What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
Intellectual Property (2nd edition)
Unless otherwise provided by the IPC, the burden of proof to establish infringement rests with the claimant pursuant to Article 9 of the CC.
Under French law, the general principle is that infringement should be assessed in relation to overall similarities and not to differences.
Therefore, the claimant should establish, regarding:
- copyright, that the counterfeiting work reproduces the original features of the prior work;
- design, that the counterfeiting design or model produces the same visual impression that the prior design or model;
- trademark, that the litigious sign is identical or similar to the prior trademark, designates identical or similar products or services and creates a likelihood of confusion for the consumer;
- patent, that the litigious product reproduces or has been manufactured following a process that reproduces the patent’s claims.
Pursuant to French procedure rules, infringement can be established by any means.
However, the following means are usually preferred to establish the existence and the extent of the alleged infringement:
- seizure: IPRs holders may request ex parte the authorization from the president of the Court of first instance to have a bailiff, possibly accompanied by the relevant expert(s) and/or police officer(s), enter the alleged infringer or a third party’s premises, to gather evidence of the infringement and, notably, seize or describe the infringing products or process, collect and copy any relevant documents demonstrating the infringement and the extent of the prejudice suffered (see. Copyright (Article L.332-1 and 4 of the IPC); Design (Article L.521-4 of the IPC); Patent (Article L.615-5 of the IPC); Plant varieties (Article L.623-27-1 of the IPC); Trademarks (Article L.716-7 of the IPC);
- customs withholding: IPRs holders may request from customs to hold allegedly counterfeiting goods (see. Copyright (Article L.335-10 of the IPC), Design (Article L.521-14 of the IPC); Patents (Article L.614-32 of the IPC); Plant varieties (Article L623-36 of the IPC); Trademarks (Article L.716-8 of the IPC); Geographical indications (Article L.722-9 of the IPC);
- expert reports either appointed by the judge or amicably requested from a party;
- investigation reports survey or witness statements;
- bailiff reports.
To establish a patent infringement, the claimant has to evidence a construction of the patent claim and then compare the established claim with the product allegedly infringing the patent.
Infringement of trademark can be established by showing that the disputed sign is (i) identical to the earlier trademark and intended for the same goods or services, or (ii) identical to the earlier trademark and intended for similar goods or services such that a likelihood of confusion results, or (iii) similar to the earlier trademark and intended for the same or similar goods or services such that a likelihood of confusion results.
To establish design infringement, the design right owner must show that the disputed design has the same essential features and thus produces the same overall impression as the registered design.
Copyright infringement requires the owner to show that the infringer has used its work without authorisation. This implies to assess which elements are common to both works, and whether such elements fulfil (alone or in combination) the requirements for copyright protection.
Owners of PGI/POA must show that the PGI/POA is used without meeting the requirements set out in the product specification.
Establishing topography infringement requires the right owners to show that there is an unauthorised reproduction of the topography.
Plant variety right owners must show that unauthorised production or reproduction of the propagating material of the protected variety or conditioning for the purpose of propagation is taking place, or that unauthorised materials of the protected variety are sold and marketed.
In general, it is the obligation of the claimant to provide evidence supporting the claim. Any evidence may be used for this purpose, and there are no specific requirements on what the claimant must provide to establish infringement. It is up to the court to decide whether such evidence is sufficient to establish infringement in a particular case.
In practice, to establish infringement the claimant must provide evidence that the defendant's acts have met the statutory definitions of acts reserved exclusively for the right holder (or other authorised entity), i.e.:
a) the patent holder may forbid a third party from: (i) making, using, offering, marketing, or importing the product that is the subject of the invention for said purposes, or (ii) applying the process that is the subject of the invention and using, offering, marketing, or importing products obtained by means of the process for said purposes;
b) the same criteria apply to utility models infringements;
c) for trade marks, the infringement subsists in using the following in trade: (i) a mark identical to a registered trade mark in respect of identical goods, (ii) a mark identical or similar to a trade mark registered in respect of identical or similar goods where the public may be, in particular, misled into associating the mark with the registered trade mark, or (iii) a mark identical or similar to a reputable trade mark registered for any goods where such use may result in an illegitimate benefit for the user or may be detrimental to the distinctive character or repute of the earlier mark;
d) registered design right holders are allowed to forbid any third party to make, offer, market, import, and export, or use the product in which the design is contained or applied, or to store said product for the purposes mentioned above;
e) violating a trade secret, i.e., disclosure, use or obtaining such information of another entrepreneur is an act of unfair competition (a civil wrong);
f) the copyright holder enjoys an exclusive right to use a work and dispose of it in all fields of use, unless otherwise provided in the statute. Therefore, he or she may forbid a third party from any act that makes use of the copyright work, unless such use is lawful (e.g., due to fair use). In addition to economic copyright, the author has moral rights to the work, and may forbid third parties from any use that threatens or infringes on these rights, such as distributing the work without naming the author.
Generally speaking an IP rights is considered to be infringed when a third party starts using and exploiting the related rights without the IP owner's consent.
Particularly with regard to trademarks, the claimant should prove that third parties (i) are using signs which are identical to the prior trademark for identical goods or services; (ii) using signs which are identical or similar to the prior trademark for identical or similar goods or services and creates a likelihood of confusion for the consumer; (iii) are using signs which are identical or similar to a well-known trademark provided that the use of such sign cause to its user unfair advantage arising from the distinctive character of the well-known trademark and is detrimental for the well-known trademark's owner.
With reference to the design, the claimant should demonstrate that the counterfeited design or model produces the same visual impression as of the prior design or model.
As for the copyright the claimant should establish that third parties are exploiting the economic rights connected to the protected work for example reproducing, making available to the public or anyway using the copyrighted work without the prior authorization of the copyright holder.
In the patent related disputes, the claimant should prove that the contested product or process reproduces or has been made using a process that reproduces the patent’s claims.
Infringement is established in case of a patent for a product by the manufacture, offering or putting on the market of a product incorporating the invention, or the use of such product, or the importation or stocking of such product for such offering or putting on the market or for such use, and inducting third parties to do any of these acts without the consent of the owner of the patent and in case and in case of a patent for a process by using the process which forms the subject matter of the patent and furthermore offering, putting on the market or use of a product directly resulting from the application of a patented process and the importation or stocking of such products for such offering or putting on the market or such use even where a patent cannot be obtained for such product and inducting third parties to do any of these acts without the consent of the owner of the patent.
Infringement is established when someone uses a trade mark without the consent of the owner of a trade mark by one or more of the following ways:
- Affixing the sign to goods or their packaging
- Offering or exposing goods for sale, putting goods on the market, or stocking goods for those purposes under the sign, or offering or supplying services under the sign
- Importing or exporting goods under the sign
- Using the sign on business papers or in advertising
The tort of passing off is established when the three following conditions are met:
- There is goodwill attached to the claimant's goods and/or services
- There has been a misrepresentation by the defendant leading or is likely to lead the public to believe that the goods and/or services they offer are the goods or services of the claimant or there is some other authorised link with the claimant and
- The claimant suffers damage as a result.
Copyright infringement is established when any person makes, causes or allows another person to make, an action which is protected by copyrights without the consent of the owner of the copyright. Copyright infringement is also established when any person imports into Cyprus or exports from Cyprus or trades or sell or hires or borrows or broadcasts or exhibits in public or communicates to the public or advertises any good protected by copyrights without the consent of the owner of the copyright. The date and the identity of the author must be proved before the Court.
Infringement of industrial design is established when any third party uses the registered design without consent of the owner. Use of a design may include manufacture, offer, distribution, import or export of a product or stocking of a product for those purposes.
There are no clear rules and each case will be examined according to its circumstances. Generally speaking, in order to establish infringement, the person who claims the violation will be required to prove that he has a proprietary right. In the case of patents, designs and trademarks - will be required to present the license certificate.
In the case of copyrights, a presentation or description of the work will be required and in the absence of registration, the date of its creation.
To prove the infringement, the person claiming the infringement must prove that the infringer sold / offered for sale or did a prohibited action in the property right of the person claiming an infringement, within the borders of the State of Israel.
In the case of a civil lawsuit for the unauthorized use of a trademark, it is necessary to prove the knowledge of the defendant regarding the fact of their violation of the rights of a third party. Normally, this can be proven by sending a cease and desist letter prior to the filing of the claim, making the defendant aware of the rights that are being infringed.
- Patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits:
In the case of a civil lawsuit for the unauthorized use of Patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits, it is necessary to prove the knowledge of the defendant regarding the fact of their violation of the rights of a third party. Normally, this can be proven by sending a cease and desist letter prior to the filing of the claim, making the defendant aware of the rights that are being infringed.
Only a court that is a member of the judiciary can declare the existence of a copyright infringement.
For purposes of proving the infringement of an intellectual work protected by copyright, it is necessary to accompany evidence tending to demonstrate the ownership or authorship of the corresponding work, the easiest way being to accredit the respective certificate of registration before the Department of Intellectuals Rights. In addition, proof demonstrating the alleged violation must be attached for which all types of evidence are accepted.
To establish infringement of any intellectual property right, the plaintiff must establish its rights and prove all facts of the case that amount to a prohibited act;
- Patents, utility models: Greek courts generally apply the doctrine of equivalents, according to which due account must be taken of any element which is equivalent to an element specified in the claims. Thus, the scope of the claim may extend beyond its literal meaning. The same approach is also applied for plant varieties and semiconductor topographies.
- Registered designs: In order to establish infringement, the design owner must show that the allegedly infringing design produces on the informed user a similar impression. According to the law, in assessing the scope of protection, the degree of freedom of the designer in developing a design in relation to the technical requirements must be taken into consideration.
- Trademarks and unregistered marks: In order to establish infringement, the following must be established:
- Identity or similarity of the signs under comparison
- Identity or similarity of the products respectively covered
- Likelihood of confusion (including likelihood of association)
- In the case of famous marks, establishment of a link between the famous mark and the posterior sign and use, without just cause, of the posterior mark which would imply unfair advantage of or cause damage to the distinctive character or the repute of the prior mark
- Copyright: Violation of the owner's exclusive rights, such as unauthorized reproduction, adaptation, distribution, lending etc.
- Trade secrets: Unauthorised disclosure or use of a business's confidential information by an employee or third party to others, with the intention on behalf of the offender to compete with the owner of the secret.
The rights holder must prove his related rights (e.g. with registration certificates, invoices, samples of products, photos, advertising/marketing material etc) as well as the infringer’s actions (with samples or photos of infringing goods, web site screen shots, etc). Survey evidence is useful for proving establishment of a mark in the market and extent of its use as well as the risk of confusion among consumers. Written affidavits, witness testimonies, market surveys and expert opinions/testimonies are also useful.
At the outset of court proceedings, the claimant's 'particulars of claim' must set out in a succinct way the alleged legal basis for the claimant's claim and the facts relied upon to substantiate liability.
Once the exchange of pleadings has completed and the factual and technical issues between the parties are apparent, disclosure may be given, and witness evidence and/or expert evidence may submitted by the parties in support of their respective cases, in accordance with the procedure outlined above. The burden of establishing infringement lies upon the party alleging it, the standard being the balance of probabilities. However in some contexts the evidential burden may shift.
It is an infringement of a patent to do any of the following in the UK while the patent is in force without the consent of the proprietor of the patent:
a. Where the invention is a product: make, dispose of, offer to dispose of, use, import, or keep the product (whether for disposal or otherwise) in the UK.
b. Where the invention is a process: use the process or offer it for use in the UK with knowledge, or when it is obvious to a reasonable person in the circumstances, that the use of the process without the consent of the proprietor would be an infringement; or make, dispose of, offer to dispose of, use, import, or keep any product obtained directly by means of that process.
Usually, any disclosure obligation upon the party alleged to infringe in respect of the alleged infringing product or process is satisfied by the provision of a 'product and process description'.
When the invention is a process, there may be a presumption that products are made using the patented process, shifting the evidential burden to the party alleged to infringe to show that the end product was made by non-infringing means.
Infringement of trade secret / breach of confidence
Pursuant to the English common law (Coco v Clark (1969) RPC 41; Saltman v Campbell  3 All ER 413; BBC v HarperCollins  EWHC 2424 (Ch)), it is a tort to use in an unauthorised manner, to the detriment of the originating party, information which has the necessary quality of confidence and is subject to an obligation of confidence. To have the necessary quality of confidence, the information must not be in the public domain or form part of an employee's general skill and knowledge. The requisite obligation of confidence may exist pursuant to a contractual obligation or the circumstances in which it was imparted.
Pursuant to the Trade Secrets Directive, it is an infringement to acquire a trade secret in an unlawful way, to use or disclose an unlawfully acquired trade secret or to use or disclose a trade secret in breach of a contractual or other duty.
Registered trade marks
A person will infringe a registered trade mark if he uses in the course of trade a sign:
(i) which is identical to the trade mark, in relation to identical goods or services to those for which the mark is registered;
(ii) where because the sign is (i) identical to the registered trade mark and used in relation to similar goods or services to those for which the mark is registered, or (ii) similar to the registered trade mark and used in relation to identical or similar goods or services to those for which the mark is registered, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association.
(iii) that is identical or similar to the registered trade mark, in relation to goods or services (whether or not identical or similar), where the registered trade mark has a reputation in the UK and the use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of or the repute of the registered trade mark.
The assessment of the elements making up the torts, particularly those categorised as (ii) and (iii) above, is multifactorial (or 'global').
Pursuant to the English common law (Reckitt & Colman Products v. Borden  UKHL 12; Starbucks v. British Sky Broadcasting  UKSC 31), the tort of passing off requires the establishment of three elements: (i) there is goodwill attached to the claimant's goods or services in the UK; (ii) there has been a misrepresentation by the defendant leading or likely to lead the public to believe that the goods or services they offer are the goods or services of the claimant or there is some other authorised link with the claimant; and (iii) the claimant suffers damage as a result.
It is an infringement of a UK registered design and a European Community registered or unregistered design, to use the design and any design which does not produce on the informed user a different overall impression. For these purposes, 'use' includes making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. However, for unregistered Community designs, the proprietor may only prevent such acts if the contested use derives from copying the protected design.
UK unregistered design right is infringed by a person who, without the licence of the design right owner, reproduces the design by making articles that are exactly or substantially to that design, or making a design document recording the design for the purpose of enabling such articles to be made. Again, an act of copying is a necessary component of the tort.
UK unregistered design right is also infringed ("secondary infringement") by a person who, without the licence of the design right owner, imports into the UK for commercial purposes, has in his possession for commercial purposes or sells, lets for hire or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article (i.e. exactly or substantially to the protected design).
Copyright is infringed by a person who, without the licence of the copyright owner, does any of the acts restricted by copyright. The restricted acts are copying the work, issuing copies of the work to the public, renting or lending the work to the public, performing showing or playing the work in public, communicating the work to the public, making an adaptation of the work or doing any of the above in relation to an adaptation, and authorising another to do any of the above. Infringement may be by the doing of a restricted act in relation to the protected work as a whole or any substantial part of it.
Where it is shown that an article is a copy of a work and that copyright subsists or has subsisted at any time, the court will presume, until the contrary is proved, that the article was made at a time when copyright subsisted in the work. There is a presumption of infringement if: (i) the infringer had access to the original work, and (ii) the infringing work and the original are similar.
It is a "secondary infringement" of copyright to import an infringing copy (other than for private and domestic use), to possess or deal with an infringing copy, to provide means for making copies, to permit use of premises for an infringing performance and to provide apparatus for an infringing performance, where the infringer knows or has reason to believe that the item he deals in or acts he performs are infringing.
In case of infringement of product patent, it is essential for the plaintiff to establish that the product used by the defendant is identical or similar to the product patented by the plaintiff. However, in case of process patent, the onus of proof to establish that the process used by infringer to obtain the product is identical to the product of the patented process.
To establish infringement of a registered trade mark, the impugned mark must be identical or similar to the registered mark.
Any unauthorised publication of the copyrighted work will constitute infringement.
It must be established that there has been a piracy of design.
In any case, the documentary evidence has to be filed by both the parties to establish infringement or non-infringement of IP rights.
The infraction of the intellectual property rights occurs when they are used by a third party without the authorization of the that right holder.
The useful evidence is the following:
- audit certificates that demonstrate the infringement,
- advertisement that used a product or service protected by intellectual property rights,
- experts report that validate the unauthorized use,
- samples of the infringing products.
Patent infringement involves determining the boundaries of what has been invented by determining the elements of each claim and how those elements are defined by the patent. Once those boundaries have been established—during a process called claim construction--it is determined whether an accused device or process satisfies all of the elements of at least one claim as those elements have been defined by the patent. A patent owner must establish that the accused device includes all of the elements of at least one claim by a preponderance of the evidence to establish infringement.
The trademark owner can establish trademark infringement when a junior user’s use of a similar mark creates a likelihood of confusion. Establishing that a likelihood of confusion exists can be shown with survey evidence that confusion exists, evidence of actual confusion between the two marks, and an inference drawn from a comparison of the two marks and the context of their use in the marketplace. A preponderance of the evidence must establish that a likelihood of confusion exists.
Copyright infringement is shown when a copyright owner establishes ownership of the copyright and that one of the following rights has been violated: 1) reproduction of a copyrighted work; 2) preparation of derivative works based on the copyrighted work; 3) distribution of copies or phonorecords of the copyrighted work to the public; 4) performance of the work publicly; 5) display of the work publicly; or 6) with respect to a sound recording, performance of the work publicly by means of digital audio transmission. An owner establishes copying by proving that the infringer had access to the copyrighted work and that the copied work is substantially similar to the copyrighted work. This must be established by a preponderance of the evidence.
Infringement of a patent involves the exploitation of a patented invention by a person other than the owner of the patent and without the agreement of the owner in relation to a product or a process falling within the scope of protection of the patent.
There is a breach of confidence where the following three elements is established by the plaintiff to the satisfaction of the court:
(a) The information which the plaintiff is seeking to protect is of a confidential nature
(b) The information in question was communicated in circumstances importing an obligation of confidence; and
(c) There must be an unauthorised use of that information to the detriment of the party who communicated it.
A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered in such a manner as to render the use of the mark likely to be taken either –
(a) as being use as a trade mark;
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular, or other advertisement, issued to the public, as importing a reference to a person having the right either as registered proprietor or as registered user to use the trade mark or to goods with which the person is connected in the course of trade; or
(c) in a case in which the use is use at or near the place where the services are available or performed or in an advertising circular or other advertisement issued to the public, as importing a reference to a person having a right either as registered proprietor or as registered user to use the trade mark or to services with the provision of which the person is connected in the course of trade.
The unlawful use in the course of trade which can give rise to institution of proceedings in court for an injunction to prevent unlawful use of a protectable geographical indication includes:
(a) The use of any means in the designation or presentation of any goods that indicates or suggests, in a manner which mislead the public, that the goods in question originate in a geographical area other than the true place of origin.
(b) Any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention.
(c) Any use of a geographical indication which, although literally true as to the geographical origin of the goods, falsely represents to the public that the goods originate in another country, territory, region or locality or
(d) Any use of a geographical indication identifying wines or sprits not originating in the place indicated by that geographical indication, even where the true origin of the wines or spirits is indicated or the geographical indication is accompanied by expressions such as ‘kind’, ‘type’, ‘style’ or ‘imitation’.
Copyright is infringed by a person
(a) who imports an article into Malaysia for the purpose of selling, letting for hire, or by way of trade offering or exposing for sale or hire the article;
(b) distributing the article for the purpose of trade or for any other purpose to an extent that it will affect prejudicially the owner of copyright;
(c) by way of trade, exhibiting the article in public
without the consent or licence of the owner of the copyright where he knows or ought reasonably to know that the making of the article was carried out without the consent or licence of the owner of the copyright.
A person infringes the rights conferred by the registration of an industrial design if he, without licence or consent of the owner of the industrial design,
(a) applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;
(b) imports into Malaysia for sale, or for use for the purposes of any trade or business any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner;
(c) or sells, or offers or keeps for sale, or hires or offers or keeps for hire any of the articles as described above while the registration is still in force.
In order to prove patent infringement, the patentee must be able to show:
a. The existence of a valid patent which may be proved by the Letters Patent;
b. His right to the patent; and
c. Evidence proving any of the acts of making, using, offering for sale, selling, or importing of the patented product in violation of the patentee’s right.
In order to prove trademark infringement, the following must be shown:
a. The trademark being infringed is registered in the IPO, which may be proved by the Certificate of Registration;
b. The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
c. The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;
d. The use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
e. The use or application of the infringing mark is without the consent of the trademark owner or the assignee thereof.
As remedies for infringement of intellectual property rights vary from criminal, civil, to administrative, each type of remedy requires a different standard of proof to establish infringement.
In administrative proceedings, the standard of evidence is substantial evidence – the amount of relevant evidence, which a reasonable mind might accept as adequate to justify a conclusion. In civil cases, the standard of proof is preponderance of evidence, which is probability of the truth. Finally, in criminal cases, the standard is higher as the guilt must be proved beyond reasonable doubt, which requires moral certainty or that degree of proof, which produces conviction in an unprejudiced mind.
To establish infringement of an intellectual property right, the plaintiff must prove the following facts. The strength of the evidence submitted by the parties is freely assessed by the judges.
A person infringes upon other’s patent if the person does any of the following in Japan without the patent owner’s consent:
- In the case of an invention of a product, producing, using, assigning, leasing, exporting or importing, or offering to assign or lease the product;
- In the case of an invention of a process, using the process; or
- In the case of an invention of a process for producing a product, using the process, or using, assigning or leasing, exporting or importing, or offering to assign or lease the product produced by the process.
In addition, certain acts may be deemed to constitute patent infringement as set forth in §101 of the Patent Act; for example, acts of producing, assigning or leasing, importing, or offering to assign any product to be used exclusively for the producing of the said product as a business.
Utility Model Rights
Utility model right infringement occurs when the alleged infringer makes, uses, assigns, leases, exports, imports or offers to assign or lease an article which embodies the device. In addition, certain acts set forth in §101 of the Utility Model Act may be deemed to constitute an infringement.
The acts which constitute trade secret infringement are set forth in §2(1)(iv)-(ix), including wrongfully acquiring, or using or disclosing, other’s trade secret wrongfully acquired.
A trademark infringement is established if, for example, the alleged infringer uses any mark identical or similar to the registered trademark in connection with goods or services identical or similar to the designated goods or services.
If a person creates confusion with other’s goods or business by using an indication which is identical or similar to the other’s indication which is well-known among consumers, such use constitutes unfair competition. Further, use of an indication which is identical or similar to the other’s famous indication constitutes unfair competition without establishing the creation of consumer confusion.
A copyright infringement action may be brought if the alleged infringer violates the copyright owner’s right to reproduce, perform, present, transmit, recite, exhibit, distribute, transfer, rent out, or translate or otherwise adapt the copyrighted work in certain ways set forth in the Copyright Act. In addition, certain acts set forth in §113 of the Copyright Act may be deemed as infringing copyright. Furthermore, the author of a work has moral rights, i.e., the right to make a work public, the right to attribution, and the right to integrity.
Design right infringement occurs when the alleged infringer manufactures, uses, assigns, leases, exports or imports, or offers to assign or lease, an article identical or similar to the registered design. In addition, certain acts set forth in §101 of the Utility Model Act may be deemed to constitute infringement.
If a person assigns, leases, displays for the purpose of assignment or lease, or exports or imports a product created, based on the configurations of another’s product and whose configuration is substantially identical to that of the other’s product, such act may constitute unfair competition.
Registered rights are vital to take action against infringements and counterfeits. Without registered rights, action through administrative or criminal actions are not possible, your only options will be a civil court case.
Patents and utility certificates
- Proof of granted rights in the UAE
- Proof that the defendant has, for commercial purposes,
- If the granted right covers a product: manufactured, used, retained, sold, or imported an infringing product without the permission of the right owner.
- If the granted right covers an industrial process: used an infringing process and the product obtained directly therefrom, and/or retained, imported said product, without authorisation.
- Criminal liability may only be incurred if the infringement was intentional.
- Proof of registered or unregistered trade mark rights in the UAE
- Proof that the defendant has:
- counterfeited or imitated a lawfully registered trade mark in a manner that would lead to the deception of the public, for the same or similar goods and services;
- knowingly used a counterfeit or imitated trade mark;
- affixed on a product a registered trade mark in bad faith or used without a right to do so ;
- knowingly sold, offered to sell, circulated or possessed (with intent to sell) goods bearing a counterfeited, imitated or wrongfully affixed trademark (this provision protects unregistered as well as registered rights): or
- knowingly provided or offered to provide services under a counterfeited or imitated trademark or otherwise used a trademark without a right to do so (again this provides some protection for unregistered marks).
The forgoing acts constitute criminal offenses under the articles 37 and 38 of the UAE Trade Mark Law. A defendant may not have committed any of these offenses (and may therefore not bear criminal liability) but may nevertheless have infringed claimant's trademark rights if it has:
- used an identical or a similar mark for products or services that are identical with or similar to the products or services for which claimant's trade mark is registered, in such a way that confuses the consumers.
However, in such a situation, the claimant will not have a right to seek compensation for the damage suffered as a result of the infringement to the extent that such right results from the commission of one of the criminal offenses as listed in articles 37 and 38.
Copyrights and Neighbouring Rights
- Proof of ownership of the copyrights in the relevant work (the relevant paper trail showing the ownership of the rights to the claimant is paramount).
- Proof that defendant has, without a written permission from the author or the holder of the neighbouring right or their successors:
- made any protected work, performance, phonogram, broadcasting program available to the public
- sold, rented or put in circulation by any way whatsoever a protected work, phonogram, broadcasting program protected in accordance with the provisions of this law.
- manufactured or imported without having a right, for the purpose of sale or rental of any equipment, instruments or apparatus designed or prepared for the purpose of fraud against any technology used by the author or the holder of the neighbouring right to arrange or administer such rights or for preservation of specific standard of quality of the copies.
- delayed or disgraced, without having a right, any technological protection or electronic information meant to arrange and administer the protected rights
- loaded or stored any copy of the programs, applications, or databases in the computer before having a license from the author, the right holder of their successor.
- used a computer programs or its application without a prior permission from the author or his successors.
The following acts constitute criminal offenses under the articles 37, 38 and 39 of the UAE Copyright Law. A defendant may not have committed any of these offenses (and may therefore not bear criminal liability) but may nevertheless have infringed claimant's copyrights in case of a violation of its moral rights.
- Proof of registered drawing/design rights in the UAE
- Proof that the defendant has:
- used the industrial drawing or design for the manufacturing of any product;
- Imported or acquired any product relating to the industrial drawing or design with the intention of using or selling that product.
Requirements for establishing infringement
Any non-authorized use of the intellectual property right (unfair competition).
All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.
Requirements for establishing an Infringement
Any non-authorized use of the intellectual property right (unfair competition).
All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.
Appellations of Origin
Any non-authorized use of the intellectual property right (unfair competition).
Copyright and other rights
Requirements for establishing an Infringement
Any non-authorized use of the intellectual property right as well as any violation of the author’s moral rights.
All sort of evidence is allowed but that one contrary to the morality or the law.
Examination of parties is not allowed but only when the case is decided by a civil court.
Any violation of the holder’s rights.
Reservation of rights
Any non-authorized use of the intellectual property right.
Any non-authorized use of the intellectual property right.
All sort of evidence is allowed but that one contrary to the morality or the law.
Patent: In case of infringement of product patent, it is essential for the plaintiff to establish that the product used by the defendant is identical or similar to the product patented by the plaintiff. However, in case of process patent, the onus of proof to establish that the process used by the infringer is to obtain a product identical to the product of the patented process. In view of the same, any form of documentary evidence may be produced before the court to establish that there is an infringement or non-infringement. Both the parties may also provide expert evidence in the form of affidavits.
Trademark: Infringement requires that the impugned mark be identical or similar to the senior mark, and typically used in relation to the same goods and services. Infringement actions can only be taken in relation to registered Trade marks. Further, plaintiff may be required to prove goodwill and reputation, deception, and damage or likelihood of damage to the plaintiff.
Copyright: Any unauthorised publication of the copyrighted work will constitute infringement.
Geographical indication: No infringement proceedings.
Confidential information and know-how: Will depend on the contractual relationship between the parties.
Designs: For design infringement, it must be established that there has been a piracy of design (identical or similar design), and in that context, any form of documentary evidence, or infringing articles may be produced before the court as evidence.
Firstly, it should be noted that regarding all infringement claims under Swedish IP law the plaintiff has the burden of proof to show that an infringement constituting action has been made by the defendant.
However, this is not to confuse with specific assessment that the court has to make regarding if the actual IP-right has been infringed. Under Swedish law, such assessments are considered as legal questions rather than evidential issues. Hence, establishing infringement in this regard is not dependent on a production of evidence by the plaintiff. On the contrary, the court assesses the infringement assertion independently with regard to the scope of protection of the intellectual property right. However, and as described in detail below, it is not uncommon that the parties invoke a substantial amount of indirect evidence even in this regard.
Since copyright is an unregistered right the court must first find that the plaintiff’s work is protected under the Copyright Act in order to grant a claim for infringement. Regarding the criteria for a work to be protected by copyright, please see question 1. Secondly, and in order to establish infringement it must be found that the infringing product shows a substantial amount of similarities so that it must be considered as within the scope of protection of the plaintiff’s work. The extent of the scope of protection is determined with regard to the originality of the work.
Useful evidence in order to convince the court that the work should be entitled to copyright is expert opinions from Svensk Forms Opinionsnämnd or expert opinions written by a reputable professor.
(c) Trademarks and trade names
Since trademarks and tradenames provides a mutual protection for each other (also known as “the cross-protection”), and are assessed under similar infringement criteria they are described jointly under this section.
In order to establish trademark infringement the court must find that there is a likelihood of confusion between the plaintiff’s trademark and the mark used by the defendant. This is the case if the infringer’s use of the mark leads to the belief that there is a connection between the party using the mark and the proprietor of the mark.
Well known trademarks have a greater protection which also includes a prohibition against use of reputation and measures by other traders that negatively affects the trademark’s distinctiveness or reputation.
Common evidence in infringement cases regarding trademarks are market surveys. Such market surveys are specifically used to show that a trademark is well known within the relevant public in order to entail the greater protection entitled to well-known trademarks. According to established case law the plaintiff must prove that at least one third of the relevant public has knowledge of the mark in order for it to be considered as well known. Aside from market surveys, expert opinions by reputable professors within the field are also common evidence.
(d) Marketing law
Even though the Marketing Act is not primarily legislation that protects intellectual property there are several grounds that can be invoked in order to target other trader’s infringing actions. The most common claims relating to intellectual property are the prohibitions against misleading about commercial origin and misleading use of another trader’s known and distinct product design. In addition to these specific grounds there is also a general prohibition against unfair marketing.
In respect of the general prohibition, marketing can be considered unfair if the marketing makes undue use of the reputation of another party, its products, services, trademarks etc. This applies even if the use of product features, names etc. would not be misleading in the sense that it could cause confusion about the commercial origin of the products or services concerned.
In all cases under the Marketing Act the plaintiff must show that the marketing affects or is likely to affect the consumer’s ability to make a well-founded business decision – the so-called transaction test. The burden of proof under these grounds means that it is sufficient to show that the marketing leads the consumer to make a decision that he/she would not otherwise have made. As regards confusingly similar products the assessment is very similar to the one made in trademark infringement cases. Generally, if the court finds that there is a likelihood of confusion it should suffice to be considered to affect the consumers’ ability to make a well-founded business decision.
Common evidence in cases based on the Marketing Act is market surveys that are mainly invoked to show the consumers knowledge and appreciation of the plaintiff’s products. Even though recent case law within this field has shown that such evidence in terms of market surveys are usually given a limited value due to leading questions, or lack of representativeness etc. they are still beneficial if used correctly.
According to Swedish case law the court may apply the doctrine of equivalence in order to asses an alleged infringement. In summary, the court must find the following in order to find that an infringement of a patent has occurred: (i) the inventive idea has been used; (ii) the problem underlying the solution is the same as in the patent; (iii) the result of the solution is similar; and (iv) the functional result is the same.
In addition, there are a number of indicators that the court consider suggest that the doctrine is not applicable: (i) a simple construction solution; (ii) the missing feature is particularly important in respect of the invention; (iii) the skilled person would not be able to think of replacing the missing feature by the feature according to the contested embodiment; (iv) the patent claim would cover prior art; and (v) it is clear from the application file that the disputed feature was introduced during the prosecution to limit the scope of the invention.
There are a few aspects of infringement and invalidity which are subject to specific rules on burden of proof. For example, if the patent concerns a method for production of a new substance the alleged infringer has the primary burden of proof to show that the substance has been produced with an alternative, non-infringing method. In respect of invalidity proceedings the burden of proof to show the invention possesses the patented technical effect switches to the patentee if the plaintiff makes it probable that such effect is lacking. If the invalidity attack is based on lack of novelty due to prior public use of the claimed invention, such use must be proven ‘up to the hilt’ involving a stricter burden of proof.
(f) Unlawful use or disclosure of trade secrets
The Trade Secrets Act presents three main grounds that can be used against an infringing exploitation of intellectual property. All grounds have in common that it must be shown that the defendant has used or disclosed the trade secret intentionally or with negligence.
The trade secret itself could have been learned by the defendant either through (i) an employment, (ii) in confidence in conjunction with a business relationship, or (iii) from a person that has attained the trade secret in violation of (i) or (ii).
Further, and order to establish an unlawful use or reveal of the trade secret, the plaintiff must first show that the information in fact is a trade secret, see question 1 on which kind of data is covered by the act. Useful evidence in this regard could be confidentiality agreements and confidentially policies used by the entity.
As regards trade secrets that are given under the course of an employment it must be showed that the person knew or should have known that he was not permitted to disclose such secret.
As regards trade secrets which are learned in confidence in conjunction with a business relationship there is no requisite for the plaintiff to show that the person knew or should have known that he was not permitted to disclose the secret. This follows from the fact that the trade secret was learned in confidence.
Moreover, it is also prohibited to intentionally or by negligence disclose or use a trade secret which, pursuant to what he or she knew or should have known, was disclosed in contravention of the Freedom of Information and Official Secrets Act
In order to show that an infringement has been made in a registered design the court must find that the alleged infringing design does not produce, on the informed user, a different overall impression than that of the registered design. In assessing the scope of protection it is explicitly set out in the Design Protection Act that the degree of freedom of the designer in developing the design shall be considered.
(h) Registered plants varieties
In order to show that an infringement has been made in a registered plant, aside from direct imitations, the court must find that the alleged infringing plant is in breach with one of the following requisites: (i) the plant is not clearly distinguishable from the variety which has been registered, (ii) the plant is essentially derived from the registered variety, where the registered variety is not, in itself, an essentially derived variety; or (iii) the plant can only be produced through repeated use of the protected variety.
A plant variety shall be deemed to be essentially derived where it is predominantly derived from the original variety, or from a variety that in itself is
- predominantly derived from the original variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the original variety,
- is clearly distinguishable from the original variety; and
- except for the differences which result from the act of derivation, conforms with the original variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the original variety.
(i) Topographies for Semiconductor Products
In order to show that an infringement has been made in a right to topography of a semiconductor product the court must find that the infringer has made reproductions of the topography, imported reproductions of the topography for commercial purposes or made the topography available to the public by offering reproductions of the topography for sale, rental, lending or other public distribution.
The relevant statute in the act prescribes that “reproduction of a topography” also includes a semiconductor product which has been manufactured using the topography.
The right to topographies for semiconductor products shows essential similarities to copyright. Hence, the right does not protect the idea but the pattern itself. Thus, the court will not assess whether the alleged infringing product functions in the same way as the plaintiff’s right but instead whether the same pattern has been used.
Patents - For patents, it is required to establish that the alleged infringer made one or several of the following acts:
- Produce, offer for sale, distribute in another way on the market, or use the patented product, or import, export or store the patented product for any of these purposes.
- To use the patented method.
- Offer for sale, distribute on the market in another way or use a product directly acquired with the patented method, or import, export or store a product directly acquired with the patented method.
- Supply, or offer for supply, essential elements of the patented product if the third party knew (or should have known in the relevant circumstances) that those essential elements are suitable and were intended for the implementation of the invention.
Trade marks - Unlawful use of a trade mark shall be construed as an infringement of the exclusive rights of the trade mark owner, namely, the use, in commercial activities, without the consent of the owner of the trade mark. In this context, firstly, it is necessary to establish that there exists an earlier trade mark, secondly, that the use of it by the other party is without the consent of the trade mark owner and, thirdly, that the use is in commercial activities. The scope of evidence differs in each case depending on the actual circumstances.
Copyright (including database rights) - Violations of copyright and related rights shall be deemed to be activities by which the personal or economic rights of the rightholders are infringed. The scope of evidence differs in each case depending on the actual circumstances.
The general 4-criteria rule for determining the existence of IP infringement: (a) allegedly infringing subject matter falls into the scope of protection, (b) there are infringement elements (factors) subsisted in allegedly infringing subject matter, (c) allegedly infringing person is neither the owner of IPR nor authorized person to use or exploit IPR, and (d) the act of alleged infringement occurring in Vietnam.
The criteria (b) plays most important role. This significant criteria is more clarified or specified in Decree 105/2006/ND-CP as revised subject to alleged infringement subject matters being copyright, related rights, patents or trademarks. For example, alleged infringement act shall be determined as infringement of a patent if a product or part (component) of a product is identical or equivalent to a product or part (component) of a product within the scope of protection as an invention.
To establish infringement of any intellectual property right, the plaintiff must prove all facts of the case that sum up to a prohibited act; in general regardless of fault, intent or negligence.
In the absence of the consent of the proprietor of the patent, third parties are prohibited from:
- producing, offering, putting on the market or using a patented product, or importing or possessing the product for such purposes;
- using a patented method or offering the method for use; and
- offering, putting on the market, using or importing, or possessing for such purposes, a product obtained directly from a patented manufacturing method.
This also applies to equivalent infringements, where a third party does not use a feature of the claimed invention but an equivalent feature that has the same effect as the clamed feature, Section 9 Patent Act.
In accordance with Section 10 Patent Act a third party is also not allowed to supply or to offer to supply within Germany an essential element of the invention, when the third party knows or it is obvious, that such action is suitable and intended to be used for exploiting the invention.
b) Utility models
The grounds for infringement of utility models are the same as for patent infringements.
c) Confidential Information / Trade Secrets
The employer has to prove that the employee communicated, without authorisation, a trade or industrial secret with which he was entrusted, or to which he had access, during the course of the employment relationship to another person for the purposes of competition, for personal gain, for the benefit of a third party, or with the intent of causing damage to the owner of the business.
It is also an infringement of competition law and criminal law, when a person, for the purposes of competition, for personal gain, for the benefit of a third party, or with the intent of causing damage to the owner of the business, acquires or secures, without authorisation, a trade or industrial secret
- by using technical means;
- by creating an embodied communication of the secret; or
- by removing an item in which the secret is embodied; or
- without authorisation, uses or communicates to anyone a trade secret which he acquired through one of the communications referred to above, or through an act of his own or of a third party pursuant to above mentioned, or which he has otherwise acquired or secured without authorisation.
The proposed draft bill implementing EU Trade Secrets Directive EU 2016/943 generally prohibits unlawful obtaining, use or publication of trade secrets by an individual person or a company.
d) Trade marks
Without prior permission of the proprietor, third parties are prohibited to use
- an identical sign for identical products or services;
- a sign, which can create confusions, because of its identity or its similarity to the other sign and the products and services for which this sign stands for;
- an identical sign for different products and services, when the use takes unfair advantage of or when the use damages without justification the distinctive character or the repute of the trade mark which has a reputation in Germany.
e) Business names
The grounds for infringement of a protected business name are the same as for trade mark infringements.
f) Geographical indications
Indications of geographical origin may not be used in the course of trade for goods or services which do not originate from the place, area, territory or country which is designated by the indication of geographical origin if it is likely to mislead concerning the geographical origin should such names, indications or signs for goods or services of different origin be used. If the goods or services marked by an indication of geographical origin have special properties or a special quality, the indication of geographical origin may only be used in the course of trade for the corresponding goods or services of this origin if the goods or services have these properties or this quality. If an indication of geographical origin enjoys a particular reputation, it may not be used in the course of trade for goods or services of a different origin even if it is not likely to mislead concerning the geographical origin if use provides without good cause an opportunity for goods or services of a different origin to take unfair advantage of, or be detrimental to, the reputation of the indication of geographical origin or its distinctive character.
For geographical indications that are protected as collective trademarks, please see above d) Trade marks.
g) Supplementary protection of creative property under competition law
Subject of supplementary protection is not the imitated product as such, but the particular manner of how a third party achievement that is worthy of protection is used and utilized for the purposes of competition. An act of unfair competition occurs where a person offers goods or services that are replicas of goods or services of a competitor if he
- causes avoidable deception of the purchaser regarding their commercial origin;
- unreasonably exploits or impairs the assessment of the replicated goods or services;
- dishonestly obtained the knowledge or documents needed for the replicas.
h) Registered Design
According to Section 38a Design Act, a design infringement action can be brought where a third party manufactures, offers, puts on the market, imports, exports or uses a product which contains or uses the registered design, or possesses such product for the mentioned reasons. Also when, in the view of an informed user, a design produces the same overall impression as the earlier design.
A copyright infringement action can be brought for violation of the owner's exclusive rights set out in Sections 12 to 23 Copyright Act,
- right to publish the work,
- Right to be named as the author,
- Rights regarding distortion and other mutilation of the work
- Right of duplication,
- Right of distribution,
- Right of exhibition,
- Right of presentation of the work,
- Right of making the work available to the public,
- Broadcasting right,
- Rights of editing and rearrangement.
Regarding database rights, it is prohibited to copy and/or distribute the data base and/or to make it available to the public, Section 87b Copyright Act.
j) Semiconductor topography rights
Under Section 6 Semiconductor Protection Act, third parties not having the owner's consent are prohibited from reproducing the topography and from offering, putting on the market or distributing, or importing for such purposes, the topography or the semiconductor product containing the topography.
k) Plant variety rights
A plant variety right infringement action can be brought for violation of the owners exclusive rights to
- produce, to condition for purposes of propagation, to place on the market, to import or export propagating material of the protected variety, or
- to store propagating material of the protected variety for one of the purposes designated above,
to carry out acts in accordance with aforementioned regarding other plants or parts of plants, or products obtained directly therefrom, if propagating material was used in their production without the consent of the holder of the plant variety right, and the holder of the plant variety right did not have an opportunity to exercise his/her variety protection right with regard to this utilisation.
Since most judicial infringement proceedings for IPRs are civil proceedings, the burden of proof is that applicable to civil proceedings, meaning that it is to be decided on the balance of probabilities. It is only with regard to criminal proceedings where the burden of proof must be beyond reasonable doubt.
Therefore to establish infringement, one must first of all prove to the court what rights they own, and what the extent of the infringement is by the respondent.