What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

Intellectual Property (2nd edition)

France Small Flag France

Other options available in French jurisdictions for IPRs enforcement are:

  • Civil court proceedings :
    • Infringement action;
    • Invalidity action for patents and trademarks;
    • Declaration of non-infringement for patents (see question 30).
  • Administrative proceedings:
    • Trademark opposition proceedings. Opposition decisions can be appealed before Paris Court of Appeal;
    • Regarding trademark revocation or invalidation proceedings, pursuant to article 45 of the Directive 2015/2436, proceedings will no longer be the exclusive competence of French Courts. By January 2023, Member States shall provide for an efficient and expeditious administrative procedure before their offices for invalidation or revocation of a trademark.

Switzerland Small Flag Switzerland

IP rights holders can enforce their rights through civil or administrative actions, or with the assistance of custom authorities.

Since 1st January 2017, the cancellation of a trademark on the grounds of non-use can be requested through administrative proceedings before the IPI.

Interim injunctions are available and can be filed prior or simultaneously with a claim on the merits. In case of special urgency, the Court may order interim measures immediately without hearing the opposing party.

Poland Small Flag Poland

Civil courts consider cases concerning intellectual property rights. The Patent Office does not have the authority to hear cases concerning patent, trade mark, or copyright infringement.

Alternative dispute resolution measures (including arbitration or mediation) are also available as a means of resolving intellectual property rights disputes.

Italy Small Flag Italy

Under Italian Law the IP owner may react through civil, administrative remedies against the violation of its IP rights.

As for civil court proceedings see answer to question n.19.

As for administrative proceedings, Article 127 (2) IPC punishes with a fine the conduct of anyone who uses untrue words or indications on products that make people believe that there is an IP right. Moreover, unless the facts constitute a criminal offence and even if the fact does not harm third parties, Article 127 (3) IPC also punishes with a fine the conduct of anyone who deletes the trademark of the manufacturers and traders from whom he/she received the goods or uses a registered trademark declared invalid because it is contrary to public order or morality.

With specific regard to copyright, the general rule is set out in Article 174 bis ICL, which states that, without prejudice to the criminal sanctions, every copyright infringement may also be punished by means of a fine, the amount of which is double the price of the copyrighted work and is applied for every and each violation ascertained or for each counterfeit product made. This administrative sanction can be applied together with the criminal sanction at the end of the criminal proceeding. Another provision is set out in Article 174 ter ICL that shall apply residually, only if the conduct cannot be qualified as a crime. Under this rule, a third party who uses, duplicates or reproduces copyrighted works without the consent of the copyright-holder is to be punished with a fine, the seizure of the copyrighted materials and also through the publication of the administrative sanction in one or more journals. This measure, in contrast to the previous one, can be applied only if the infringement does not qualify as a crime. Finally, under Article 171 (4) ICL, an infringer who exceeds the limit established for the personal copy of protected work and does not pay the related fees, may be punished with the administrative fine and the suspension of copy or reproduction activity.

As for alternative dispute resolution, the parties to a dispute can opt for mediation through the service rendered by ADR entities. A mediation clause could also be inserted in a previous agreement concerning the licence or the assignment of an IP rights. Furthermore, in the context of a legal dispute, the judge can suspend the proceedings, ordering the party to attempt a mediation.

Furthermore, Italian intellectual and industrial property rights, can be resolved also by way of arbitration. Although it is possible in Italy to use Alternative Dispute Resolution mechanisms to settle IP related proceedings, typically the IP owner has an interest in commencing judicial proceedings, for example, in order to be granted urgent measures by the judge or to obtain a judicial decision which is normally enforceable.

Cyprus Small Flag Cyprus

In Cyprus, intellectual property rights can be enforced through Civil Court proceedings, by filing an action for infringement and/or passing off in the civil courts of Cyprus.

Once these proceedings have commenced, the claimant can seek interim relief such as interim injunctions, interim declarations, freezing injunctions which may also include ancillary disclosure orders, search orders and disclosure or inspection orders.

Proceedings before the Registrar are provided, such as opposition to trade mark registration proceedings and cancellation of trade mark or patent registration.

There are also customs procedures provided to stop the import and/or export of infringing goods under some circumstances. An application can be filed at the Department of Customs and Excise for border control of goods entering into the market which are suspected of infringing the intellectual property rights of the applicant. On the following Court proceedings, if it is decided that the intellectual property right has been infringed, an order for destruction of the goods or for any other treatment of the goods may be issued.

Israel Small Flag Israel

IP litigation in Israel generally follows the basic procedure of general Israeli litigation. Therefore, the owner of the property is granted procedural rights, including: civil court proceedings, alternative dispute resolution, copyright infringement claim, damages without proof of injury, injunction for copyright infringement, destruction of the infringing copies, a request for interim remedies, request for permanent injunction.

Apart from patents, the possibility of acting through customs authorities is subject to each of the intellectual property rights.

Chile Small Flag Chile

The protection of intellectual property is recognized as a fundamental right by the Political Constitution of the Republic of Chile. Hence, in addition to the aforementioned criminal actions, the owners of an industrial property right or copyright has an active legitimacy to exercise civil actions in order to protect their rights if they are being violated or are violated.

Greece Small Flag Greece

Intellectual property rights can mainly be enforced by way of civil proceedings.
In addition, trademark owners may seek protection through administrative proceedings, as previously mentioned under 8.

Arbitration and mediation are also available to resolve intellectual property rights disputes.
Arbitration rules are included in the Greek Code of Civil Procedure (Arts. 867 et seq.).

To present, there existed no requirement under Greek law to contact the defendant before initiating court proceedings. However, according to articles 178-206 of law 4512/2018, which was published on 17.1.2018, as from 17 October 2018, there will be compulsory use of mediation in legal disputes that will arise from patent, trademark and industrial design infringements. It remains to be seen how the new rules will be implemented and in which way this new practice will change the landscape in IP litigation.

United Kingdom Small Flag United Kingdom

Civil court proceedings
In the UK, IP rights are most commonly enforced through civil court proceedings.

The UK has three jurisdictions: England and Wales, Scotland, and Northern Ireland. Each has its own legal system and procedures, the UK Supreme Court being the final court of appeal for all in civil cases. The overwhelming majority of IP litigation in the UK takes place in the courts of England and Wales.

The Chancery division of the High Court (now a part of the 'Business and Property Courts') is the appropriate forum for more complex and valuable IP claims of all types. Within this division, the Patents Court has jurisdiction in respect of disputes regarding patents, SPCs, registered designs, plant variety rights and semiconductor topography rights. Disputes concerning other types of intellectual property are managed in the Intellectual Property List. In the Chancery Division there is no cap on recoverable damages or costs.

For less complex and smaller value IP claims, the Intellectual Property Enterprise Court (IPEC) (also within the Chancery Division) offers a more streamlined litigation procedure, with caps on monetary compensation (£500,000) and recoverable costs (£50,000 for the liability stage and £25,000 for the quantum stage). The IPEC has jurisdiction to hear disputes regarding all types of intellectual property right and takes its jurisdiction (including in respect of the types of relief that it can award) from that of the High Court.

The IPEC also has a "small claims" track, with more limited damages (£10,000) and costs caps, in which low value disputes regarding copyright, trade mark, passing off and unregistered design right may be heard.

In addition, some County Courts with a Chancery District Registry, have jurisdiction in respect of low value intellectual property disputes (but not in respect of the types of right for which the Patents Court has jurisdiction).

UKIPO
While the UKIPO is not a court, it has some (limited) jurisdiction to hear disputes in respect of UK patents, UK registered design rights and UK registered trade marks, most notably in respect of validity and entitlement. The UKIPO is also able to provide non-binding opinions, including in respect of infringement, in some circumstances. However as the UKIPO's power to award relief is limited, it plays a very limited role in enforcement of intellectual property rights.

Alternative Dispute Resolution
Alternative dispute resolution requires the voluntary engagement of both parties (unless the parties have entered a contract which obliges them to use ADR). It is encouraged by the Civil Procedure Rules.

The most common types of ADR are:

  • Arbitration, which is similar to civil court proceedings, but the proceedings are conducted in private before a tribunal, rather than before a public court. The judgment of the arbitral tribunal is binding on the parties and can be kept confidential.
  • Expert determination, which is conducted in private and involves an expert considering and assessing submissions made by the parties. The process is more flexible than arbitration and usually much less expensive. The decision of the expert is binding.
  • Mediation, which is essentially a private commercial negotiation facilitated by a trained mediator. The parties are encouraged to find a commercial solution to the dispute, but the mediator does not give a decision and the process is not binding, so if the parties are unable to agree, the dispute will continue.

Threats
In the UK, the legislation governing patents (UK and European (UK)), trade marks (UK and EU), and designs (registered and unregistered, UK and Community) prohibits the making of an unjustified threat of infringement proceedings in respect of an act done, or proposed to be done, in the UK. IP right owners should ensure that steps taken to enforce their rights are compliant with the threats provision, and of course UK law more generally.

Pakistan Small Flag Pakistan

Yes, other enforcement options are available such as civil proceedings, intellectual property office proceedings. A civil suit for Infringement and passing-off can be filed before Intellectual Property Tribunal of jurisdiction. Complaint can also be filed in the Competition Commission of Pakistan.

Ecuador Small Flag Ecuador

Border measures, precautionary actions, administrative tutelage actions, lawsuits, intellectual property office proceedings, administrative proceedings and alternative dispute resolutions either before administrative entities or judicial courts.

United States Small Flag United States

Intellectual property owners can enforce their rights in a variety of forums. For example, patent, registered trademark, and registered copyright owners can file infringement claims in federal district courts. In addition, intellectual property owners can also seek to enforce their rights with the International Trade Commission by filing a section 337 complaint. The ITC can investigate allegations of patent, trademark, or copyright infringement as well as other allegations of unfair competition.

Malaysia Small Flag Malaysia

Civil proceedings: Possible reliefs include injunctions, damages, search and seizure orders, account of profits and statutory damages (patents, trade marks, geographical indication, copyright, industrial design).

Philippines Small Flag Philippines

In enforcing its rights, the intellectual property owner may initiate administrative (opposition of trademark applications, cancellation of trademark registrations/patents, trademark/patent infringement, unfair competition), civil (trademark/patent/copyright infringement, unfair competition, false or fraudulent declaration, false designation of origin, false description of representation), and criminal proceedings (trademark/patent/copyright infringement, unfair competition, false designation of origin, false description of representation).

Administrative complaints are filed with the IPO, while civil and criminal complaints are filed with the Regional Trial Court sitting as a Special Commercial Court.

The parties also have recourse to the Dispute Resolution System of the IPO. Such System primarily involves mediation and arbitration as an alternative to litigation before the same Office or the regular courts.

Japan Small Flag Japan

Court proceedings:

  • Filing formal lawsuits in a court to seek an injunction and/or compensation for damages
  • Filing petitions for preliminary injunction in a court

Customs procedures:

  • Filing applications for Import suspension with Customs

Alternative dispute resolution:

  • Mediations and arbitrations

UAE Small Flag UAE

The other enforcement options available are:

Right

Civil court

IPO proceedings

Administrative

Trade Marks

Yes, infringement and cancellation actions

Yes, opposition and limited cancellation actions

Yes, Economic Department complaints, Custom recordals and complaints

Patents (UAE national filing)

Yes, infringement and cancellation actions

Yes, opposition actions

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Patents (GCC patent filing)

Yes, infringement and cancellation actions

Yes, opposition actions

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Utility certificates

Yes, infringement and cancellation actions

Yes, opposition actions

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Designs

Copyright & neighbouring rights

Yes, infringement and cancellation/amendment actions

None

Yes, Economic Department complaints, Custom complaints (but not custom recordals)

Mexico Small Flag Mexico

IP right

Other enforcement

Inventions

·  Intellectual Property Office proceedings: cancellation, infringement and invalidation actions.

·  Alternative Dispute Resolutions, namely, arbitration.

Brands

Copyrights

·  Civil Courts proceedings: compensation for damages.

·  Copyrights Office proceedings: invalidation and infringement actions.

·  Intellectual Property Office proceedings: trade-related infringements and preliminary injunctions or preventive measures.

·  Alternative Dispute Resolution, namely, arbitration and conciliation.

India Small Flag India

There are broadly 3 types of Enforcements/Remedies for IP in India:

Civil Remedies
Upon IP infringement civil remedies can be enforced by filing a suit for infringement and/or passing off (in case of unregistered trademarks) in the competent court. Following reliefs of civil nature can be granted:

  • Injunction: Injunction is prohibition of an action by a party to a law suit. If the plaintiff establishes that the prima facie case is in his favor, injunction is granted.
  • Anton Pillar orders/ Ex-parte orders: Anton Pillar orders, permits the plaintiff’s counsel to enter the infringer’s premises and seize evidence of infringement. This order is passed when there is a serious danger of removal/destruction of the infringing articles. Such an order is granted on an ex-parte application. Infringing goods are delivered to the plaintiff or destroyed if the orders of delivery-up and destruction are passed.
  • Orders to deliver up/surrender or seize and destroy
  • An award of costs and damages: An award of cost and damages are two mutually exclusive remedies. Damages are granted to compensate the losses incurred by the plaintiff on account of defendant’s infringing act, whereas actual amounts of profits are handed over to the plaintiff as the second measure.
  • Tracing orders: Under tracing remedies, an infringer can be ordered to provide details like from where he got his supplies of infringing goods. Failure to provide such information is taken as contempt of court.
  • Rendition of Accounts or Account of Profit

Criminal Remedies:
Criminal remedies in India are provided for Trademarks and Copyrights as elucidated in point 16 above.

As for patents Act, 1970 Although there are no criminal sanctions for Infringement of patent per se, however Chapter XX of the act, prescribes criminal remedies for offences in relations to patents such as falsification of entries in register, unauthorized claim of patent rights, refusal or failure to supply information etc.

Administrative remedies:

  • Opposition against a similar trademark or against registration of a Geographical Indication;
  • Pre-Grant Opposition;
  • Rectification of a registered trademark/ design; and
  • Patent Invalidation;
  • Recordal with Customs to prevent the import of infringing goods.

Sweden Small Flag Sweden

(a) Civil Court Proceedings
Civil court proceedings are available for each of the intellectual property rights mentioned above. In addition to damages other ways of proceeding are available, as will be described below.

(i) Infringement Proceedings
Regarding patents, trademarks, designs, tradenames, plant breeders’ rights, copyrights and typographies of semiconductor products, infringement claims can be brought as civil proceedings at the Patent and Market Court.

(ii) Revocation Proceedings
Concerning patents, trademarks, designs, trade names and plant breeders’ rights, it is possible to bring revocation proceedings. However, if an alleged infringer wants to raise invalidity as a defence during infringement proceedings the alleged infringes has to make a cross-action regarding the invalidity of the intellectual property.

(iii) Declaratory Proceedings
In regard of the intellectual properties as stated in the paragraph above, declaratory proceedings are available to confirm infringement. However, regarding patents, designs and plant breeders’ rights, the claimant can bring an action for declaratory judgment only if there is uncertainty whether the claimant enjoys protection against another party on the basis of the patent and this is prejudicial to the claimant.

(iv) Declaratory Non-infringement Proceedings
For patents, trademarks, designs, tradenames and plant breeders’ rights, declarations of non-infringement are available. Regarding patents, designs and plant breeders’ rights, there are three requirements for bringing a lawsuit to obtain a declaratory judgment on non-infringement. The lawsuit must be brought by a person that carries on a business or is planning to do so, there is an uncertainty regarding whether it is allowed to carry on the business because of the intellectual property and this uncertainty is prejudicial to that person.

(v) Injunctions
At civil court proceedings, injunctions, both preliminary and final, are available and the court can issue an injunction under the penalty of a fine in proceedings regarding to patents, trademarks, designs, tradenames, plant breeders’ rights, copyrights, typographies on semiconductor products and trade secrets.

(vi) Entitlement to priority
Regarding patents, trademarks, designs, trade names and plant breeders’ rights it is possible to claim entitlement to priority of the intellectual property.

(b) Intellectual Property Office Proceedings
Third parties can oppose the grant by the Patent office of patents, trademarks and designs within a certain amount of time (nine months regarding patents, three months regarding trademarks and two months regarding designs). The PRO then tries if the intellectual right shall be revoked.

(c) Administrative proceedings
Regarding trademarks and tradenames a third party who wishes to initiate a procedure to revoke a registration can apply for revocation before the authority designated by the government (administrative revocation). However, if the proprietor contests the application, the applicant must request that the claim shall be transferred to the Court if he or she wishes to maintain the claim. Therefore, an administrative revocation is only possible if the proprietor either does not contest the application or stays passive.

(d) Arbitration
The parties can agree to submit an infringement dispute to arbitration. An arbitration award can have effects in relation to damages. However, the issue of validity of for example a patent cannot be decided through arbitration, as this falls within the exclusive jurisdiction of the Patent and Market Court.

(e) Alternative dispute resolution (ADR)
Except for patent disputes relating to contracts (such as contracts concerning licences, research and development and so on), the use of ADR methods is fairly limited under Swedish law. The most common ADR methods available include mediation and negotiations between the parties to reach a settlement. However, in domain name cases ADRs are normal and frequent.

Latvia Small Flag Latvia

Patents - Enforcement is possible mainly through civil court proceedings. A patent can be enforced before Vidzeme Suburb Court of Riga City as a court of first instance.

Trade marks:

  • Civil court proceedings
  • Board of Appeal proceedings
  • Customs proceedings
  • Copyright (including database rights) - Civil court proceedings
  • Copyright (including database rights) - Customs proceedings

Vietnam Small Flag Vietnam

IP holders can bring an infringement to a court, or request to settle and impose fine by administrative remedy, or submit a request for IP border control with the customs with noting that up to 98% IP cases are handled by administrative measure.

Germany Small Flag Germany

  • Regular civil court infringement, non-infringement and cancellation proceedings
  • Preliminary injunctions
  • Proceedings before the German Patents and Trademarks Office (including opposition and cancellation)
  • Alternative dispute resolution

Malta Small Flag Malta

Enforcement options vary across general civil procedure, lex specialis for IPRs and alternative dispute resolution methods. More information will feature on the former two types. With regard to alternative dispute methods, Maltese law caters for mediation and arbitration generally – there have not been many IP disputes which have resorted to such alternative dispute measures. The generality of matters usually gravitate towards court proceedings. It is also noteworthy to point out that the various IP laws in Malta also allow for some degree of actions before the Comptroller of Industrial Property. In the main, these concern patent revocation procedures. However, with the upcoming transposition into Maltese law of the Trade Marks Directive, we are expecting the introduction of trade mark opposition procedures with the IPRD and the removal of relative grounds searches. One final point of note for the time being is that with regard to patents, Malta now has it’s own Patent Tribunal.

Civil Procedure
Considering the contentious route, the basic enforcement options are those provided in civil procedure. The Maltese Code of Organisation and Civil Procedure has provided all persons who are aggrieved with a series of precautionary acts that can be availed of. These are the:

  • Warrant of description
  • Garnishee order
  • Warrant of seizure and elevation
  • Warrant of prohibitory injunction
  • Warrant in procinctu

All such warrants are filed on a prima facie basis of evidence. Once a precautionary warrant is filed in court, the court shall immediately issue the warrant without examining the merits of the claim [except for the prohibitory injunction in which case the warrant is usually granted provisionally and the respondent is given to reply and a hearing of both parties is held before confirming or denying the warrant]. If the other party objects, they must seek revocation of the warrant whether in total or in part, by application to the courts.

Without prejudice to any other right which may arise under any law, the person against whom the precautionary warrant is issued may file an application in court requesting that the precautionary act be revoked, either totally or in part. Moreover, the person against whom the warrant is filed may request both the imposition of a penalty as well as the award of damages that may have been caused as a result of the issue of the precautionary warrant. The person against whom the warrant is filed is also given the right to insist that the applicant provides security for the payment of the penalty and damages in the event that the latter does in fact become liable to the payment thereof. It is, however, within the discretion of the court whether or not to order the applicant to give such security.

A precautionary warrant must be filed before or contemporaneously with the institution of proceedings on the merits of the case. If the action is not instituted within the relevant time-limit as specified by law (20 days from the Court decree confirming the warrant), it shall be lawful for the other party to seek and obtain the revocation of such warrant.

Enforcement Directive
The EU’s Enforcement Directive was transposed into Maltese law by Chapter 488, the Enforcement of Intellectual Property Rights (Regulation) Act. Chapter 488 creates a number of other measures rights-holders may avail of – some are similar to those existing under Civil Procedure (such as the measures preserving evidence), while others are novel to the Maltese system (such as the measures to disclose evidence).

The injured party may file an application to have recourse to these measures, with the Maltese courts now having enough experience to appreciate that such measures are to be dealt with with the same urgency as the civil precautionary warrants.

For a person to avail themselves of the measures under Chapter 488, the applicant must have reasonably available evidence to support the claims made in the application. In conjunction with the filing of applications, the applicant must also lodge security to ensure compensation for any prejudice the other party may suffer. Finally, similarly to the procedure under Civil law, the applicant must, 31 days from the issuing of the measures, file proceedings in Court for the case on the merits to be heard.

Customs action
Malta having such an important port of entry into the EU also has a robust IP Office within Malta Customs. Maltese law relating to customs action provides for two procedures for action – the first is action based on the right-holder’s application for action filed with Malta Customs informing them of the rights to be monitored; while the second is ex officio action by Malta Customs when they intercept any goods which may be infringing.

Enforcement proceedings
Over and above what has been discussed so far, each act dedicated to an IPR provides for how infringement is dealt with and what enforcement proceedings may be instituted in this regard.

Updated: August 2, 2018