitations entered on the Register, such right shall not be deemed to be infringed by the use of any such trade mark in any mode, in relation to goods to be sold or otherwise traded in or in relation to services provided by, in any place, or in relation to goods or services to be exported to any market, or in any other circumstances to which, having regard to any such limitations, the registration does not extend. Where registration of a trade mark is subject to a disclaimer, a person shall not infringe the trade mark by using a disclaimed part of the trade mark.
Copyright: The defence available to the infringer in copyright includes fair dealing, such as for educational purposes, judicial proceedings and legislative proceedings etc.
Designs: All grounds available to a person seeking cancellation of a design may be adopted as a defence in infringement proceedings such as the specific substantive requirements not fulfilled, contrary to public order or morality and/or person whose name the industrial design is registered has no right to it.
Administrative tutelage actions, precautionary measures and lawsuits.
Patent infringement defenses generally involve establishing that an accused device does not infringe the claims(s) of the patent or invalidity of an asserted patent. Non-infringement includes establishing that the accused device does not meet one or more elements found in the asserted claim(s). And a patent can be found invalid by establishing, for instance, that the invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the patent or that the applicant for the asserted patent committed inequitable conduct while obtaining the patent thereby rendering the patent unenforceable.
Trademark defenses include no likelihood of confusion and any of the available attacks on the validity of a trademark registration as well as equitable defenses such as laches and estoppel. Copyright infringement defenses include failing to establish ownership or copying as well as a number of other defenses, such as fair use, copyright invalidity, a license/assignment from the copyright owner, and joint ownership of the work along with equitable defenses. A statute of limitations defense is also available for copyright disputes.
(a) Monopoly rights of a patentee are confined to activities which are carried out for industrial or commercial purposes only.
(b) Patent owners cannot control acts which are carried out in order to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs.
(c) A patentee or any third party who has his consent, who has placed patented products into circulation for the first time in the marketplace cannot thereafter utilise his exclusive rights as a patentee to control subsequent dealings with the products.
(d) Where the infringing act has been committed with the conditional or unconditional consent of the patent owner or his licensee.
(e) The rights of a patentee do not extend to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.
(f) No infringement proceedings can be taken where the patent has lapsed and has not been reinstated.
(g) Where the act is done pursuant to a compulsory licence.
(h) Where the exploitation is committed by the Government or any person authorised by the Government.
(i) Where a person has used the patented product or process in good faith.
(j) A purchaser of a patented article has an implied licence to repair it as long as the repair does not amount to the making of a new article.
The common defence:
(a) The information is not confidential but is common knowledge
(b) The information claimed to be confidential is not identified
(c) There is just cause or excuse for the disclosure
It is not trade mark infringement where:
(a) a person trades in his own name, name of his or his predecessor’s business and to use the name as a trade mark;
(b) the use in good faith by a person of a description of the character or quality of his goods or services (the description not importing a reference to the trade mark of another trader);
(c) the owner of an unregistered trade mark continuously used his trade mark before the use of the registered trade mark by the plaintiff (or his predecessor in business) or before the registration of the trade mark, whichever is earlier;
(d) the registered proprietor of a trade mark or his registered user has placed his mark on the goods which are then marketed, the registered proprietor loses all rights to control subsequent dealings with the goods;
(e) the registered proprietor or registered user has given implied or express consent to the use of the trade mark;
(f) independent manufacturers of spare parts or accessories in relation to trade marked goods used the trade mark for the purpose of informing the public that the parts and accessories are suitable for the goods. However, the use must not cause any deception or confusion that a connection exists in the course of trade between the registered trade mark owner and the manufacturer;
(g) the registered trade mark are used by concurrent proprietors.
Institution of court proceedings for unlawful use of geographical indications can only be instituted by ‘an interested person’ as defined under the Act, such as individual consumers of goods bearing a false or misleading geographical indication.
It is not copyright infringement where:
(a) Acts restricted by copyright is done by way of fair dealing including for purposes of research, private study, criticism, review or the reporting of news or current events;
(b) Incidental inclusion of a copyright work in an artistic work, sound recording, film or broadcast, including its placement in public view;
(c) Private recording of broadcasts or any of its copyrighted work to be watched later;
(d) If the use of the copyright work is made by way of illustration for teaching purposes and is compatible with fair practice;
(e) Use made of a work by or under the direction or control of the Government, provided certain conditions are satisfied;
(f) Certain uses in relation to computer programs;
(g) The infringing act is done by way of parody, pastiche or caricature;
(h) Reading or recitation in public or in a broadcast by a person of any reasonable extract from a published literary work if accompanied by sufficient acknowledgement;
(i) The making and issuing of copies of any work into a format to cater for the special needs of people who are visually or hearing impaired and the issuing of such copies to the public by non-profit making bodies or institutions;
(j) Reproduction of work by broadcasting service intended exclusively for lawful broadcasting;
(k) Reproduction of articles on current topics or for informatory purposes;
(l) The making of a transient and incidental electronic copy of a work made available on a network where such copy is required for the viewing, listening or utilisation of the work.
The industrial design may be revoked where it was not new at the priority date of the application for registration, and may be cancelled where the registration has been procured by unlawful means.
The following defences are available against a claim for patent infringement:
- Invalidity of the patent or any claim thereof allegedly being infringed on the ground of lack of novelty; lack of enablement, being contrary to public order or morality;
- For purposes of claiming damages, the IP Code provides for a prescriptive period of four (4) years as no damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement.
- A criminal action for patent infringement prescribes after the lapse of three (3) years from the date of the commission of the crime.
The following defenses are available against a claim for trademark infringement:
- Prior user in good faith. Under the IP Code, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise.
- Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing;
- Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications.
- Lack of notice or knowledge. Under the IP Code, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. However, such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration.
In copyright infringement, the following defences are available:
- That the act falls under any of the following as provided in Section 184 of the IP Code:
a. The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society;
b. The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned;
c. The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated;
d. The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose;
e. The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned;
f. The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work;
g. The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast;
h. The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use;
i. The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations;
j. Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title;
k. Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner;
- That the act constitutes fair use under Section 185 of the IP Code, such as: (a) the use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes; (b) Decompilation, or the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs.
- That the published work was reproduced in a single copy only by a natural person, exclusively for research and private study. This however will not apply if the reproduction is of: (a) a work of architecture in the form of building or other construction; (b) an entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means; (c) a compilation of data and other materials; (d) a computer program except it is a single back-up copy or adaptation of a computer program and the copy or adaptation is necessary for the use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and for archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable; (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author.
- That the act falls under Section 188 of the IP Code on the permitted reprographic reproduction by libraries. Particularly, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction:
a. Where the work by reason of its fragile character or rarity cannot be lent to user in its original form;
b. Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and
c. Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher;
- Prescription. The owner of a copyright is barred from recovering damages for acts of infringement committed beyond four (4) years prior to initiating action for infringement.
- Patent invalidity
- Use for experimental or research purposes
- Abuse of right
- Prior user’s right, etc.
- Non-use as a trade mark
- Invalidity of trademark registration
- Parallel importation
- Abuse of right
- Prior user’s right, etc.
- Reproduction for private use
- Stage performance, etc. for non-commercial purposes
- Reporting of current events
- Exploitation of an artistic work on public display
- Abuse of right, etc.
- Invalidity of design registration
- Use for experimental or research purposes
- Abuse of right,
- Prior user’s right etc.
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
- 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
- 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.
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.
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.
Due to the fact that copyright is not a registered right in Sweden a common defense is to claim that the plaintiff’s work is not protected under the Copyright Act. Further, a useful objection is to focus on narrowing the scope of protection due to lack of originality of the work.
In this regard, useful evidence is to invoke similar prior art in order to show the lack of originality of the work. Since a lack of originality affects both the possibility for a work to obtain copyright as well as it scope of protection this is can be an effect full defense strategy.
(b) Trademarks and trade names
A common defense strategy is to attack the validity of the plaintiff’s trademark. Invalidity proceedings are also filed with the Patent and Market Court and are usually handled jointly with infringement cases. Depending on the handling of the infringement case, the court can decide that there should be a stay in the proceedings in the infringement case awaiting the outcome of the invalidity case.
(c) Marketing law
This is largely dependent on the claims brought by the plaintiff. In cases regarding misleading of commercial origin and/or misleading use of another trader’s known and distinct product design, common objections are that there is no likelihood of confusion within the relevant public (which may include arguments regarding the definition of the relevant public, where the plaintiff will often argue that the relevant public is more narrow and thus has a higher degree of knowledge and attention, whereas the defendant often argues that it should be defined as the general public). In the latter cases, another common defense is to argue that the plaintiff’s design is not distinctive or known.
In cases regarding misleading marketing statements, the defendant has the burden of proof that the marketing statements used are truthful. The defense strategy is thus to provide sufficient evidence in this regard.
In addition to a denial of infringement, the defendant can argue that the patent in question does not meet the requirements for a valid patent. In such case, the defendant has to file a claim for revocation of the patent with the court.
(e) Unlawful use or disclosure of trade secrets
defense strategy other than a denial of the use or disclosure of the trade secret is to claim that the information should not be considered as a trade secret. Useful evidence in this regard is to invoke documentation or correspondence that shows that the information was not held secret in a way that could categorise it as a trade secret.
A defense strategy in infringement cases, besides the objection that the scope of protection does not cover the infringing product, is to file a claim that the registration should be revoked. Useful evidence in this regard is similar prior art that can be used both to show the lack of novelty, which is a criteria for registration, or to argue that the scope of protection should in practice be limited to imitations due to the lack of freedom to variation within the field.
(g) Registered plants varieties
A defense strategy other than to claim that the plant does not infringe in the registered right under the grounds set out above is to commence revocation proceedings against the registration.
(h) Topographies for Semiconductor Products
Since the right to topographies for semiconductor products is an unregistered right, a defense strategy is to claim that the plaintiff’s product should not be protected under the Topographies for Semiconductor Products Act. Based on the criteria for protection, such objection should focus on the assertion that the plaintiff’s product is not based on an intellectual effort and that the topography consists of elements that are commonplace in the semiconductor industry. Useful evidence in this regard is therefore to invoke other topographies that support this argument along with an expert opinion.
Patents - For alleged patent infringement the following defences are available.
Exhaustion of rights.
Limitations of rights, the following is not consider an infringe:
- activities performed for personal needs and non-commercial purposes;
- experimental or investigative activities;
- examination of the subject of a patented invention, as well as research of medicinal products or plant - protection carried out in order to obtain permission to distribute them on the market;
- single preparation of medicinal products by a doctor's prescription in a pharmacy;
- use of the invention in the construction or exploitation of a foreign vehicle which is temporarily or accidentally located in Latvia.
A patent invalidity action. The invalidity action, if accepted, will be heard by the same court as the infringement procedure.
Trade marks - It is available to send a cease and desist letter, to file a court claim and to file applications with the Customs Authorities/ Economic Police Department.
Defense to IP infringement: invalidity, exhaustion (first sale doctrine), prior commercial use, using in service of personal needs or non-commercial purpose, or for purposes of evaluation, analysis, research, teaching, testing, trial production or information collection for carrying out procedures of application for licenses for production, importation or circulation of products, using only for the purpose of maintaining the operation of foreign means of transport in transit or temporarily staying in the territory of Vietnam, using patented invention subject to non-voluntary licensing, fair use (copyright and related rights).
Defences to infringement are for example:
- Invalidity of the intellectual property right - for example cancellation for non-use of a trademark,
- statutory exemptions, for example Section 23, 24 Trademark Act (descriptive use, exhaustion),
- experimental use,
- use for making an application for market authorisation,
- non-commercial use,
- compulsory licence (FRAND cases),
- forfeiture of rights,
- statutes of limitation,
- antitrust law defence.
Invalidity of the patent is not a defence as such. However, the court can stay infringement proceedings pending the outcome of the bifurcated invalidity proceedings in front of the patent office.
Each Act provides different defences or limitations to infringement of the respective IPRS.
Limitation of the rights conferred by the design right
(a) acts done privately and for non-commercial purposes,
(b) acts done for experimental purposes,
(c) acts of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source;
(d) the equipment on ships and aircraft registered in another country when these temporarily or accidentally enter the territory of Malta,
(e) the importation into Malta of spare parts and accessories for the purpose of repairing such craft, or
(f) the execution of repairs on such craft;
(g) the use of a product in which the design is incorporated or to which the design is applied when the product has been put on the market by the proprietor or with his consent.
Limitations to patents
(a) where the act is done privately and for non-commercial purposes, provided that such act does not
significantly prejudice the economic interests of the proprietor of the patent;
(b) where the act consists of making or using such product for purely experimental purposes or for scientific research;
(c) where the act consists of the extemporaneous preparation for individual cases, in a pharmacy or by a medical or veterinary doctor, of a medicine in accordance with a medical prescription or of acts concerning the medicine so prepared;
(d) when an act is done for purposes which can reasonably be related to the development and presentation of information required by the law of Malta or any other country that regulates the production, use or sale of medicinal or phytopharmaceutical products;
(e) when the use of the patented invention is on board vessels of the countries of the Paris Union in the body of the vessel, in the machinery tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of Malta, provided that the invention is used exclusively for the needs of the vessel;
(f) when the use of that patented invention is in the construction or operation of aircraft or land vehicles of countries of the Paris Union or of accessories to such aircraft or land vehicles when such aircraft or vehicles temporarily or accidentally enter the territory of Malta.
Limitations to Copyright
Malta is one of the EU members that had transposed all limitations proposed in the InfoSoc Directive. These include:
(a) temporary acts of reproduction, which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable:
(i) a transmission in a network between third parties by an intermediary, or
(ii) another lawful use of a work or other subject-matter to be made, and which have no independent economic significance;
(b) reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects, with the exception of sheet music, provided that the rightholders received fair compensation;
(c) reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commerical, on condition that the rightholders receive fair compensation which takes account of the application or non-application or technological measures to the work or subject-matter concerned;
(d) specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage;
(e) the performing, playing or showing of a work in a place where no admission fee is charged in respect of such an act by any club whose aim is not profit-making.
The Copyright Act has also transposed the limitations related to computer programs, thus copyright is not infringed in the event of:
(a) the observation, the study or testing of the functioning of the program by the licensed user in order to determine the ideas and principles which underlie any element of the program if this is done whilst performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do;
(b) the reproduction by the licensed user of the code and translation of its form where this is indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs, provided that these acts are confined to the parts of the original program which are necessary to achieve interoperability and the information necessary to achieve interoperability has not previously been readily available to the licensed user. Provided that any information obtained from the reproduction of the code and the translation of the form of a computer program made under this paragraph shall not:
(i) be used for purposes other than to achieve the interoperability of the independently created computer program;
(ii) be given to other persons, except when necessary for the interoperability of the independently created computer program;
(iii) be used for the development, production or marketing of a computer program substantially similar in its expression to the original program or for any other act which infringes copyright;
(c) the making of a copy or a back-up copy, the translation, adaptation, arrangement and any other alteration of a computer program and the reproduction of the results thereof, in so far as this is necessary for the licensed user to make proper use of the program in accordance with its intended purpose, including the correction of errors; and the right of the licensed user to make a back-up copy of a computer program may not be restricted or excluded by contract in so far as it is necessary for the use of that computer program.
Limits on the effect of a registered trade mark
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts: Provided the use is in accordance with honest practices in industrial or commercial matters;
(d) use in the course of trade in Malta of an earlier right.
Infringement is not qualified in the following situations:
I. to acts carried out by unauthorized third parties, privately and without commercial purposes, provided these acts do not prejudice the economic interests of the patentholder;
II. to acts carried out by unauthorized third parties for experimental purposes, in connection with scientific or technological studies or researches;
III. to the preparation of a medicine in accordance with a medical prescription for individual cases, carried out by a qualified professional, as well as to the medicine so prepared;
IV. to a product manufactured in accordance with a process or product patent that has been introduced onto the domestic market directly by the patentholder or with his consent;
V. to third parties who, in the case of patents related to living material, use the patented product, without economic intent, as an initial source of variation or propagation to obtain other products; and
VI. to third parties who, in case of patents related to living material, use, place in circulation, or market a patented product that has been legally introduced into commerce by the patentholder or the holder of a license, provided that the patented product is not used for commercial multiplication or propagation of the living material in question
Industrial Designs: items I, II and IV of the defence to patent infringement apply to Industrial Designs
The titleholder of a mark may not:
I. prevent merchants or distributors from using their own distinctive signs along with the mark of the product, in its promotion and commercialization;
II. prevent manufacturers of accessories from using the mark to indicate the purpose of the product, provided that fair competition practices are followed;
III. prevent the free circulation of the product placed on the domestic market by himself or by another with his consent, except as provided in Paragraphs 3 and 4 of Article 68; and
IV. prevent the mention of the mark in a speech, scientific or literary work, or in any other publication, provided it is done without commercial connotation and without detriment to its distinctive character.
Article 46 of the Brazilian Copyright Law contemplates a few situations in which the use of copyright material is tolerated and not considered a violation, such as the reproduction in one copy of short extracts from a work for the private use of the copier, provided that it is done by him and without gainful intent; the quotation in books provided that the author is credited for the quoted passage; or the reproduction in any work of short extracts from existing works, regardless of their nature, or of the whole work in the case of a work of three-dimensional art, on condition that the reproduction is not in itself the main subject matter of the new work and does not jeopardize the normal exploitation of the work reproduced or unjustifiably prejudice the author’s legitimate interests.
In broad terms, the breeder’s right in the plant variety shall not be deemed infringed by a person who:
(i) stores and plants seeds for his own use on his premises or on the premises of third parties of which he has possession;
(ii) uses or sells as food or raw material the product of his planting, except for the purposes of reproduction;
(iii) uses the plant variety as a source of variation in genetic improvement or in scientific research;
(iv) being a small rural producer, multiplies seed, for donation or exchange in dealings exclusively with other small rural producers, under programs of financing or support for small rural producers conducted by public bodies or non-governmental agencies, authorized by the Government.
Integrated Circuit Topographies:
The effects of the protection shall not apply:
I – to acts carried out by unauthorized third parties for the purposes of analysis, evaluation, teaching and research;
II – to acts which consist of the creation or exploitation of a topography which is the result of analysis, evaluation and research on the protected topography, on the condition that the resulting topography is not substantially identical to the protected topography;
III – to acts consisting of the importation, sale or distribution by other means for commercial or private purposes, of integrated circuits or products containing them, put into circulation by the holder of the corresponding integrated circuit topography registration or with his consent; and
IV – to importation of Integrated Circuit Topography, carried out or ordered by a person or persons unaware, at the time of obtaining the integrated circuit or the product, or with no reasonable grounds to suspect, that the product or integrated circuit incorporated an illegally reproduced, protected topography.
The primary defence to a claim for patent infringement is that the alleged infringing product or process falls outside the scope of the patent claims.
In ordinary proceedings, the alleged infringer cannot claim invalidity as a defence, unless the defendant files a separate claim for invalidity with a reference to i.a. insufficiency, lack of novelty and inventive step. In preliminary injunction proceedings, however, the alleged infringer can claim invalidity as a defence, and the court may decide not to grant an injunction on the basis that the patent is most likely invalid.
Other grounds of defence may be that the defendant is entitled to a compulsory licence, or that the defendant is entitled to a prior use right on the basis that it was using the invention also before the date of priority.
The primary defences are lack of danger of confusion, i.e., lack of trade-mark similarity and goods and services similarity.
The alleged infringer may also make a counterclaim, claiming that the trade mark is not valid due to i.a. that the mark is identical or confusingly similar to an earlier trademark, lacks distinctiveness, is degenerated, or that it has been subject to non-use or has been applied for in bad faith. Additionally, parody, satire, etc., are possible, if such factors are present.
In preliminary injunction proceedings, these claims can be made without filing a counterclaim.
The defendant may claim non-infringement or that the work is not protected under the Copyright Act. Lack of creative effort is often a theme.
In design infringement cases, a main defense is to argue that the scope of protection does not cover the infringing product.
The alleged infringer may also make a counterclaim, claiming that the registration should be revoked due to lack of lack of novelty, which is a criteria for registration, or that the scope of protection should in practice be limited to imitations due to the lack of freedom to variation within the field.
In preliminary injunction proceedings, these claims can be made without filing a counterclaim.
Plant variety rights
Besides claiming non-infringement, the alleged infringer may commence revocation proceedings against the registration.
Topographies for semiconductor products
The alleged infringer may claim use in good faith, non-infringement or that the semiconductor topography is not protected under the Protection of Semiconductor topographies Act.
Trade secrets and know-how
The alleged infringer may claim that the information cannot be acknowledge as a trade secret or that the information was not held secret in a way that was appropriate for a trade secret, e.g. by submitting evidence to that effect.
The alleged infringer may also claim that the trade secret has not been used unlawfully, e.g., if the alleged infringer has developed the product etc. in and independent manner.