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)

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.

Updated: June 15, 2018