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)

Japan Small Flag Japan

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.

Patents
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.

    Trade Secrets
    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.

    Trademark Rights
    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.

    Unregistered Marks
    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.

    Copyrights
    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.

    Registered Designs
    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.

    Unregistered Designs
    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.

UAE Small Flag UAE

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.

Trade marks

  • 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.

Designs

  • 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.

Mexico Small Flag Mexico

Inventions

IP right

Requirements for establishing infringement

Necessary evidence

Patents

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.

 

Utility models

Industrial designs

Integrated circuits

Trade secret

Disclosure.

Brands

IP right

Requirements for establishing an Infringement

Necessary evidence

Trademarks

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.

 

Trade names

Slogans

Appellations of Origin

Any non-authorized use of the intellectual property right (unfair competition).

Geographical Indications

Copyright and other rights

IP right

Requirements for establishing an Infringement

Necessary evidence

Copyright

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.

Related rights

Any violation of the holder’s rights.

Reservation of rights

Any non-authorized use of the intellectual property right.

Plant varieties

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.

India Small Flag India

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.

Updated: June 15, 2018