What defences to infringement are available?

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

Patents:

(a) Monopoly rights of a patentee are confined to activities which are carried out for industrial or commercial purposes only and in particular not to acts done only for scientific research;

(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, at the priority date of the patent application, 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.

Utility Innovation:

(a) Monopoly rights of a certificate owner are confined to activities which are carried out for industrial or commercial purposes only and in particular not to acts done only for scientific research;

(b) Certificate owners cannot control acts which are carried out in order to make, use, offer to sell or sell a utility innovation for which a certificate has been granted 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 certificate owner or any third party who has his consent, who has placed the certificated products into circulation for the first time in the marketplace cannot thereafter utilise his exclusive rights as a certificate owner to control subsequent dealings with the products.

(d) Where the infringing act has been committed with the conditional or unconditional consent of the owner.

(e) The rights of an owner do not extend to the use of the utility innovation on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.

(f) No infringement proceedings can be taken where the certificate for a utility innovation has lapsed and has not been reinstated.

(g) Where the exploitation is committed by the Government or any person authorised by the Government.

(h) Where a person, at the priority date of the application for a certificate for a utility, has used the protected product or process in good faith.

(i) A purchaser of an article for which a certificate has been granted has an implied licence to repair it as long as the repair does not amount to the making of a new article.

Confidential information:

The common defence:

(a) The information is not confidential but is common knowledge

(b) The information claimed to be confidential is not clearly identified

(c) There is just cause or excuse for the disclosure

Trade Marks:

It is not trade mark infringement where:

(a) the use in good faith by a person of his own name or the name of his place of business or the name of the place of business of any of his predecessors in business;

(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) Registered proprietor or registered user has applied the trade mark on the goods in the course of trade and has not subsequently removed or obliterated it;

(e) the registered proprietor or registered user has given implied or express consent to the use of the trade mark;

(f) the use of the trade mark by a person in relation to goods or services adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are adapted as such;

(g) the registered trade mark are used by concurrent proprietors.

Geographical Indication:

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.

Copyright:

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 and their reproduction and distribution of copies situated in a place where it can be viewed by the public;

(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) any use of a work for the purpose of an examination by way of setting the questions, communicating the questions to the candidates or answering the questions or a reproduction of a work included in a broadcast intended for educational institutions;

(f) Use made of a work by or under the direction or control of the Government, provided certain conditions are satisfied;

(g) Any use of a work for the purposes of any judicial proceedings, a legislative body or for the purpose of the giving professional advice by a legal practitioner;

(h) Certain uses in relation to computer programs;

(i) The infringing act is done by way of parody, pastiche or caricature;

(j) 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;

(k) 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;

(l) the performance, showing or playing of a work by a non-profit making club or institution for charitable or educational purpose with no admission fee;

(m) Reproduction of work by broadcasting service intended exclusively for lawful broadcasting;

(n) the making of quotations from a published work if they are compatible with fair practice, reproduction of articles on current topics or for informatory purposes;

(o) 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.

Industrial Design

The industrial design may be revoked where it was not new at the priority date of the application for registration and where it is contrary to public order or morality. It may be cancelled where the registration has been procured by unlawful means.

Norway Small Flag Norway

A defendant may put forward several defences in response to alleged infringement, including that the intellectual property right is invalid. An invalidity claim must be submitted in a counter-claim to the case, not simply as a defence.

For works/intellectual creations and trade secrets, the defendant may argue that the work or secrets do not fulfil the relevant conditions to qualify as protected copyright or trade secrets.

A defendant may also argue that it has prior-use rights, or that the intellectual property rights have been exhausted in the relevant case.

Singapore Small Flag Singapore

Generally, the first countermeasure that a defendant will call upon would be to challenge the validity of the intellectual property right in question.

Singapore also has carved out a very expansive parallel importation exception to infringement. Once a genuine product that is the subject of a patent, trade mark, or industrial design has been put on the market by the rights holder anywhere in the world, the rights holder loses his ability to oppose subsequent acts of use or resale in Singapore.

Other notable defences are detailed below.

  1. Patents. Private, non-commercial acts, or acts performed for an experimental purpose will not be considered to be infringement.
  2. A defendant may also avail itself of the “Gillette” defence by arguing that its product or process was already disclosed and part of the prior art. Thus, when the patentee claims that a defendant’s product or process falls within the scope of the patent, the patent will run into issues with validity. On the other hand, if the patent is valid, then the Defendant will not infringe the same.

    The “Bolar” defence – which permits the clinical testing of generic drugs to be conducted during the term of the patented drug – is also available in Singapore.

    Further, a patentee’s remedies may be limited in the case of innocent infringement. If the infringer can prove that he was not aware, and had no reasonable grounds for supposing, that the patent existed, the court will not award damages or an account of profits to the patentee.

  3. Trade Marks. The use of trade mark in a descriptive manner – for instance, to indicate the kind, quality, or geographical origin of goods – will not be infringement. An example of this indicating that a toner cartridge is compatible with particular brand of printer.
  4. The use of a trade mark in comparative advertising or promotion will also not be infringement if the use is considered to be fair.

  5. Copyright. The foremost defence of fair dealing involves taking into account a host of factors including whether the dealing is non-commercial, how much of the work was copied, and the effect of the dealing on the potential market for the work.
  6. The use of a copyrighted work for criticism or review, for reporting current events, or as part of judicial proceedings will not be considered to be infringement.

  7. Industrial Designs. The use of a registered design for a private non-commercial purpose will not be infringement. Neither will the use the design for the purpose of analysis, research, or teaching.

Like the case with patents, there is also some leeway given for innocent infringement. Although not a defence, if the infringer can prove that he was not aware, and had no reasonable grounds for supposing, that the design in question was registered, the court will not award damages or an account of profits to the design holder.

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.

China Small Flag China

For patent, defences include: Invalidation defence; Disclosure-dedication rule; doctrine of history estoppel; prior art defence; exhaustion of patent right; exceptions of infringement.

For trademark, defences include: no trademark infringement; legitimate use; legitimate product source; prior rights or use laches and/or loss of statutory limitations; unclean hands; lack of standing to sue or to be sued; no trademark in commercial use inside China.

For copyright, defences include: independent creation; licensed use; fair use; laches and/or loss of statutory limitations; public domain; abuse of rights; lack of standing to sue or to be sued.

South Africa Small Flag South Africa

In the case of Patents or Registered Designs , that the patent is lapsed, expired or invalid or that there is no act of infringement.

In the case of trade marks there are the defences that is lapsed, expired or invalid or that there is no act of infringement. In addition,
a registered trade mark is not infringed by -

(a) any bona fide use by a person of his own name, the name of his place of business, the name of any of his predecessors in business, or the name of any such predecessor’s place of business;

(b) the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or the rendering of the services;

(c) the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services;

(d) the importation into or the distribution, sale or offering for sale in the Republic of goods to which the trade mark has been applied by or with the consent of the proprietor thereof;

(e) the bona fide use by any person of any utilitarian features embodied in a container, shape, configuration, colour or pattern which is registered as a trade mark;

(f) the use of a trade mark in any manner in respect of or in relation to goods to be sold or otherwise traded in, or services to be performed, in any place, or in relation to goods to be exported to any market, or in any other manner in relation to which, having regard to any conditions or limitations entered in the register, the registration does not extend;

(g) the use of any identical or confusingly or deceptively similar trade mark which is registered:

Provided that paragraph (a) shall not apply to the name of any juristic person whose name was registered after the date of registration of the trade mark: Provided further that the use contemplated in paragraph (a), (b) or (c) is consistent with fair practice.

In the case of copyright, there are the defences that the person claiming to own the copyright is not in fact the owner thereof, that the work was not original and thus copyright does not subsist, that it has expired or that there is no act of infringement.

Likewise, in the case of Plant Breeders Rights, the PBR has lapsed, expired, is invalid, or that none of the rights reserved for the rights holder have been performed.

Cyprus Small Flag Cyprus

The following constitute a defence to an allegation of patent infringement by a rightholder:
- when the act concerns a product which was placed in the market by the owner of a patent or with his/ her express consent, provided that such an act had been committed after the product had been placed in the Cyprus market;
- when the act is carried out privately and not on a commercial scale, provided that it does not affect substantially the economic interests of the owner of the patent;
- when the act is comprised of the manufacture or the use for purely experimental reasons or for scientific research;
- when the act is comprised of a loose preparation in individual cases, in a pharmacy or by a doctor, of medicines in accordance with a prescription or when the acts concern a medicine which is thus prepare.
The following constitute some of the exemptions to copyright infringement:
- The carrying out of any acts which would customarily constitute copyright infringement, in case these are done in good faith for research purposes, for private use, critical review or reference to current affairs, provided that in case such use is done publicly, this must be accompanied by an acknowledgement of the title and fatherhood of the work, with the exception where the work has incidentally been included in a broadcast;
- The inclusion in a movie or broadcast of any artistic work which is installed in a place where this may be viewed by the public;
- The reproduction and distribution of copies of any artistic work which is permanently installed in a place where this may be viewed by the public;
- The incidental inclusion of a literary work in a movie or a broadcast;
- The inclusion of a work in a broadcast, transmission to the public, recording, film or collection of works, provided that such inclusion is done by way of an explanation for teaching purposes and does not go against customary practice and provided that a special mention of the source and the name of the creator are made, which appear on the work which uses the work thus;
- The setting out of excerpts from works which have been published, provided that this does not go against customary practice and provided that the extent of these does not exceed the length which would be justified for this purpose, including the setting out of excerpts from newspaper articles and magazines by way of a summary, provided that the source and the name of the author appear in the work using these excerpts;
- The reproduction in the press, or by presentation to the public of published articles for economic, political or religious matters in current affairs or TV broadcasted works, whenever use thereof is not expressly prohibited and provided that the source and the name of the author are mentioned and provided that the extent of use is justified for journalistic purposes;
- Any reproduction of a work which is carried out by libraries, scientific institutions, educational institutions, museums or archives which are open to the public and where the act of reproduction does not have as an aim- directly or indirectly- any commercial or economic benefit;
- Any use of a work, provided this is for parliamentary or administrative purposes or for reference in any such proceedings;
- Any reproduction in any means carried out by a natural person for private use and for not directly or indirectly commercial purposes, provided the beneficiaries receive just compensation, taking into consideration the application or not of technological means unto the specific work;
- Any use of a work which is for the benefit of invalid persons, where the use is connected with the invalidity and does not have a commercial character, to the extent required by the invalidity in question.
As regards trade marks, once a product bearing the trade mark has been put on the market in the EU, the trade mark right is deemed to have been exhausted and the trade mark owner cannot object to the subsequent commercial exploitation of the goods bearing the said mark.
Further, in cases where in respect of goods which in commerce are associated with a trade mark owner who in relation to those goods (all or some of them), has used the trade mark and subsequently removed or deleted it or silently consented to the use of the said mark, use of the said mark by a third party without a license or consent by the trade mark owner, would not be considered infringement.
In addition, in cases where certain goods have been adjusted in order to form part or be a complement to other goods in relation to which a mark has been used without infringing the said, provided the said use is logically necessary in order to denote that the goods have been adjusted in this manner and neither the aim nor the actual result of such use suggest otherwise, apart from denoting some connection in trade between any person and the goods, would not constitute trade mark infringement.
Honest concurrent use of a trade mark may also constitute a defence, provided the court or the Registrar adjudicating the matter where this ground is raised, acknowledges it as such.
The following constitute defences to a claim for design infringement:
- For acts carried out for experimental purposes;
- For acts of reproduction of the design or the model for demonstration or teaching purposes, provided that these acts do not contravene transaction customs, do not harm the customary exploitation of the design or the model and provided that the source from where they are derived is mentioned;
- For use in the equipment of ships and aircrafts registered in another country, when they enter Cyprus temporarily, in the importation in Cyprus of spare parts with the aim of repairing the said ships and aircrafts and in the carrying out of repairs on them.

Japan Small Flag Japan

For patents, utility models, designs, and trademarks, the invalidity defense and prior use defense are available. For trademarks, the parallel import defense is also available.

For copyrights, the private use defense is available and many other defenses are available in accordance with specific situations. Also, by the amendment of the Copyright Act in 2018, which came into effect in January 2019, a flexible defense to deal with the progress of digitalization and networking has been introduced. For example, use of copyrighted work without the intent to enjoy the thoughts or sentiments expressed in the work is broadly exempted from copyright infringement. By this exemption (defense), provision of copyrighted works to an AI for the purpose of the development and growth of the AI is exempted.

Switzerland Small Flag Switzerland

Available defences include without being limited to non-infringement (e.g. no likelihood of confusion in trademark matters or differing technology used than in a disputed patent claim), prior use (to the registration), non-use, invalidity of the IP right, exhaustion of the IP right, forfeiture of rights, compulsory licences (incl. e.g. FRAND-licenses), special privileges, private use.

Brazil Small Flag Brazil

Patents:

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 defense to patent infringement apply to Industrial Designs

Trademarks:

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.

Copyrights:

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.

Cultivars:

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.

United Kingdom Small Flag United Kingdom

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.

Israel Small Flag Israel

Patents: Main defenses are non-infringement (the infringement does not fall within the scope of the patent claims, Bolar exception, experimental use exception) and invalidity. Prior user rights may also serve as a defense. Many other generally applicable defenses may apply, such as waiver, limitation and the like.
Trademarks: No likelihood of confusion, descriptive fair use, laches and bad faith registration. Rights acquired through use may also serve as a defense.
Designs: 1) Registered: the grounds for canceling the registration of registered design will serve as a good defense in the action for violating the registered design; 2) Unregistered: a claim that an unregistered design was not eligible for protection under the provisions of the Designs Law will serve as a good defense.
Copyrights: Main defenses are: no copyrights subsist in the work; no infringement since the use is not substantial or quantitative; defenses of fair use, lack of originality or lack of ownership. Many other generally applicable defenses may apply, such as waiver and limitation.

France Small Flag France

In case of infringement action, available defences include:

Procedural defences:

o 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.

o 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.

  • 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 supplementary protection certificates, 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 utility certificates, 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 plant varieties, specific defences notably include:

  • acts performed privately for non-professional or non-commercial purposes;
  • acts performed on an experimental basis;
  • acts done for the purpose of breeding a new variety or acts referred to this new variety;
  • acts concerning his variety or a variety essentially derived from his variety, or a variety which is not clearly distinguishable from it, when material of that variety or material derived from it has been sold or marketed in any form whatsoever by the owner or with his consent.

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 collective and certification marks, the same defences as for trademarks apply.

As regards designs, specific defences notably include:

  • acts done in a private capacity and for non-commercial purposes;
  • acts performed for experimental purposes;
  • acts of reproduction for illustrative or educational purposes, if such acts mention the registration and name of the right holder, are in accordance with fair commercial practices and do not prejudice the normal exploitation of the design.

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;
  • parody;
  • accessory reproduction of a building or a sculpture.

As regards semiconductors, specific defences notably include:

  • reproduction for evaluation, analysis or teaching purposes;
  • the creation, on the basis of such analysis or evaluation, of a different semiconductors eligible for protection under the IPC;
  • the acquisition in good faith of the protected semiconductor. However, the acquirer is liable for a fair compensation if he intends to continue the commercial exploitation of the product acquired.

Germany Small Flag Germany

Defences to infringement are for example:

  • Invalidity of the intellectual property right - for example cancellation for non-use of a trademark,
  • non-infringement,
  • 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.

Italy Small Flag Italy

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 nullity and/or the weakness of the trademark;
  • the lack of genuine use of the trademark; and
  • the fact that the trademark has been made in bad faith. Under Italian law, registration of a trademark in bad faith is prohibited. According to Italian scholars and case law, there is a lack of clear criteria for what constitutes bad faith. However, opinions suggest that trademarks may be considered to be made in bad faith if they are not used but obstruct the registration of a third-party trademark.

Greece Small Flag Greece

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.


Registered designs

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.

Semiconductor topographies

The above defenses also apply to semiconductor topographies infringement cases.

Trade marks

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.

Unfair competition

In addition to asserting lack of violation of established business morals, the defendant may claim the following:

  • Time-bar/Prescription.
  • Consent of the plaintiff.
  • Usual/acceptable of the defendant's behaviour.
  • Self-defense.
  • Abuse of rights.
  • Acquiescence.

Trade secrets

The defendant, may, inter alia, invoke the following defenses:

  • The trade secret has been an independent creation.
  • The information was already in the public domain.
  • The other party did not take proper efforts to keep the information secret.

Copyright

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.

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.

Peru Small Flag Peru

We can request the following measures in case we file the infringement action:

  • Stop the violation of your intellectual property rights.
  • Remove all products and packaging related to the infringement from the market.
  • Avoid the import or export of products or related materials.
  • Compensation for the owner of the brand through the settlement of costs, at the end of the procedure.
  • Order the cessation of the use of the domain name
  • Fine, the amount of said fine will be directed to the Peruvian Trademark Office.
  • Compensation for damages and losses, later in judicial proceedings.

Malta Small Flag Malta

Each IPR caters for different defences or limitations to infringement of the respective IPR.

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 trademark

(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 trademark 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.

Exceptions to the protection granted to Trade Secrets

(a) Freedom of expression and information

(b) revealing misconduct in the public interest

(c) disclosure by workers to their representatives in the course of a legitimate exercise

(d) whistleblowing reports

(e) protecting a legitimate interest recognised by law

Ecuador Small Flag Ecuador

Administrative tutelage actions, precautionary measures and lawsuits.

Saudi Arabia Small Flag Saudi Arabia

Unlike some other jurisdictions, the GCC Trademark Law does not specifically provide what would constitute non-infringement of a trademark; however, within the context of law, possible defences may include the following:

  1. The defendant’s trademark is sufficiently distinguishable from the plaintiff’s mark. In practice, the defendant must prove that the difference between the two marks is significant, and that the dominant part of the plaintiff’s mark is not imitated.
  2. The plaintiff’s trademark is subject to disclaimer, and such use does not constitute infringement.
  3. The defendant is using the mark for goods or services which do not conflict with goods or services covered under a registered trademark.
  4. The defendant’s use of the trademark is a descriptive use.

In the context of Patents, the available defence could be that the defendant started commercial exploitation of invention prior to filing date of patent application or priority application. Another defence could be that the product of defendant does not read over the protected features (claims) of patent.

Australia Small Flag Australia

A common defence is that the act complained of does not constitute infringement. Particular defences include:

  1. Patents – use of a patented invention in relation to foreign vessels, aircraft and vehicles registered in the Convention countries, that only enter the patent area temporarily or accidentally; prior use (the infringer exploited the product before the patent’s priority date); exploitation of an invention by the Crown; innocent infringement; experimental use.
  2. Trade marks – the plaintiff has no title in the mark or the mark is not yet on the Register; the plaintiff’s mark has been invalidly registered; the Trade Marks Act 1995 provides no infringement has taken place (e.g. good faith use of a person’s name; use of a sign to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; use of the trade mark for comparative advertising).
  3. Geographical indications –
  4. a. Certification trade mark – trade mark defences.

    b. Protected wine GI – the Wine Australia Act 2013 provides the description and presentation is not false or misleading.

  5. Passing off – justification (such as honest concurrent use or the use of one’s own name); use of a registered trade mark.
  6. Rights to prevent unfair competition (misleading and deceptive conduct) – publisher’s defence (where the alleged contravention has been committed by the publication of an advertisement and the publisher did not know and had no reason to suspect that its publication would amount to a contravention); information provider defence (where the alleged contravention has been committed by the publication of information such as news); it is a defence to prosecutions (but not in civil proceedings or where the Australian Competition and Consumer Commission seeks an injunction) that the contravention was due to reasonable mistake of fact including a mistake of fact caused by reliance on information supplied by another party, or that the contravention was due to the act or default of another person, an accident or some other cause beyond the defendant’s control and that the defendant took reasonable steps and exercised due diligence to avoid the contravention.
  7. Copyright – relevant act done with the licence of the copyright owner; specific defences relating to fair dealing, public performance, broadcasting and the Internet, computer programs, parallel importation exceptions, educational uses, recordings of musical works, artistic works, and industrial designs.
  8. Design – spare parts/rights to repair defence.
  9. Plant breeder’s rights (PBRs) – the complained act in relation to a plant variety covered by PBR is done privately and for non-commercial purposes, or for experimental purposes, or for the purpose of breeding other plant varieties; farm-saved-seed defence; the Commonwealth, State or Territory legislation authorises persons other than the grantee to exercise rights within the scope of the PBR monopoly on payment of equitable remuneration; persons licensed by the Secretary of the Department; exhaustion of PBR.
  10. Circuit layout – statutory defences of innocent commercial exploitation; private use; teaching or research purposes; evaluation or analysis; permitted use under licence; defence or security purposes. Common law defence of idea/expression.
  11. Breach of confidence – contractual term is invalid at law; disclosure pursuant to authority of law; privileged discovery; defences generally available in equity; disclosure pursuant to an order for discovery; a disclosure made in the public interest.

United States Small Flag United States

Patents:  The most common defenses to patent infringement include showing that a defendant does not literally infringe the elements of the claim (in other words, that not every element of the claimed invention is present in the challenged product), or that the patent itself is invalid and thus cannot be enforced.

Trademarks:  A common defense to allegations of trademark infringement is showing that the accused infringing mark is different enough from the registered mark to not result in consumer confusion. Also common is showing that the trademark itself is not a protectable mark because it has become generic or lacks other characteristics of registrability. Depending on the context, an accused infringer may also be able to show that their use of a mark is protected speech under the First Amendment of the U.S. Constitution.

Copyrights: Common defenses to copyright infringement include showing that the matter alleged to have been copied was not actually copyrightable (for example that it lacked originality), or that accused infringing use was actually “fair use.” A fair use defense depends on the purpose and character of the use, including whether the use is commercial or educational purposes, the nature of the copyrighted work, the amount of the copied work in relation to the whole, and the effect on the market for or value of the copyrighted work. In certain contexts, an accused infringer may be able to show that their use is protected speech under the First Amendment of the U.S. Constitution.

Trade Secrets:  Defenses to charges of trade secret misappropriation include showing that the material that is subject to the trade secret was publicly known or otherwise disseminated by the plaintiff (for example by showing that a product available on the market can be reverse-engineered). Additionally or alternatively, a defendant may be able to show independent development of the product.

Updated: September 12, 2019